Experience 

James R. Ferguson has a practice that emphasizes intellectual property and complex commercial litigation, as well as domestic and international arbitration. He has served as lead trial counsel for major corporations in patent, trademark, trade secret, licensing, breach of contract and Lanham Act disputes in the pharmaceutical, medical device, information technology, insurance, financial, computer and chemical industries.

A former federal prosecutor, Jim has also served as lead trial counsel for corporations, partnerships, and other entities in a broad range of commercial and white-collar criminal litigation, including antitrust, securities, environmental and tax cases. He has tried more than 50 trials to verdict and argued more than 40 appeals in federal and state appellate courts. He has also represented major corporations before both domestic and international arbitral tribunals.

Jim has been called a “phenomenal” lawyer who “earned his spurs as a 'high energy' operator whose practice includes IP and white-collar criminal defense” (Chambers USA). Legal 500 describes Jim as an "exceptional attorney and a real expert in the patent litigation field." (Legal 500 (2009)).  Jim is a Fellow of the American College of Trial Lawyers, and he is listed in Chambers’ America’s Leading Lawyers for Business (Litigation), Legal 500, The Best Lawyers in America, Corporate Counsel's Top Lawyers (Bet-the-Company, Commercial and White Collar Criminal Litigation), and Leading Lawyers Network.  Jim is also listed as a "Band One" patent litigator in life sciences by IAM Life Sciences.

Notable Engagements 

• Won an international arbitration for a major European airline in an information technology dispute in which the Tribunal awarded specific performance based on the opposing party's breach of contract (2010).
• Won summary judgment for Abbott Laboratories in an appeal to the DC district court from a PTO interference proceeding involving a patent covering a novel protein.  On remand, the Board of Patent Appeals issued a decision in Abbott's favor.  Featured in IP 360 (May 27, 2010; Sept. 16, 2008), the case is the first reported decision addressing the issue of whether a partial amino acid sequence provides sufficient written description for a novel protein.  Abbott GmbH & Co. KG v. Yeda Research & Dev. Co., Ltd., 576 F.Supp.2d 44 (D.D.C. 2010).
• Won a permanent injunction for a national partnership charged with infringing a federally-registered trademark.  Featured in both IP 360 (July 24, 2009) and BNA Patent and Trademark Reporter (July 31, 2009), the case is the first reported decision in which the defendant obtained both a preliminary and a permanent injunction against the owner of a federally-registered mark. Tuccillo v. Geisha NYC, LLC, 635 F.Supp.2d 227 (E.D.N.Y. 2009).
• Won dismissal for six national financial institutions charged in two separate cases with infringing business methods patents covering methods of selecting stocks for institutional investment funds.  In both cases, the plaintiff voluntarily dismissed its complaint with prejudice following our disclosure of invalidating prior art and non-infringement positions.  First Trust Portfolios L.P. v. Jackson Nat’l Life Ins. Co., et al., Case No. 08 CV 4853 (N.D. Ill. 2009).
• Lead trial counsel for McDonald’s Corporation in the successful defense against a charge of infringing a business methods patent covering a computerized method involving pre-paid gift cards.  The plaintiff agreed to an extremely favorable settlement following our disclosure of prior art and non-infringement positions.  Card Activation Technologies v. McDonald’s Corp., Case No. 06 CV 5578 (N.D. Ill. 2007).
• Won a consent judgment of patent validity and infringement for Solvay Pharmaceuticals subsidiaries in two consolidated patent cases brought under the Hatch-Waxman Act.  The consolidated case involved patent challenges by two different ANDA filers to the first transdermally-administered hormone ever approved by the FDA, with annual revenues in excess of $300 million.  Unimed Pharmaceuticals, Inc. v. Watson Pharmaceuticals, Inc. and Paddock Laboratories, Case No. 05-CV-2503 (N.D. Ga. 2006).
• Lead trial and appellate counsel for an Abbott Laboratories subsidiary in a patent case brought under the Hatch-Waxman Act that resulted in a Federal Circuit victory and a favorable settlement. Knoll Pharmaceutical Co. v. Teva Pharmaceuticals, 367 F.3d 1381 (Fed. Cir. 2004).  The Federal Circuit’s decision upheld the admissibility of three scientific studies commissioned after the filing of the litigation to show the synergistic effect of the patented combination.
• Won a jury verdict of no liability for a California computer company following a four-week jury trial against a plaintiff seeking more than $40 million in damages. The jury found no liability based on affirmative defenses of ratification and in pari delicto.  Williams Electronic Games, Inc. v. Milgray Electronics, et al., Case No. 97 C 3434 (N.D. Ill. 2004).
• Won summary judgment of patent invalidity for Abbott Laboratories as lead trial and appellate counsel in a patent infringement action that was affirmed by the Federal Circuit. PTS Labs LLC v. Abbott Laboratories, 25 Fed.Appx. 1992 (2003).
• Lead trial counsel for Solvay Pharmaceuticals in defeating an attempt to enjoin the company from terminating its co-marketing and co-promotion agreements with another company. Boehringer Ingelheim v. Solvay Pharmaceuticals, (C.D. Ohio 2002).
• Won a permanent injunction for Abbott Laboratories in an appeal to the district court from a PTO interference proceeding involving a patent for covering a method for amplifying target nucleic acid through ligase chain reaction. Abbott Laboratories v. City of Hope, (N.D. Ill. 2002).
• Won a permanent injunction for Abbott Laboratories against a competitor that had made misleading comparative statements about the client’s product. Abbott Laboratories v. PTS Labs, (N.D. Ill. 2000).
• Won a permanent injunction for Abbott Laboratories against a competitor that had made misleading statements about the FDA status of the client’s drug. Abbott Laboratories v. Watson Pharmaceuticals, Inc., (N.D. Ill. 2001).
• Lead trial counsel for a Fortune 150 company in two declaratory judgment actions challenging the validity of a patent covering textile manufacturing methods (settled favorably). Fruit of the Loom v. Sara Lee Corp.; Russell Corp. v. Sara Lee Corp. (N.D. Ill. 2000).
• Won a jury verdict of acquittal for a Fortune 500 company following a four-week jury trial in a criminal case involving allegations of price-fixing and bid-rigging. United States v. Prairie Farms Dairy, Case No. 99 CR17 (S.D. IN.).
• Won a jury verdict of acquittal for a corporate executive following a two-week criminal trial involving alleged violations of state and federal environmental laws. State of Illinois v. John R. Skelley (2000).
• Won a jury verdict of liability for a hospital corporation following a two-week trial in a case involving violations of a non-compete agreement.
• Lead appellate counsel for a former Assistant US Attorney in winning an en banc Seventh Circuit decision overturning a panel opinion critical of the prosecutor.
• Won an Illinois Supreme Court decision in a defamation action involving a lawyer’s ethical obligation to report misconduct by other attorneys. Skolnick v. Altheimer & Gray, 191 Ill 2d. 214 (2000).

Education 

Northwestern University School of Law, JD; Articles Editor, Northwestern University Law Review; Clerkship - Honorable William J Bauer, US Court of Appeals for the Seventh Circuit • Indiana University, BA, MA; Phi Beta Kappa

Admitted

• US Court of Appeals for the Federal Circuit
• US Tax Court
• US Court of Appeals, Second Circuit
• US District Court, District of Connecticut
• US District Court, Northern District of Illinois, including Trial Bar
• US Court of Appeals, Seventh Circuit
• Illinois