“...‘phenomenal’...an ‘incredible trial lawyer’ whose ‘high energy’ practice includes IP and complex commercial litigation and arbitration.”
Chambers USA

Overview

James R. Ferguson focuses his practice on intellectual property, complex commercial litigation, and domestic and international arbitration. He has been lead trial counsel in patent, trademark, trade secret, antitrust, insurance, IT, class action, breach of contract and employment cases in federal courts and domestic and international arbitral tribunals. A Fellow of the American College of Trial Lawyers, Jim has first-chaired more than 35 cases to verdict or judgment and argued more than 30 appeals in federal appellate courts.

In U.S. and international arbitration, Jim has been lead counsel for a wide range of Fortune 500 companies in the pharmaceutical, medical device, financial services, global technology, aviation  and other industries. These matters have involved license disputes, patent claims, joint ventures, co-development agreements, IT disputes and many other breach-of-contract issues.

In Chambers, clients describe Jim as a "phenomenal" advocate and an “incredible trial lawyer” who is "very responsive and very smart" . . . His "high energy" practice includes IP and complex commercial litigation and arbitration. (Chambers USA). In similar publications, he has been described as "creative," "dynamic," "incredibly impressive," an "exceptional attorney," and an "extraordinarily hardworking guy" with "sophisticated contentious expertise." (Chambers USA; Legal 500; IAM 250; IAM Patent 1000). Jim is listed in Chambers, Legal 500The Best Lawyers in America, IAM Life Sciences, IAM Patent 1000 and Corporate Counsel's Top Lawyers.

Jim also maintains an active practice as a neutral in domestic and international arbitrations. He is a Fellow of the Chartered Institute of Arbitrators and a registered neutral with AAA, CPR, the International Center for Dispute Resolution, the International Chamber of Commerce (United States), the World Intellectual Property Organization, and the Stockholm Chamber of Commerce. He has chaired or served as a sole or co-arbitrator in more than 25 U.S. and international arbitrations involving a broad range of industries.

Jim is a Lecturer in Law at the University of Chicago Law School and an Adjunct Professor at the Northwestern University Pritzker School of Law and Northwestern University Feinberg School of Medicine. He is also a member of the ICC Commission on Intellectual Property and the US Council for International Business Intellectual Property Committee.

Spoken Languages

  • English

Experience

  • Won summary judgment as lead trial counsel for a U.S. financial services company in a case involving alleged misrepresentations in the sale of premium-financed insurance. (2019)
  • Won a U.S. arbitration as lead trial counsel for a global pharmaceutical company in a patent licensing dispute with the manufacturer of diagnostic technology. The arbitration resulted in a complete victory for the client after four days of hearing before three arbitrators. (2018)
  • Won a patent infringement case as lead trial counsel for a diversified global technology company in a dispute involving sensor-based technology.   The litigation resulted in the stipulated dismissal of the opposing party’s entire case based on evidence showing the asserted patent to be both invalid and not infringed. (2018)
  • Won a patent infringement case as lead trial counsel for an international medical device company charged with infringing a patent covering an endoscopic stone extraction device. The case featured a successful motion to transfer from the Eastern District of Texas, and a PTAB decision invalidating all of the claims of the patent-in-suit. (2017)
  • Won a six-day trial in a Sarbanes-Oxley whistleblower case as lead trial counsel for a UK-based financial services company and a major US insurance company. (2016)
  • Won a U.S. arbitration as co-lead counsel for a global pharmaceutical company in an IP licensing dispute in which the claimant sought more than $140 million in damages. Following a nearly four-week hearing, the Tribunal awarded no damages to the claimant. (2016)
  • Won a district court judgment as lead trial counsel for Abbott GmbH in a case involving a patent covering a novel protein and then obtained a Federal Circuit decision upholding the judgment. Featured in IP 360 (April 16, 2015 and September 20, 2016), 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., 837 F.3d 1341 (Fed. Cir. 2016). (2016)
  • Lead counsel for a global financial services company in an internal investigation that resulted in a report submitted to regulatory authorities in multiple jurisdictions, including the PRA in the UK and the SEC in the US, with no regulatory action taken. (2012-15)
  • Won dismissal for an international medical device company charged with infringing six patents covering various endoscopic catheters. The plaintiff dismissed its complaint with prejudice after nearly two years of discovery and numerous pre-trial hearings. Medical Instruments Development, Inc. v. Cook Medical Incorporated, Case No. 09-1409 (E.D.N.Y.) (2013)
  • Won a U.S. arbitration as lead counsel for an international bank in an information technology dispute involving claims of trade secret misappropriation, breach of license, and breach of fiduciary duty. The Tribunal rejected all of the claimant’s theories of recovery and awarded no damages against the bank. (2013)
  • Won an international arbitration (ICC) in London as co-lead counsel for a major European airline in an information technology dispute in which the airline brought breach-of-contract claims against an IT provider. Following a one-week hearing, the Tribunal awarded the airline specific performance based on the opposing party's breach of contract. (2012)
  • Co-lead counsel for a major pharmaceutical company in an international arbitration (ICC) in Paris involving the alleged breach of a patent license covering a blockbuster drug. (2012)
  • Won a permanent injunction as lead counsel 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 as lead counsel 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 no settlement payment. First Trust Portfolios L.P. v. Jackson Nat’l Life Ins. Co., et al., Case No. 07 CV 99463 (N.D. Ill. 2008); 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 dismissed its complaint with prejudice after agreeing to a modest settlement payment. 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 as lead counsel 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. 03-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 upholding the admissibility of three scientific studies showing the unexpected benefits of the drug. Knoll Pharmaceutical Co. v. Teva Pharmaceuticals, 367 F.3d 1381 (Fed. Cir. 2004).
  • Won a jury verdict of no liability as lead trial counsel for a California computer company following a four-week jury trial against a plaintiff seeking more than $40 million in damages. Williams Electronic Games, Inc. v. Milgray Electronics, et al., Case No. 97 C 3434 (N.D. Ill. 2003).
  • 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).
  • 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).

Education

Northwestern University School of Law, JD, Law Review - Articles Editor,
Clerkship - Honorable William J Bauer, US Court of Appeals for the Seventh Circuit

Indiana University, BA, Phi Beta Kappa

Admissions

  • Illinois

Court

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

Memberships

  • Fellow, American College of Trial Lawyers
  • Board of Directors, Ann and Robert Lurie Children’s Hospital of Chicago Research Center
  • Lecturer, University of Chicago Law School
  • Adjunct Professor, Northwestern University School of Law
  • Adjunct Professor, Northwestern University Medical School
  • Fellow, Chartered Institute of Arbitrators