Jim Klaiber

Jim Klaiber is a counsel in the firm's TMT/IP practice group. He focuses on all aspects of intellectual property law, including transactions, litigation, and client counseling, and offers particular education and experience in electrical and mechanical technologies.

Jim represents a wide range of clients, including a number of multinational corporations, and has played a leading role in litigating many large intellectual property cases before the U.S. District Courts, the International Trade Commission, the U.S. Court of Appeals for the Federal Circuit, and the Supreme Court. As an attorney, he has handled licensing and litigation efforts involving rechargeable batteries for automotive applications and power-saving circuitry for semiconductor chips. He has also counseled clients on intellectual property aspects of cryptocurrency and other blockchain technology applications, and submitted a comment on New York’s proposed “bitlicense” regulations on behalf of a well-known investor in that space. 

Work highlights

• DataCloud v. Squarespace: Led team representing the defendant in a pair of patent litigations brought by nonpracticing entities affiliated with the IP Investment Group

• Sailed v. Amazon: Led team in obtaining order permitting U.S. discovery of Amazon under § 1782 in support of Chinese patent infringement proceedings

• Enchante v. Helen of Troy: Represented the declaratory judgment plaintiff against assertions of patent and trademark infringement

• Stanacard v. Rubard: Represented the plaintiff patentee and copyright holder against a competitor accused of copying a calling-card software code
• TC Heartland v. Kraft Foods: Represented the plaintiff in winning a reversal of patent venue judgment; successfully convinced the Supreme Court to overturn decades of circuit precedent interpreting the patent venture statute

• Bosch v. Costco: Represented the defendant in winning summary judgment, dismissing claims that Costco's wiper products allegedly infringed four Bosch patents; also won six parallel USPTO IPR proceedings, holding asserted Bosch patent claims invalid

• SEC v. Matthew T. Mellon II et al.: Represented the defendant, a billionaire cryptocurrency investor and banking heir, in the SEC's investigation of shareholder fraud by the board of Medient Studios Inc., and in successfully settling an SEC administrative proceeding, unrelated to the fraud, charging Mellon with violating securities laws by failing to timely report his receipt of Medient stock

Leadership roles & memberships

• Chair of the New York City Bar Association Intellectual Property Council, 2019 – 2022
• Chair of the New York City Bar Association's Patents Committee, 2013 – 2016
• MIT Enterprise Forum, New York City: Chapter Chair for 2011 – 2013 term; Director, 2006 – 2021
• Scientific advisory board member of the National Science Foundation's sensor science research program, a program administered by the University of Maine, 2005 – 2012
• Member, New York Intellectual Property Law Association

Jim holds a Juris Doctor from Fordham University School of Law. He also obtained an M.Eng., Mechanical Engineering from University of California, Berkeley and a M.S., Mechanical Engineering from University of Michigan, as well as a B.S. from Massachusetts Institute of Technology.

Publications

• Co-Author, Impacts of Covid-19 on Intellectual Property in Multiple Jurisdictions: United States, International Bar Association Intellectual Property and Entertainment Law Committee News, July 2020

• "Lexmark Court to Address International Patent Exhaustion and Unauthorized Imports," New York Law Journal (Aug. 3, 2015)

• "Applying US Intellectual Property Law to 3D Printing," International Foundation for Art Research Journal 15, nos. 3 and 4 (December 2014): 63-66
• Co-author, "IP: Supreme Court to Determine Patentability of Software-Implemented Inventions," InsideCounsel (March 2014)

• Co-author, "How Supreme Court's Medtronic Ruling May Impact Licenses," Law360 (February 2014)
  
  

Speaking engagements

• Thinking Inside the Black Box: AI Due Diligence in M&A Transactions,” Panelist, American Bar Association’s Business Law Section CLE Program, April 1, 2022
• Patent Litigation Fundamentals,” Presenter, New York City Bar Association Patents Committee, November 9, 2021 
• AI, Patents, and Secrecy Orders," Panelist, The American Bar Association Public Contract Law Section's IP Committee and the New York City Bar Association Council on Intellectual Property, October 28, 2021 
• An Introduction to Intellectual Property Law for the Small Law Firm Practitioners: When Might Your Client Have an IP Issue and How to Start to Think About It," New York City Bar Association Webcast, April 2021
• No Bucks, No Buck Rogers: Negotiating IP Rights under USG Contracts to AI and Other Emerging Technologies,” Panelist, New York City Bar Association Webcast, March 22, 2021
• Fashion and Retail in 2021 and Beyond: Post-COVID Reality and Where to Go From Here," New York City Bar Association’s Fashion Law Committee and Council on Intellectual Property, February 2021
• Into the Wild: Leveraging Nature’s Own Designs to Rapidly Innovate for the Future,” Panelist, MIT Enterprise Forum of New York City, December 10, 2020