James P. Muraff’s practice involves all aspects of intellectual property, such as domestic and foreign patents, trademarks, copyrights, trade secrets and unfair competition, including counseling, investigations, transactions, prosecution and litigation, with a primary focus in the computer hardware and software, electronics, and Internet technologies.
Jim is regularly involved with software and Internet clients for transactional, licensing, clearance, and general intellectual property law counseling. Jim’s practice also includes significant litigation experience involving various technologies in patent, trademark, unfair competition, copyright and trade secret cases within federal courts, a representative list of which is set forth below. He has been involved with all of the related aspects of these cases, such as discovery and discovery motions, as well as numerous motions for summary judgment, motions to dismiss, and trial preparation. Several of these cases have included foreign parties and international issues.
Jim is a registered patent attorney, and his practice includes significant patent clearance and patentability counseling, as well as patent application preparation and prosecution before the U.S. Patent and Trademark Office primarily for computer software, methods of doing business, e-commerce, Internet, computer hardware, electrical and mechanical patents. In addition, he has experience in reexamination and reissue in several of these technologies.
Jim has industry experience as a software engineer and as a systems analyst, including software programming and support for microcontrollers, as well as personal, mini and mainframe computers. His industry experience includes at least controls and networking technologies.
Jim is an adjunct faculty member of The John Marshall Law School, where he teaches substantive patent law and introductory intellectual property law classes. He has also lectured at the University of Illinois at Urbana-Champaign, Northwestern University School of Law, Illinois State Bar Association, Law Seminars International, the Intellectual Property Law Association of Chicago (IPLAC), and other seminars on intellectual property matters. He also teaches at the PLI Patent Drafting Boot Camp. Jim further teaches Chinese patent examiners and re-examiners, as well as groups of Chinese IP attorneys, U.S. patent law topics within a program he helped create through The John Marshall Law School Chinese IP Resource Center. He has also co-chaired The John Marshall Law School Annual IP Symposium on several occasions.
Jim has served on the board of managers and various committees of IPLAC and acted as the vice president of the IPLAC Educational Foundation. He also judges moot court competitions at The John Marshall Law School and at the IIT Chicago-Kent College of Law. He further has served on the board of advisors for the Northwestern University Law School Journal of Technology and Intellectual Property. He has also been a judge for the Modern Marvels Invent Now Challenge, sponsored by the History Channel and Invent Now, Inc., a subsidiary of the National Inventors Hall of Fame Foundation.
Jim regularly writes articles on intellectual property law topics, which are published in various legal and industry publications. He is a contributing author of the 2007-2014 editions of Patent Claim Construction in the Federal Circuit, produced by the Litigation Committee of the IPLAC. Jim sits on the American Intellectual Property Law Association’s AIPLA Quarterly Journal Editorial Board. He is also quoted from time to time in the press on intellectual property law matters.
While in law school, Jim was a Staff Editor for The John Marshall Law Review.
Court Admissions — Supreme Court of Illinois
U.S. Court of Appeals for the Federal Circuit
U.S. District Court for the Northern District of Illinois
U.S. District Court for the Central District of Illinois
U.S. District Court for the Central District of California
U.S. District Court for the Southern District of New York
U.S. District Court for the District of Arizona
U.S. District Court for the District of Connecticut
U.S. District Court for the District of Delaware
U.S. District Court for the Southern District of Florida
Hawk Technology Systems, LLC v. Presence Hospitals PRV (C.D. Ill.) — Representing defendant in a patent infringement matter relating to digital video surveillance systems.
Hawk Technology Systems, LLC v. United Scrap Metal, Inc. (N.D. Ill.) — Representing defendant in a patent infringement matter relating to digital video surveillance systems.
UL LLC v. Spencer Gifts LLC and Sportsheets International, Inc. (N.D. Ill.) — Represented defendant in response to a charge of trademark infringement and involving a U.S. Customs and Border Patrol seizure of goods.
Redbox Automated Retail, LLC v. HAPA AG (Trademark Trial and Appeal Board) — Represented plaintiff in a trademark cancellation proceeding before the USPTO Trademark Trial and Appeal Board.
Redbox Automated Retail, LLC v. Stanley Lee Barnes d/b/a Red Box Tickets USA, LLC (Trademark Trial and Appeal Board) — Represented plaintiff in a trademark opposition proceeding before the USPTO Trademark Trial and Appeal Board.
Samsung Electronics Co., Ltd. et al. v. Petters Group Worldwide, LLC et al. (D. Del.) — Represented defendant in a patent infringement matter relating to consumer electronics.
NICE Bearings, Inc. v. PEER Bearing Co. (D. Conn.) — Represented defendant in a trademark and copyright infringement matter relating to product identifiers.