“...‘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, 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 decision and argued more than 25 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, IT, financial services, global technology, aviation and other industries.

In the last four years alone, Jim has won a patent license arbitration for a global life sciences company; won a defense verdict in a Sarbanes-Oxley whistleblower trial for a UK-based financial services company; prevailed in the arbitration of a co-development dispute for a Fortune 100 pharmaceutical company; won a patent dispute for a global coalition of automobile manufacturers; and won judgments for three other multi-national companies in patent infringement and insurance cases.

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 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 ICDR, and the ICC.

A formal federal prosecutor, Jim is an Adjunct Professor at the Northwestern University Pritzker School of Law and Northwestern University Feinberg School of Medicine and a Lecturer in Law at the University of Chicago (2013-20). He is also a member of The Fellows of the American Bar Foundation (a prestigious global honorary society), the ICC Commission on Intellectual Property, and the US Council for International Business Intellectual Property Committee.

Spoken Languages

  • English

Experience

  • Won a major patent case as lead trial counsel for a global coalition of the 18 largest automobile manufacturers in Europe, Asia and the U.S. The case involved a novel touch-based technology that measures blood alcohol levels when a driver's finger touches the ignition button. (2020).
  • 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 a three-arbitrator panel. (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 three-arbitrator panel 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. (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 three-arbitrator panel 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 three-arbitrator panel awarded the airline specific performance. (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. (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. (2008).
  • Won a consent judgment of patent validity and infringement as lead counsel for a major pharmaceuticals company 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. (2006).
  • Lead trial and appellate counsel for a major pharmaceuticals company 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. (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. (2003).
  • Won a jury verdict of acquittal as lead counsel for a Fortune 500 company following a four-week jury trial in a criminal case involving allegations of price-fixing and bid-rigging. (2002).
  • Won a jury verdict of acquittal as lead counsel for a corporate executive following a two-week criminal trial involving alleged violations of state and federal environmental laws. (2002).

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

Activities

  • 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