“...‘phenomenal’...an ‘incredible trial lawyer’ whose ‘high energy’ practice includes IP and complex commercial litigation and arbitration.”Chambers USA
Multi-national companies rely on James R. Ferguson for representation in intellectual property litigation, complex commercial litigation, and US 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 final judgment and argued more than 25 appeals in federal appellate courts. As part of his practice, Jim also counsels multinational clients on licensing and protecting IP portfolios.
In US and international arbitration, Jim has been lead counsel for a wide range of multi-national companies in the pharmaceutical, medical device, IT, financial services, global technology, aviation and other industries.
In the last six years alone, Jim has won a patent license arbitration for a global life sciences company; won a post-acquisition litigation for a US financial services company; won a defense verdict in a Sarbanes-Oxley trial for a UK financial services company; prevailed in the arbitration of a co-development dispute for a European pharmaceutical company; won a patent litigation for a global coalition of automobile manufacturers; won a patent infringement case for a diversified global technology company; and secured an attorneys’ fee award in a bankruptcy proceeding involving the disputed ownership of patent rights.
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, the ICC and WIPO, as well as an appointee to SVAMC's "List of the World's Leading Technology Neutrals."
A former 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 Law School (2013-20).
- Won a post-acquisition litigation as lead trial counsel for a US financial services company in a Delaware Chancery case involving the disputed valuation of mortgage servicing rights. (2022)
- Won an award of attorneys’ fees as lead trial counsel in a Delaware bankruptcy proceeding involving the breach of a court order dealing with the ownership of certain patent rights. (2022)
- Won a patent litigation as lead trial counsel for a global coalition of the 18 largest automobile manufacturers in Europe, Asia, and the US. 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 US financial services company in a case involving alleged misrepresentations in the sale of premium-financed insurance. (2019).
- Won a US 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 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 US 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).
- Served as 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 US 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 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).
- 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).
- 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).
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
- 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
- Fellow, American College of Trial Lawyers
- Member, ICC Commission on Intellectual Property
- Member, US Council for International Business Intellectual Property Committee
- Board of Directors, Manne Research Center, Ann and Robert Lurie Children’s Hospital of Chicago
- Lecturer, University of Chicago Law School (2013-2020)
- Adjunct Professor, Northwestern University Pritzker School of Law
- Adjunct Professor, Northwestern University Feinberg School of Medicine
- Fellow, Chartered Institute of Arbitrators
- Fellow, American Bar Foundation
Described by clients in Chambers USA, Legal 500, IAM 250 and IAM Patent 1000 as:
- A "phenomenal" advocate
- An “incredible trial lawyer”
- "Very responsive and very smart" . . . with a "high energy" practice that includes IP and complex commercial litigation and arbitration
- "Creative," "dynamic"
- "Incredibly impressive," an "exceptional attorney"
- An "extraordinarily hardworking guy"
- Possessing "sophisticated contentious expertise"