James L. Katz

Patent Attorney - Partner

 

direct: 312.854.8372

main: 312.291.0860

fax: 312.291.0864

 

email: jkatz@lsk-iplaw.com

 

 

Professional Experience

Jim Katz's practice focuses on all aspects of patent law, including patent prosecution, trade secret protection, opinions, licensing and litigation, in the areas of computer, electrical and mechanical technologies.

 

Jim's practice relating to computer technology includes computer architecture, hardware and software as well as Internet and e-commerce related technologies, such as business methods and mobile applications. Jim's prosecution experience has involved such diverse technologies as semiconductor processes, memory management units, flash memory, electrical power monitoring, diagnostic medical ultrasound, mobile device e-commerce applications, and object oriented programming.

 

In the areas of e-commerce and the Internet, Jim maintains extensive familiarity with the state of the art through routine surveys of U.S. and foreign patent applications and issued patents related to electronic commerce, computer software and business methods. Jim's prosecution and litigation experience in the areas of e-commerce and the Internet has specifically involved transaction processing, such as transaction fraud detection; manufacturing, such as build-to-order systems; user interfaces, such as software and web based user interfaces; data communication and manipulation, such as electronic mail, web browser/server interaction and other TCP/IP protocol based technologies; business models and processes, such as financial products and processes, product marketing and advertising systems; and networking, such as network communications equipment and monitoring.

 

Legal Experience

Prior to forming Lempia Summerfield Katz LLC, Jim was a partner at Brinks Hofer Gilson and Lione in Chicago.  Jim’s 12 years with Brinks provided invaluable experience in client counseling, patent prosecution, litigation and licensing.  During his tenure with Brinks, Jim also served as chair of Brinks’ Docket Oversight Committee for 5 years, overseeing firm-wide docket operations as well as defining firm docketing, prosecution and liability-mitigation policies and procedures.

Non-Legal Experience

Jim’s career began with the Amdahl Corporation as a Test Engineer and as a Design Engineer, focusing on architectural design for enterprise-scale mainframe computer systems. He also worked for HaL Computer Systems, Inc. as a Design Verification Engineer, focusing on simulator software development for multiprocessor storage architectures, including cache memory and memory management unit design. Jim has a working knowledge of integrated circuit development, design and manufacturing, networking, operating systems and programming languages, including Windows, Mac OS, Unix, DOS, IBM 370/390 Assembly, Perl, C++ and Fortran.

 

Honors and Distinctions

bullet Illinois Super Lawyers, Rising Stars, 2008

bullet Member, Intellectual Property Alumni Advisory Board, Indiana University School of Law Bloomington

bullet Website Editor, The Federal Communications Law Journal

 

Memberships and Affiliations

bullet American Intellectual Property Law Association

bullet American Bar Association

bullet Chicago Bar Association

bullet Intellectual Property Owners Association

 

 

primary expertise areas

Electrical & Computer

Electronic Commerce

Business Methods

Licensing

Patent Prosecution

 

state bar admissions

Illinois

Michigan

 

Admissions

U.S. Patent & Trademark Office

U.S. District Court, Northern Disctrict of Illinois

 

Education

J.D., Indiana University School of Law, 1998

 

B.S.E., Computer Engineering,

University of Michigan, 1990