Joshua James

Associate

outside the office back to the office
Joshua James
Associate
Overview

“Constant, open communication between lawyer and client is the key to success.”

Energetic and committed, Josh James brings a strong background in biomedical and chemical engineering to helping clients strengthen and enforce their intellectual property rights. His practice focuses on patent litigation, particularly Hatch-Waxman pharmaceutical litigations in federal courts and inter partes review (IPR) proceedings before the Patent Trial and Appeal Board (PTAB), as well as trademark counterfeiting litigation.

Josh’s scientific knowledge helps him hit the ground running, especially in cases involving highly complex chemical compounds. He easily meets technical experts on their own terms and uses that knowledge to take a key role on joint-defense groups. Thinking forward, Josh is able to use his experience to help clients evaluate strategies that involve both federal courts and the PTAB.

Josh has been involved in multiple bench trials; arguing motions before judges in both federal courts and the PTAB; taking and defending depositions; drafting appellate briefs; drafting IPR and reexamination briefs; drafting pleadings on invalidity, noninfringement and claim construction issues; reviewing and producing documents; and leading coordination and strategy sessions among members of joint defense groups.

Practice Groups
Education
  • J.D., cum laude,
    Indiana University Maurer School of Law, 2014
  • B.S., Biomedical Engineering, summa cum laude,
    Illinois Institute of Technology, 2011
  • B.S., Chemical Engineering, summa cum laude,
    Illinois Institute of Technology, 2011
Bar Admissions
  • Illinois
  • U.S. Court of Appeals, Fed. Cir.
  • U.S. Dist. Court, N.D. Illinois
  • U.S. Patent & Trademark Office
Area of Focus
Experience | Overview

  • Josh has participated in bench trials, drafted and argued a motion, and drafted substantive briefs in several Hatch-Waxman pharmaceutical litigations.

  • He has taken a deposition in federal district court and defended a deposition in an IPR proceedings.

  • Josh has drafted an IPR petition that invalidated 19 of 34 claims and drafted a request that instituted reexamination on the remaining claims.

Experience | Legal Experience

Brinks Gilson & Lione, Chicago, IL
Associate, September 2014-Present

Marshall Gerstein & Borun LLP, Chicago, IL
Summer Associate, July 2013-August 2013
 

Experience | Non-Legal Experience

Illinois Institute of Technology (IIT), Chicago, IL
Research Experience for Undergraduates, June 2010-August 2011
Inter-Professional Research Opportunity (IPRO), January 2011-May 2011
Biomedical Engineering Senior Design, August 2009-May 2010
Research Experience for Undergraduates, June 2009-August 2009

Rehabilitation Institute of Chicago, Chicago, IL
Research Experience for Undergraduates, June 2008-August 2008

Experience | Civic Activities
ACS Spike Out Cancer Participant, 2008-2010
Project Linus Blanket Day, 2007-2009
Forward Thinking
District Courts Struggle to Schedule Patent Trials During the COVID-19 Pandemic
July 24, 2020
Federal Circuit Sets a High Bar for Article III Standing for Petitioners Not Yet Sued on Patents Under Inter Partes Review
July 24, 2019
Improper Venue Causes a Hatch-Waxman Case To Leave the District of Delaware
October 24, 2018
Brinks Webinar | Selected Issues Impacting Biopharma and Medical Device Patent Post-Grant Review Proceedings
November 09, 2017
USPTO Seeking Potential Reforms to PTAB Proceedings
April 14, 2017
USPTO Seeking Potential Reforms to PTAB Proceedings
April 14, 2017
PTAB Sua Sponte Reconsiders Institution Nearly One Year After Institution Decision Issued
November 22, 2016
Update: Is it Accessible? Internet Publications As CBM Prior Art
March 07, 2016
Updated: Is It Accessible? Internet Publications As CBM Prior Art
March 07, 2016
Is It Accessible? Internet Publications As CBM Prior Art
December 08, 2015
USPTO Announces Rules Changes: "Quick-Fixes" to AIA Rules Effective Immediately; Previews Additional Potential Rule Changes
March 27, 2015
Federal Circuit Denies En Banc Rehearing for Hepatitis Drug Patent Ruling
October 27, 2014
Press Releases & Events
November 09, 2017
Brinks Webinar | Selected Issues Impacting Biopharma and Medical Device Patent Post-Grant Review Proceedings

On Thursday, November 9, 2017, at 12:00pm CT, David Bernard, Joshua James, and Andrew McElligott, attorneys with Brinks' Post-Grant Patent and Medical Device practice groups, will present the webinar, "Selected Issues Impacting Biopharma and Medical Device Patent Post-Grant Review Proceedings." Jason Schigelone...

November 01, 2017
Attorneys To Address Issues Affecting PTAB Proceedings for Biopharmaceutical and Medical Device Innovations

CHICAGO—Brinks Gilson & Lione intellectual property lawyers David Bernard, Joshua James, and Andrew McElligott will present "Selected Issues Impacting Biopharma and Medical Device Patent Post-Grant Review Proceedings,” in a webinar at noon CST on Thursday, November 9, 2017...

September 15, 2014
Brinks Gilson & Lione Adds Nine Associates to Support Growing Demand for Its Intellectual Property Law Expertise
CHICAGO—In response to rising demand for its core intellectual property legal services, Brinks Gilson & Lione recently announced the hiring of nine new associates. Brinks' incoming associates have professional and educational ...
Honors
  • Biomedical Engineering Distinguished Undergraduate Alumnus, Illinois Institute of Technology, 2017
  • Dean’s Honors, Indiana University Maurer School of Law, Fall 2011 and Spring/Fall 2013
  • Camras Scholarship, Dean’s List, and Tau Beta Pi, Illinois Institute of Technology, 2007-2011
Affiliations
  • PTAB Bar Association, 2016-present
  • American Intellectual Property Law Association, 2011-present
  • Chicago Bar Association, 2015-present
  • Indiana Law Journal, Board Member, 2013-2014
  • Intellectual Property Association, 2011-2014
  • Phi Alpha Delta, Clerk, 2013

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