James Hopenfeld focuses his practice on intellectual property litigation, where he has 20 years of courtroom experience. James is known for his rigorous analytical skills, spot-on litigation instincts, and his nearly encyclopedic knowledge of patent law. One of his former colleagues has called James the “complete package,” and others describe him as “creative,” “brilliant,” and "a first class lawyer."

James’s litigation and counseling experience includes a wide range of technologies from analog circuits and computers, to telecommunication systems, to medical devices and pharmaceuticals.  James has litigated cases in district courts from coast to coast as well as in the United States International Trade Commission, the Court of Federal Claims, and the United States Court of Appeals for the Federal Circuit. He also has handled matters before the Board of Appeals of the United States Patent and Trademark Office.

Education

• J.D. (magna cum laude), University of Michigan Law School (1992)
  • ​Order of the Coif
  • Executive Editor, Michigan Law Review
• B.A., biochemistry (High Honors), University of California, Berkeley (1988)

Prior Associations

• Partner, Ropes & Gray, LLP
• Partner, Fish & Neave LLP
• Trial Attorney - Honors Program, U.S. Department of Justice

Bar Admissions

• State Bar: California
• District of Columbia
• Northern District of California
• U.S. Patent & Trademark Office

James Hopenfeld has litigated in nearly every technical discipline and in nearly all courts across the United States.  Some of his notable representations include:

• Linear Technology Corp. v. Impala et al. (N.D. Cal., Fed. Cir.) - Represented Linear Technology in a multi-party patent litigation relating to voltage regulators (U.S. Patent 5,481,178) in which Linear Technology obtained a settlement in excess of $100 million.
• Linear Technology Corp. v. Micrel, Inc. (N.D. Cal., Fed. Cir.) - Represented Linear Technology in a patent infringement suit relating to transistor drive circuitry. At trial, the court found that the defendant had willfully infringed, and awarded treble damages.
• Varian Associates v. Lam Research Corp (N.D. Ca.); Varian Semiconductor v. Applied Materials (AAA/ICDR) - Represented Varian in two separate actions relating to semiconductor processing equipment. The first case settled following victory in motion practice. The second case went to arbitration resulting in royalties due under the patent license.  Both matters yielded blockbuster payments to Varian in excess of $20 million.
• Oscar de la Renta v. YSL Beauté, et al. (AAA/ICDR) - Represented Oscar de la Renta in an arbitration dispute relating to license and trademark infringement claims against YSL Beauté, Elizabeth Arden and L’Oreal. The case involved the licensing of Oscar de la Renta fragrances by the defendants. After arbitration, the panel awarded Oscar de la Renta’s request to terminate the license.
• Certicom Corp. v. Sony, et al. (E.D. of Tex) - Represented Certicom in a patent infringement suit relating to elliptic curve cryptography encryption (U.S. Patent No. 6,563,928).  The case settled in terms favorable to Certicom, which was instrumental in setting up Certicom's buyout by Research in Motion.
• Auction Management Solutions, Inc. v. Live Global Bid et al. (N.D. Ga) - Defended Live Global Bid in a lawsuit involving computer systems in live auctions. We successfully convinced the court to dismiss a number of the infringement counts based on our summary judgment brief, and were able to settle the remainder of the case on terms favorable to our client. 
• Gemini IP, Inc. v. Bomgar Corporation, et al. (E.D. Tex.) - Lead trial counsel for Bomgar and several of its customers against a troll company in the Eastern District of Texas. We successfully threatened the patent and settled favorably, getting a license that covered Bomgar and the customers for less than a small fraction of the settlement demand.

Distinctions

• Adjunct Professor of Law, the George Washington University Law School since 2003
• Officer of the Giles S. Rich American Inn of Court

Authored Publications

• James E. Hopenfeld, “A Proposal for a ‘Good-faith Offer’ Standard for Evaluating Allegations of Willful Infringement – With Thanks to Major League Baseball,” 20 Fed. Cir. B.J. 5 (2010)
• James E. Hopenfeld and Priti R. Langer, “Fewer patent injunctions issue in the wake of ‘eBay,’” National Law Journal, December 4, 2006
• James E. Hopenfeld and Gene W. Lee, “Close Enough?,” Legal Times, May 8, 2006
• James E. Hopenfeld, “Counsel Can Use Statistical Methods to Assess Patent Risk,” San Francisco Daily Journal, Vol. 8, No. 147, July 31, 2002
• James E. Hopenfeld and Kevin P.B. Johnson, “Assessing Your Patent Risk,” The Venture Capital Review, Issue 9, Fall 2001
• James E. Hopenfeld, “Festo:  A Jurisprudential Test for the Supreme Court?” 1 J. Marshall Rev. Intell. Proop. L. 69 (2001)
• Contributed to Schwartz & Goldman, “Patent Law & Practice,” 6th ed. (2008)

Judicial Clerkship

• Honorable Roderick R. McKelvie, U.S. District Court, District of Delaware

• James was instrumental in protecting one of our signature products in a tough trademark/breach of contract trial. He not only discredited our opponent's experts on cross-examination, but also prepared our key expert witness (who had never before testified at trial) so well, that she turned the tables on an otherwise vigorous cross-examination. James' efforts helped win us a great result.

• As a trial lawyer, James is the complete package: he has a razor-sharp and creative mind, great instincts, fearlessness, and superb trial skills. He brings a meticulous approach to case preparation and a relentless dedication to his clients. In short, he is a formidable advocate – and adversary.

• I have admired and learned from Ed Rice and James Hopenfeld since the early 1990s when I worked with them at the U.S. Department of Justice. Ed and James are two of the smartest, hardest working, and most thoughtful attorneys I know. Both have a deep knowledge of and passion for the intricacies and strategies of patent law and litigation, which is evidenced by their superb written and oral advocacy. I applaud their innovative strategies for efficiently staffing patent cases to achieve maximum success for their clients at a reasonable cost.

• I had the pleasure of working with James as an expert witness. He is among the most energetic and brilliant IP attorneys I've ever had the opportunity to work with in my role. He is also excellent at teaching and communicating points of law to subject matter experts and others with non-legal background. I wouldn't hesitate to work with him again, and any client who has the opportunity to work with him will clearly see that he's a cut above.

• When I was in-house counsel for a cutting edge biotechnology and pharmaceutical company, I turned to James for help on our toughest intellectual property problems, and for good reason. He knew the law, understood our business, and was quick to offer creative solutions. He didn't just work for me, he worked with me. Those are just some of the reasons why he is among the best in his profession. I would recommend James without hesitation, especially for in-house counsel looking for both great work and a productive collegial relationship.

• I was the CEO of a growing technology company when we got hit by a patent infringement lawsuit that threatened the existence of our company. With James’ help, we were able to turn back that threat. He mastered our business quickly, and formulated a legal strategy with his team that got us the solution we needed. James is a first class lawyer. We found James to be very friendly and always professional. Should we ever find ourselves in a similar situation, James would be my first choice to defend our case. We have full confidence in his capabilities.