James L. Davis, Jr.

Davis has litigated high-stakes patent cases in a wide range of forums for clients, including Samsung Electronics Co. Ltd., SAP SE and especially Emerson Electric Co.

For Emerson -- where he worked a summer as a web designer in 2000 -- Davis has led a six-year-long pitched battle defending its Smart Wireless line of products against nonpracticing entity SIPCO LLC's assertion of a bevy of patents dealing primarily with wireless mesh networking and gateways.

The campaign required litigation in federal district courts, the Patent Trial and Appeal Board, the Federal Circuit, the U.S. International Trade Commission, the European Patent Office, the German Regional Court of Mannheim and the U.S. Supreme Court.

There were "a lot of battles on different fronts," he said, and all were "very successful with great results." Among the successes was an important precedent from the Federal Circuit on review of patents for covered business methods. Sipco LLC v. Emerson Electric Co., 2018-1635 (Fed. Cir., Nov. 17, 2020).

Eventually, over 125 claims in the 15 patents that SIPCO asserted against Emerson were found unpatentable by one or more tribunals, he said, although a couple are still being appealed.

Davis has represented Emerson as a defendant and as a plaintiff against several other companies. One notable example early last year involved litigation in the ITC and Delaware challenging Emerson's line of Sensi smart thermostats.

His team responded as soon as that litigation was filed. "Over the weekend, we quickly filed a declaratory judgment complaint in Delaware and were able to persuade Eco to dismiss the case based off of the defenses that we had developed." Emerson Electric Co. v. EcoFactor Inc., 1:21-cv- 00317 (D. Del., filed March 1, 2021).

One matter he settled confidentially early this year involved cross-border trademark, trade secrets and unfair competition allegations, which raised challenging issues of international comity and forum non conveniens on a global scale.

Closer to home, he is defending a major retailer's use of Bluetooth beacons in its store's light fixtures to send shopping information to customers against claims of patent infringement. The PTAB has knocked out 105 of the plaintiff's patent claims, and Davis will be arguing appeals and cross-appeals soon.

In addition to his IP work, Davis regularly takes on pro bono matters, including this year handling a case seeking a domestic violence restraining order. In addition, he now is the Ropes & Gray partner overseeing the firm's environmental pro bono activities from Stanford's Lawyers for a Sustainable Economy. The work has included business advice, corporate formation and even some advice on patents, he said.

- Don DeBenedictis