James P. Muraff

Partner

Jim is a strategic intellectual property advisor who helps clients develop and protect the value of their global intellectual property portfolios. His practice encompasses all components of intellectual property – domestic and foreign patents, trademarks, copyrights and trade secrets – with a primary focus on businesses seeking market penetration and growth in computer software, hardware, electronics, automation, and internet technologies.

A registered patent attorney, Jim is highly experienced in patent clearance and patentability counseling, as well as patent application preparation and prosecution before the U.S. Patent and Trademark Office. He regularly advises clients concerning corporate transactions, licenses and transfers related to various components of their intellectual property portfolios. Jim also has extensive experience enforcing and defending clients’ intellectual property rights in litigation involving numerous technologies before federal courts across the country.

Before he started his legal career, Jim obtained valuable industry experience as a software engineer and systems analyst. He gained valuable insight into the vital business considerations and needs of companies that develop and market high-tech software and hardware products. His practical and legal background enables him to serve as a reliable business and legal advisor who develops cost-effective and competition-focused strategies to achieve their objectives.

A substantial portion of Jim’s practice is devoted to developing comprehensive intellectual property portfolio strategies for mobility, autonomous, infotainment, communication, navigation, and other controls technologies for the automobile and heavy equipment industries, prescription-servicing computer systems for pharmacies, medication delivery systems used by nurses, quick-service restaurant order fulfillment systems and automated vending computer systems.

Jim is an adjunct faculty member of The John Marshall Law School, where he teaches substantive patent law and introductory intellectual property law classes. 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 been listed with Chambers for patent law for several years. He has served on the board of managers and various committees of IPLAC and acted as the Vice President of the IPLAC Educational Foundation. 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 has also sat on the American Intellectual Property Law Association’s AIPLA Quarterly Journal Editorial Board. He is often quoted in the press on intellectual property law matters.

  • 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.
  • Palmgard International, Inc. v. Hillerich & Bradsby Co., Inc. (N.D. Ill.) – Represented patent owner in a patent infringement matter relating to sports equipment.
  • Redbox Automated Retail v. DVDPlay, Inc. (N.D. Ill.) – Represented patent owner in a patent infringement matter relating to DVD distribution systems.
  • Lavalife, Inc. v. Sportsheets International, Inc. (Trademark Trial and Appeal Board) – Represented trademark owner in an opposition proceeding before the USPTO Trademark Trial and Appeal Board.
  • Civix-DDI, LLC v. National Association of Realtors (N.D. Ill.) – Obtained favorable decision for granting patent re-examination from the USPTO for the patent-in-suit, establishing basis for extended stay of this lawsuit.
  • KSR International Co. v. Teleflex Inc., et al. – Of Counsel in a Supreme Court brief filed by the Intellectual Property Association of Chicago as amicus curiae.
  • Cooper Bauck Corp. v. Dolby Labs, Inc. (N.D. Ill.) – Represented defendant in a patent infringement matter relating to audio electronics technology.
  • Order Inn, Inc. v. Room Serv. USA, Inc. (D. Ariz.) – Represented brand owner in a trademark infringement matter relating to the food service industry.
  • M&R Printing Equipment, Inc. v. Anatol Equipment Manufacturing Co., et al. (N.D. Ill.) – Represented patent owner in a patent infringement matter relating to a clothing printing apparatus.
  • Kane Graphical Corp. v. Magnetic Specialty (N.D. Ill.) – Represented patent owner in a patent infringement matter relating to advertising products.
  • Interactive Health LLC v. Finger-Fitting Products Inc. (C.D. Cal.) – Represented defendant in a patent infringement matter relating to adult novelty products.
  • Jackson v. Alaska Airlines Inc. et al.; Jackson v. NEC CorporationJackson v. Advanced TelecomJackson v. Info Brokerage; and Jackson v. X10 Wireless (N.D. Ill.) – Represented patent owner in various patent infringement matters relating to automated interactive voice response (IVR) systems.
  • Wolfram Research v. Cook (N.D. Ill.) – Represented plaintiff in a breach of contract and trade secret misappropriation matter relating to scientific theories.
  • Knowles Electronics, Inc. v. Microtronic U.S., Inc. (N.D. Ill.) – Represented patent owner in a patent infringement matter relating to transducers and hearing aid technology.
  • M&R Printing v. Tooling & Special (N.D. Ill.) – Represented plaintiff in a patent infringement and copyright infringement matter relating to control software for printing presses.
  • Worldtronics International v. Ever Splendor Enterprise Co.; Worldtronics International v. High Performance AppliancesWorldtronics International v. Simatelex Manufacturing Co. Ltd.; and Worldtronics International vs. Black & Decker Inc, et al. (N.D. Ill.) – Represented patent owner in patent infringement matters relating to controls circuitry for consumer electronics products.
  • Optodyne v. Leica (N.D. Ill.) – Represented plaintiff in a trade secret misappropriation matter relating to optical positioning and control systems.
  • Florida Fruit v. Diamond Drinks (N.D. Ill.) – Represented plaintiff in a trademark infringement matter relating to fruit juices.
  • OSI Industries v. Simeus Foods (N.D. Ill.) – Represented plaintiff in a trademark infringement and unfair trade competition matter relating to wholesale food products.
  • Hampden v. Advance Watch (N.D. Ill.) – Represented plaintiff in a copyright infringement matter relating to jewelry designs.
  • Ginter v. Real Media (N.D. Ill.) – Represented defendant in a trademark infringement matter and a related bankruptcy proceeding involving religious youth publications.
  • Ansco Photo v. Freider (N.D. Ill.) – Represented plaintiff in a copyright infringement matter relating to packaging for one-time use cameras.
  • Premier Networks v. US West (N.D. Ill.) – Represented plaintiff in a patent infringement matter relating to electronics.
  • IP Innovation v. Merant PLC  and IP Innovation v. Information Builders, Inc. (N.D. Ill.) – Represented plaintiff in a patent infringement matter relating to database access technology.
  • RX Plastics v. Alpha Ag Inc., et al. (N.D. Ill.) – Represented defendant in a patent infringement matter relating to farm equipment.

Bar Admissions

  • Illinois
  • U.S. Patent and Trademark Office

Court Admissions

  • Supreme Court of Illinois
  • U.S. Court of Appeals for the Federal Circuit
  • U.S. Court of Appeals for the Ninth 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