James Cleland is a member of Dickinson Wright’s IP Litigation group, practicing out of the firm’s Ann Arbor office. Jim focuses on patent, trademark, copyright, trade secret and unfair competition litigation in a broad range of technologies, including chemical, automotive, materials science, mechanical, electrical and medical device arts, as well as in client counseling, opinion and licensing work. His litigation experience includes trials, preliminary injunction hearings, Markman hearings, summary judgment proceedings and all aspects of fact and expert witness discovery in federal courts across the country. Jim also has experience with post grant review proceedings before the Patent Trial and Appeal Board, an adjudicative body within the U.S. Patent and Trademark Office.
Jim provides comprehensive legal strategy combined with his careful and efficient treatment of each case and with every client, from global corporations to individual clients. He recognizes that no two disputes are the same and evaluates how to proceed from that perspective, focusing heavily on the cost-benefit analysis for every project, whether large or small.
Education & Credentials
Education
Indiana University School of Law (Bloomington)
1997University of Michigan
B.S., Chemical Engineering, 1994Bar Admission
Acknowledgements
- IAM Patent 1000
- Prosecution
- Intellectual Asset Management Magazine
- "The World’s Leading Patent Practitioners," 2018
- Leading Lawyers Network
- Leading Intellectual Property Lawyer, 2014-2021
- DBusiness Magazine
- "Top Lawyers in Metro Detroit," Trade Secrets, 2017
- Michigan Super Lawyers®
- "Rising Stars," Intellectual Property, 2008-2011, 2014
Prominent Assignments
- ArvinMeritor Technology, Inc, et al v. KIC LLC, KIC Holdings, Inc., et al., No. 15-13862 (E.D. Mich. 2015-present). Currently representing Meritor in a case involving allegations of patent infringement, false patent marking, false advertising and unfair competition relative to automotive brake drum.
- Wasica Finance GmbH, et al v. Continental Automotive Systems U.S., Inc., No. 13-01356 (D. Del 2013–present) Obtained an early stay of the district court action pending completion of a successful petition for inter partes review of the asserted patent. The case remains stayed pending appeal of the final IPR decision to the Federal Circuit.
- 3M Innovative Properties Company, et al. v. GDC Inc. et al., No. 13-01287 (DMN. 2011-present). Lead counsel defending GDC against allegations of patent infringement involving acoustic insulation used primarily in automotive applications.
- Miniature Precision Components, Inc. v. ContiTech North America, Inc., No. 15-00592 (E.D. Wisconsin 2015). Obtained an early dismissal of a patent infringement suit involving automotive engine components on behalf of ContiTech.
- Videosqope, LLC. v. Snap-on Inc., No. 15-00089 (E.D. Tex. 2015). Lead counsel in defending Snap-on against a prolific NPE in Texas in a case involving allegations of patent infringement relative to video-equipped boroscopes, Obtained a favorable settlement very early in the case to minimize litigation expenses.
- Continental Automotive Systems, Inc. v. BlueArc Finance AG, et al., IPR No. 14-01454 (PTAB 2014-2015) An IPR involving tire pressure monitor technology, the PTAB invalidated most of the claims of the asserted patent. The Board’s decision is now on appeal before the Federal Circuit.
- Robert Bosch LLC v. Snap-on Inc. et al., No. 12-11503 (E.D. Mich. 2012-2015). Successfully defended tool and diagnostic manufacturers Snap-On and Drew Technologies in a patent infringement lawsuit involving a patent directed to a diagnostic tester for motor vehicles. After first successfully transferring the case from California to his client’s home base in Michigan, successfully argued the claim terms “program recognition device” and “program loading device” were indefinite because they are means-plus function elements with no corresponding structure disclosed in the specification. The district court agreed and found the patent invalid. On October 14, 2014, the Federal Circuit affirmed the decision. This decision represents the first time the Federal Circuit has ever held a means-plus-function term indefinite when the term did not use the word "means."
- Michael L.Drew v. Society of Automotive Engineers, Inc., No 14-325 (MI Circuit Court Washtenaw County 2014) Lead counsel representing a plaintiff removed from a vehicle diagnostics committee in an automotive standards setting organization, obtained a temporary restraining order and preliminary injunction reinstating plaintiff on the committee. Invoked a little used arbitration clause in the SAE’s governing rules to trigger a more favorable arbitration forum, and obtained a favorable settlement permanently reinstating plaintiff to the committee, an important facet of plaintiff’s high tech business.
- EBC Brakes USA, Inc. v. Allan M.Teaganj et al, No. 11-12907 (E.D. Mich. 2011-2014). Lead counsel representing industry leading motorcycle brake manufacturer EBC Brakes, pursued claims of trademark infringement, copyright infringement, unfair competition and Digital Millennium Copyright Act violations. Obtained a favorable settlement on the verge of trial stopping Defendant from using EBC’s trademarks and copyrights.
- Alticor et al. v. Schirle et al., No. 12-cv-00636 (W.D. Mich. 2012). In a case involving claims of trademark infringement, Lanham Act violations, tortious interference, unfair competition, and fraud, obtained a favorable settlement early in the litigation on behalf of plaintiff Alticor stopping the complained of acts.
- Quixtar v. Woodward, et al., No. 09-12946 (E.D. Mich. 2008-2011). Represented Quixtar in an arbitration involving claims of trade secret misappropriation, breach of contract and tortious interference. Obtained award of over $25 million for Quixtar after a 16-day trial.
- Polar Molecular Corp. v. Amway, et al., No. 07-0460 (W.D. Mich. 2007-2009). In a case involving allegations by Polar Molecular Corporation (“PMC”) of Lanham Act violations, breach of contract, trade secret misappropriation, conversion, and civil conspiracy against our client Alticor, Inc. and some of its affiliates relating to the sale of fuel additives, the U.S. District Court for the Western District of Michigan dismissed conversion count, common law trade secret misappropriation count, portions of the breach of contract count and portions the Lanham Act count. After discovery and subsequent briefing, the Court granted Alticor’s motion for summary judgment on the remaining claims, including trade secret misappropriation and breach of contract based upon disclosure of confidential information.
- Eaton Corporation v. ZF Friedrichshafen A.G. and ArvinMeritor, Inc., No. 03-74844 (E.D. Mich. 2005-2008). Represented Defendants ZF Friedrichshafen and ArvinMeritor in a patent infringement action involving heavy-duty truck transmission technology. Obtained jury verdict dismissing all claims against clients, including determinations non-infringement and invalidity of the patents-in-suit.
- Karmann GmbH v. Dura Convertible Systems, Inc., No. 05-55927 (Bankr. E.D. Mich. 2006-2007) Defended Dura in a bankruptcy court adversary proceeding involving patent infringement claims relating to convertible tops for automobiles. Obtained settlement advantageous to Dura just prior to trial after successfully procuring an aggressive four month filing to trial "rocket docket."
Professional Involvement
- Michigan Intellectual Property Inn of Court
- Sporting Goods Manufacturers Association
- Legal Task Force
- Intellectual Property Owners Association
- Trade Secret Committee
- Federal Bar Association
- American and Michigan Intellectual Property Law Associations
- Washtenaw County Bar Association
Community Involvement
- Youth Sports Coach, 2005-Present
- Juvenile Diabetes Research Foundation, 2001-Present
Publications/Presentations
- Intellectual Property Law Spring Seminar 2021, Intellectual Property Law Section of the State Bar of Michigan, March 2021
- “The Alice Games,” June 24, 2015
- "When Can Your Business Sue or be Sued by a Competitor Under Intellectual Property Laws," Ann Arbor Spark, July 27, 2007
- "How IP Litigation Can Work For Your Business," Ann Arbor IT Zone, May 18, 2007