James D. Berquist

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James D. ("Jay") Berquist — Patent Litigation Practice Summary

Focus and technology areas. Berquist is a registered patent attorney whose practice is centered on patent infringement litigation, with supporting work before the PTAB and the ITC. His firm bio states he has been lead counsel in more than 75 patent infringement suits across 30-plus federal districts, including the Eastern and Western Districts of Texas, Delaware, and the Northern and Central Districts of California. The technologies he lists span computer switching systems, chemical formulations of adhesives and release coatings, business form design, optical sensor systems, vending machine controls, industrial filters, electrical distribution systems, furniture design, wireless mesh networks, and GPS. His tracked docket is concentrated in the wireless mesh networking / remote monitoring space — the SIPCO–Emerson dispute over the Petite patents covering wireless sensor networks and remote device communications (e.g., WirelessHART-based process-automation field devices).

Side preference. The tracked record is 1 plaintiff-side and 2 defendant-side appearance, all three within the SIPCO v. Emerson litigation, where the docketed party alignment indicates he was aligned with Emerson Electric, the operating company, rather than with patent owner SIPCO/IPCO. Web-verified appearances outside the tracked list cut the other way: Federal Circuit dockets show him entering as principal counsel for PerDiemCo LLC, a patent holder, in Trimble Inc. v. PerDiemCo LLC (Fed. Cir. No. 19-2164), and he appeared for PerDiemCo again in PerDiemCo LLC v. I.D. Systems, Inc. (E.D. Tex. 2024). Firm filings in the SIPCO/IPCO family also list a "SIPCO-IPCO-IPR@" service address and PTAB powers of attorney for the patent owner. The overall picture is genuinely two-sided — defense of accused operating companies alongside assertion/defense work for patent owners — rather than a durable NPE-only or defense-only practice.

Notable matters and outcomes. In the SIPCO–Emerson dispute, the first-filed N.D. Ga. declaratory judgment action (Emerson Electric Co. v. SIPCO, LLC, No. 1:15-cv-00319) and SIPCO's competing E.D. Tex. infringement action (SIPCO, LLC v. Emerson Electric Co., No. 6:15-cv-907) produced contested first-to-file and transfer rulings; that conflict continued through a 2018 refiling in the S.D. Tex. and ITC Inv. No. 337-TA-1131 (Certain Wireless Mesh Networking Products), where the ALJ found SIPCO had not proven infringement of claim 1 of the '893 patent. On validity, the PTAB invalidated asserted claims of several SIPCO patents ('471, '496, '732, '842, '492), and the dispute generated two published Federal Circuit decisions: SIPCO, LLC v. Emerson Electric Co., 939 F.3d 1301 (Fed. Cir. 2019), and the precedential SIPCO, LLC v. Emerson Electric Co., 980 F.3d 865 (Fed. Cir. 2020) (CBM institution determination non-appealable; obviousness affirmed). In the PerDiemCo matter, his entry of appearance preceded the Federal Circuit's January 2020 order disqualifying the Davidson firm for a concurrent conflict (representing PerDiemCo and a Trimble affiliate simultaneously); the eventual Federal Circuit merits ruling (2021) went against PerDiemCo on personal jurisdiction. I found no verified jury verdict or damages award attributable to him in these matters, and the track record on those specific cases leans toward invalidation, dismissal, and disqualification rather than a plaintiff-side trial win.

PTAB/IPR experience. He appears regularly in AIA post-grant proceedings rather than only occasionally — listed as counsel (including back-up counsel) in multiple IPRs and a CBM review in the SIPCO/IPCO portfolio, such as IPR2015-01579 ('893 patent) and IPR2017-00252 ('314 patent, from which he moved to withdraw in 2017), and CBM2016-00095 ('842 patent).

Firm and credentials. He is currently identified as a partner in Rimon P.C.'s Northern Virginia office, following a partnership at Davidson Berquist Jackson & Gowdey LLP (McLean, VA), the firm of record in all three tracked cases; his bio also lists earlier partnerships at Nixon & Vanderhye P.C. and Cushman Darby/Pillsbury Madison. USPTO and Martindale listings still show Davidson Berquist as his firm, so the transition to Rimon appears recent and should be confirmed. He holds a J.D. (1989) and a B.S. in mechanical engineering (1985) from the University of Missouri; he is admitted in Missouri (1989), D.C. (1990), Virginia (1998), the Federal Circuit (1991), the U.S. Supreme Court (2001), and is registered before the USPTO (Reg. No. 34,776). He also has prior engineering experience at Union Electric's Callaway nuclear facility and General Dynamics' Fort Worth aerospace group — background relevant to the mechanical, electrical, and process-control subject matter in his patent work.