James Boon

Practice Areas

James’ doctorate in optoelectronics and general background in physics provides him with a firm understanding of highly technical issues. He is experienced in working with a diverse range of technical subject matter from mobile telecommunications, human computer interaction, and data storage to immunoassay techniques and pharmaceuticals. He has been at the cutting edge of standard essential patent and FRAND disputes for more than 20 years. His work in this field has spanned four generations of telecommunications technology: 2G, 3G, 4G and 5G, and has led to successful outcomes for both SEP holders and implementers.

James was closely involved with preparations for the UPC and led a team in our well publicised UPC Moot designed to stress test the UPC procedures in a real-time framework. He has recently been involved in co-ordinating proceedings across the US, UK, Germany and the UPC.

The cases below illustrate James’ impressive track record in achieving positive outcomes for his clients by commercial settlement or judgment of the court.

- Texas Instruments v Network System Technologies – acting for Texas Instruments in the revocation of patents relating to network-on-a-chip technology. Co-ordinating with proceedings brought by NST in the UPC on the same patent families.

- Philips v ASUS and HTC, Philips v TCL, Philips v Xiaomi, and Philips v Oppo – acting for Philips in a series of separate patent infringement claims on standard essential telecommunications technology (3G, 4G and 5G) and FRAND related issues. Successfully defending a preliminary pass-through licence issue; upholding two standard essential telecommunications patents as valid and infringed; defending jurisdiction challenges, and obtaining anti-anti suit relief. Cross-examining the other side’s expert witness in Philips v Xiaomi. Co-ordinating with proceedings in Germany, the Netherlands, France and India. In each case, proceedings settled shortly before the FRAND determination.

- Unwired Planet v Huawei, Samsung and Google – acting for Samsung and Google on patent infringement claims for standard essential, and non-essential, telecommunications patents and FRAND issues. Both Samsung and Google settled prior to the FRAND determination.

- IPCom v HTC – acting for IPCom on standard essential patent infringement claims and FRAND issues. Successfully upholding a standard essential patent on random access as valid and infringed.

- EMGS v PGS – defending a patent infringement claim relating to electromagnetic survey techniques for oil and gas. Acting as co-counsel in parallel Norwegian proceedings, cross examining technical witnesses in the Oslo City Court and successfully invalidating the patent. The dispute settled following the trial in the English Patents Court, but prior to judgment.

- Philips v Nintendo – acting for Philips in its successful claim for patent infringement on human computer interaction and computer vision technology relating to the Wii remote.

- Philips v Garmin – acting for Philips on wearable fitness tracking technology. Defending a revocation claim on the amended form of the patent and successfully bringing an infringement counterclaim.

- Pratt & Whitney v Rolls Royce – acting for Pratt & Whitney in patent infringement proceedings on swept fan blade technology. The dispute settled prior to trial in the Patents Court.

- Aerotel v Telco – acting for Aerotel in relation to a patent infringement claim relating to a telecommunication system. Successful on appeal: reversing a first instance summary judgment decision on the grounds of lack of patentability, establishing the Aerotel test used for patentability of computer related inventions.

- Affymetrix v Multilyte – acting for Affymetrix in the successful revocation of immunoassay patents held by Multilyte.

James has taken on the role of advocate in the English Patents Court and in the Norwegian Oslo City Court. In addition to patent and FRAND issues, his work on standard essential patents has involved contractual disputes, issues of foreign law, jurisdiction challenges and anti-suit relief. He has successfully defended multiple jurisdiction challenges and obtained pre-emptive anti-anti suit relief on an ex parte basis. He is experienced in coordinating parallel litigation in Europe, North America and Asia.

James is a qualified Solicitor-Advocate with full rights of audience before all of the UK’s civil courts. He is a member of AIPPI and CIPA. James is part of the Mindful Business Charter taskforce that drafted the MBC guidance on the conduct of litigation and dispute resolution.

Career

MSci Optoelectronics, University of St Andrews

PhD Optoelectronics, University of St Andrews

Diploma in Intellectual Property Law and Practice, University of Bristol

Qualified 2002

Partner 2011

Solicitor Advocate (England and Wales) 2013

Admitted in Republic of Ireland 2024

UPC Representative 2024