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JJuo_2011
jjuo@fulpat.com

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Areas of Practice:

Patent Prosecution
Trademark Prosecution
Litigation
Licensing

Bar Admissions:

California

Virginia

U.S. District Court for the Central District of California

U.S. District Court for the Northern District of California

U.S. District Court for the Southern District of California

U.S. Court of Appeals for the Federal Circuit

U.S. Court of Appeals for the 4th Circuit

U.S. Patent and Trademark Office

Education:

George Washington University
National Law Center, 1993, J.D.

Clarkson University, 1989, B.S.E.E.

Published Works:

"Notice That Registered Trademark In The Window?", John Marshall Review of Intellectual Property Law, 2011

"A Prosecution Bar In Patent Litigation Should Be The Exception Rather Than The Rule", Virginia Journal of Law and Technology, (co-author) 2010

"Responding to a Cease-and-Desist Letter", MX: Medtech Executive, 2010

"Egyptian Goddess: Rebooting Design Patents And Resurrecting Whitman Saddle", Federal Circuit Bar Journal, 2009

"A Quantum Of Originality In Copyright", Chicago-Kent Journal of Intellectual Property, (co-author) 2009

"Advising Against Active Inducement of Infringement", New Matter-the Journal of the Intellectual Property Section of the California Bar, 2009

"How 'Thin' Is Your Copyright?", Los Angeles Daily Journal, 2009

"Eye of the Beholder: Design Patent Infringement", Los Angeles Lawyer, 2009

"Unauthorized Acts in Declaratory Judgment", New Matter-the Journal of the Intellectual Property Section of the California Bar, 2008

Representative Cases:

San Francisco Technology, Inc. v. Elkay Plastics Co., No. 11-291, (N.D. Cal.)

Golden Temple of Oregon LLC v. Wai Lana Productions LLC, No. 09-902, (D. Or.)

Coach, Inc. v. Asia Pacific Trading Co.,
676 F. Supp. 2d 914 (C.D. Cal. 2009)

ACCO Brands USA, LLC v. Accentra, Inc., No. 07-1401 (N.D. Ill.)

In the Matter of Certain Lighting Products, Inv. No. 337-TA-594 (ITC)

SunTiger, Inc. v. Zoom Eyewear, Inc., No. 04-6805 (C.D. Cal)

Cordelia Lighting, Inc. v. American Flourescent Corp., No. 02-7343 (C.D. Cal.)

Advanced Cardiovascular Systems, Inc. v. SciMed Life Systems, Inc., 261 F.3d 1329 (Fed. Cir. 2001)

Medtronic, Inc. v. Advanced Cardiovascular Systems, Inc., 248 F.3d 1303 (Fed. Cir. 2001)

Origin Medsystems, Inc. v. General Surgical Innovations, No. 98-1416, 1999 WL 507160 (Fed. Cir. 1999)

Professional Associations and Memberships:

American Intellectual Property Law Association – Member

South Bay Bar Association – Member

Southern California Chinese Lawyers Association – Member

Past Employment Positions:

U.S. Patent and Trademark Office, Patent Examiner

ATTORNEYS

JAMES JUO specializes in both litigation and patent prosecution. A registered patent attorney, he has been successful in obtaining, licensing, and enforcing patents and trademarks. He also advises clients on the scope and validity of third party patent and trademark rights. He has worked on a wide range of technologies, including medical devices, electronics, and computer-related technologies. Earlier in his career, Mr. Juo served as a patent examiner at the U.S. Patent and Trademark Office in the technology area of television and facsimile machines.

Mr. Juo has litigated cases at both the trial and appellate level, including summary judgment, Markman claim construction hearings, and jury trials in several U.S. District Courts, including the Central District of California, and the Northern District of California. Mr. Juo also helped obtain a multi-million dollar award for one of his litigation clients. He has also appeared in several Federal Circuit appeals, including Advanced Cardiovascular Systems, Inc. v. SciMed Life Systems, Inc., 261 F.3d 1329 (Fed. Cir. 2001) (winning reversal of adverse claim construction to vacate summary judgment); Medtronic, Inc. v. Advanced Cardiovascular Systems, Inc., 248 F.3d 1303 (Fed. Cir. 2001) (winning affirmance of favorable district court decision); and Origin Medsystems, Inc. v. General Surgical Innovations, Inc., No. 98-1416, 1999 WL 507160 (Fed. Cir. 1999) (successfully overturned adverse summary judgment decision).

His article, “A Prosecution Bar In Patent Litigation Should Be The Exception Rather Than The Rule” (co-authored with David J. Pitman) was cited by the Court of Appeals for the Federal Circuit in In re Deutsche Bank Trust Company Americas and Total Bank Solutions, LLC, 605 F.3d 1373 (Fed. Cir. 2010) as “containing a comprehensive collection” of trial court decisions regarding patent prosecution bars in protective orders. And his article, “A Quantum Of Originality In Copyright” (co-authored with Katherine L. McDaniel), was selected for inclusion in the 2010 edition of the annual Thomson Reuters (West) Intellectual Property Law Review as one of the best intellectual property law articles of that past year. His published articles include “Egyptian Goddess: Rebooting Design Patents And Resurrecting Whitman Saddle” in the Federal Circuit Bar Journal; "Notice That Registered Trademark In The Window?” in the John Marshall Review of Intellectual Property Law; and "Unauthorized Acts in Declaratory Judgment" in New Matter-the Journal of the Intellectual Property Section of the California Bar. He recently co-presented a program entitled “From Batman to Paris Hilton: Design Patents for Aesthetic Attorneys” at the 83rd Annual Meeting of the California State Bar. Mr. Juo also participated as a moot court judge in the National Entertainment Law Moot Court Competition held at Pepperdine University.

Mr. Juo was recognized as a Southern California Super Lawyer in 2007, 2008, 2009 and 2010, and as a Southern California Super Lawyer Rising Star in 2005 and 2006, by the publishers of Los Angeles Magazine and The Journal for Law & Politics. He also was featured on the cover of the November 2009 issue of Los Angeles Lawyer.

Mr. Juo earned his J.D. from George Washington University in 1993, and his Bachelor of Science in Electrical Engineering from Clarkson University in 1989. Mr. Juo is admitted to the bars of California and Virginia, and is registered to practice before the U.S. Patent and Trademark Office. He is also a member of the American Intellectual Property Law Association, and the Southern California Chinese Lawyers Association.

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