Jim leads DLA's post grant review practice and regularly represents clients in patent litigation in district courts and the ITC, where he typically serves as the technical lead attorney. In these roles, Jim directs inter partes review strategy in order to achieve maximum impact in the parallel proceeding. Jim's work focuses on electrical, computer, cellular and networking technologies, including encryption technologies, conditional access television systems, computer operating system software, touchscreens, electronic train control and signaling systems, power tools, and semiconductors. He has been recognized by Patexia as being among the Best Performing and Most Active attorneys representing petitioners in inter partes review proceedings before the PTAB. He also counsels clients regarding patentability, validity and infringement issues.
Bar admissionsDistrito de ColumbiaNueva YorkUnited States Patent and Trademark OfficeVirginia
CourtsTribunal Supremo de Estados UnidosUnited States Court of Appeals for the Federal CircuitUnited States Court of Appeals for the District of Columbia CircuitUnited States District Court for the District of ColumbiaUnited States District Court for the District of Maryland
EXPERIENCE
Representative Cases
Barkan Wireless IP Holdings, L.P. v. Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., Verizon Communications, Inc. and Cellco Partnership d/b/a Verizon Wireless – Represented Samsung in this patent infringement matter in the Eastern District of Texas regarding three patents relate to cellular networks. The case settled favorably before trial
Representing a US-based software company in managing its patent portfolio regarding cutting-edge human-computer interaction technologies
Represented a security systems company in successfully developing a litigation strategy to enforce licensed patent technology, and prevailed upon a fully-favorable claim construction
Certain Obstructive Sleep Apnea Treatment Mask Systems and Components Thereof (337-TA-1136) – Represented ResMed and its entities in the ITC as part of a multijurisdictional suit in the US, UK, Germany, Australia and New Zealand regarding sleep apnea devices. The matter concluded favorably
Applied Signal Technology v. ViaSat et al: Represented plaintiff in Northern District of California patent litigation involving satellite signal processing technology. Case is ongoing
Vellata v. Oracle: Represented defendant in Central District of California patent litigation involving Internet telephony technology. Case settled after plaintiff dedicated its patents to the public
Hewlett-Packard v. Acer: Represented plaintiff in ITC trial involving patent for monitor resolution technology. Case settled after trial but before decision
New Medium Technologies, LLC v. Miranda Technologies, Inc.: Represented defendant in Northern District of Illinois in patent litigation involving video technology. Case settled on favorable terms prior to trial
Thomas v. EchoStar Satellite: Represented defendant in Western District of N.C. in patent litigation involving conditional access technology. The patent focused on smart card technologies for set top boxes. Case settled on favorable terms after grant of motion for summary judgment on laches and favorable Markman decision for defendant
Irdeto v. EchoStar Communications: Represented defendant in District of Colorado in patent litigation involving encryption technology. The patents focused on encryption key management and generation techniques. Case settled on favorable terms after summary judgment of non-infringement on main patent was upheld by Federal Circuit
Ryobi v. Porter-Cable: Represented defendant in Northern District of Illinois in patent litigation involving laser guide technology for power tools. Case settled on favorable terms prior to trial
Lewis v. Boss Media: Represented defendant in District of Nevada in patent litigation involving video technology. Case settled on favorable terms prior to trial
IPPV v. EchoStar: Represented defendant in District of Delaware. The patents focused on pseudorandom bit stream generation and conditional access system credit management techniques. Case settled on favorable terms after trial during pendency of appeal
Education
J.D., St. John's University 1996 magna cum laude
B.S.E.E., State University of New York at Stony Brook 1988
Awards
James is recognized by Docket Navigator as a top five PTAB lawyer in the US representing petitioners (2019 Year In Review report), and repeatedly highlighted in the IAM Patent 1000 where they highlight he is "among the most technically savvy patent litigators around thanks to years of prosecution experience" and is "wonderful at translating complicated ideas – be they technical or legal – into straightforward, on-point explanations".
Jim has been recognized by Patexia (PTAB 2023 Intelligence Report) as being in the top 20 "Best Performing Attorneys Representing Petitioner" and in the top 25 "Most Active Attorneys Representing Petitioners," and in Docket Navigator as a top five PTAB lawyer in the US representing petitioners (2019 Year In Review report). Jim has also repeatedly highlighted in the IAM Patent 1000 where they highlight he is "among the most technically savvy patent litigators around thanks to years of prosecution experience" and is "wonderful at translating complicated ideas – be they technical or legal – into straightforward, on-point explanations".
Chambers USA Band 3, Northern Virginia Intellectual Property (2014-2016)
Chambers comments, "James Heintz of DLA Piper LLP (US) is experienced in handling patent prosecution and litigation matters and is often sought out by clients from the computer and electronic areas. Clients report that they 'have been really impressed with him."
Up and Coming, Northern Virginia Intellectual Property (2012-2013)
The Legal 500 United States Recommended, Patents Litigation: Full Coverage (2021)
Bylines
Wasica v. Schrader: IPR estoppel can include system prior art – key takeaways, 11 February 2020
PTAB Judges appointment unconstitutional, 6 November 2019
USPTO issues final rule on claim construction standard, 15 Oct 2018
Supreme Court Corner Q2 2018, 28 Jun 2018
US Supreme Court rules on two key patent cases: Oil States and SAS Services – key takeaways, 27 Apr 2018
