James R. Hietala is counsel in Sterne Kessler’s Electronics Practice Group. James draws on nearly two decades of expertise in intellectual property law to provide unique strategic insights to clients. His capabilities stem from his work as in-house counsel in charge of patent office litigation, appeals, and lobbying efforts at the USPTO coupled with his experience as a private practice district court litigator on dozens of cases. James’ extensive knowledge in the IP arena allows him to consider business conditions, pending and future cases, and the merits of the matters before him to reach viable strategies for clients to consider.
Equal to his legal expertise is James’ deep technological background in complex electrical and mechanical inventions and telecommunications that he honed while working at Lucent Technologies after his undergraduate education. He is also a Certified Licensing ProfessionalTM.
James has been active in the legal community serving as a mentor as both a moot court instructor at the University of Minnesota Law School and as a coach for AIPLA Giles Sutherland Rich Memorial Moot Court Competition teams. Additionally, he writes on ediscovery and presents frequently on patent office litigation. He co-authored a paper for IPO on claim construction that the USPTO cited 5 times in its October 2018 Rulemaking.
James received his JD from the University of Pennsylvania Carey Law School, where he served as a senior editor of the Law Review. He earned a B. Eng. with high honor in computer engineering from Stevens Institute of Technology and is a member of the Tau Beta Pi and Eta Kappa Nu honor societies.
How Different are the Broadest Reasonable Interpretation and Phillips Claim Construction Standards? (with Kevin Greenleaf et al.), IPO Patent Law Journal—Patent Section (2018). https://ipo.org/wp-content/uploads/2018/10/BRI-v-Phillips-Final-1.pdf (cited 5 times by the USPTO’s October 2018 Rulemaking, 83 Fed. Reg. 51, 340 at 51,342 et seq.).
2019-2020 Speaking Engagements
- "Hot Topics before the PTAB," ABA-IPL 2020 Fall Meeting, Virtual - September 2020
- "ZTE v. CyWee: Joinder & Estoppel," AIPLA PTAB Trial Committee Meeting, Virtual - March 2020
- "Litigation Strategies for Post-Grant Proceedings," ABA-IPL 2019 Fall (IP West) Meeting, San Antonio, TX - October 2019
- "IPR Estoppel One Year After SAS," Intellectual Property Owners Association, Online CLE - April 2019
- "One and Done: The Latest Efforts to Reform Patent Challenges before the PTAB," ABA-IPL 2019 Annual Meeting, Washington, D.C. - April 2019
- "The Sedona Conference’s Patent Conference: Promoting Invention, Entrepreneurship, Economic Growth & Job Creation," Washington, D.C - January 2019
- IAM Strategy 300, "A Guide to the World's Leading IP Strategists" (2023)
- Patexia, "100 Best Performing Attorneys Representing Patent Owners – Inter Partes Review” (2022)
- Certified Licensing Professionals Inc.
- Tau Beta Pi
- Eta Kappa Nu