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Overview
Kyle St. James advises clients on patent portfolio development and prosecution strategies in the U.S. and abroad. Companies and individuals often seek Kyle’s counsel on offensive and defensive patent portfolio reviews as well as validity and non-infringement analyses and opinions of third-party patents directed to computer- and medical-related technologies. He also assists patent holders and licensees with drafting and reviewing licensing agreements.
His clients develop and manufacture computer hardware and software, 3D printers, medical devices and products within the fields of data analytics, internet and wireless network technologies and cybersecurity.
Kyle has a particular passion in viticulture and oenology having clients that develop devices that utilize sensors to measure properties of grapes and wine including pH and levels of acetic acid and sulfur dioxide as well as perform analytics thereon.
During law school in Silicon Valley, Kyle gained experience in the legal departments of Aruba Networks (acquired by Hewlett Packard) and eBay working on their patent portfolio development and prosecution strategies. In addition to this in-house experience, he has guided numerous start-ups through the initial stages of filing their first patent applications.
Experience
Representative Experience
Patent Strategy and Portfolio Development
- Handling prosecution strategy and portfolio development for a data analytics corporation based in Silicon Valley with a revenue of over $2 billion.
- Overseeing drafting of patent applications and performing freedom to operate analyses for a multi-national medical device corporation with a revenue of over $17 billion.
- Developing patent portfolio for a cloud networking company based in Silicon Valley that recently raised $75 million in Series D Funding.
- Developing global patent portfolio for a multi-national soccer-focused sports and entertainment company based in Orange County founded by a former professional athlete.
- Developing a patent portfolio for a start-up engineering wireless sensor-based devices for automatic testing and monitoring of wine and aged spirits based in Orange County.
IP Transactions
- Counsels numerous clients on licensing opportunities including drafting and/or revising of licensing agreements.
- Conducts intellectual property due diligence for clients in mergers and acquisition transactions.
IP Litigation
- Analyzes products of clients’ competitors for infringement of clients’ patents and assists in asserting patent rights.
- Evaluates patents and patent applications and advises clients on current and future infringement concerns.
News & Insights
Speaking Engagements & Publications
- “The CAN-SPAM Act of 2003 and Its Applicability Today,” Rutan & Tucker, LLP Cybersecurity Newsletter, April 2017
- “Pro-Bono Small Business Legal Clinic,” presented by Public Law Center, ACC So-Cal and Rutan & Tucker, LLP, March 2017
- “Privacy and Security Concerns Resulting From A Lack of Regulation of IoT Devices and the Data Collected Therefrom,” Rutan & Tucker, LLP Cybersecurity Newsletter, October, 2016
- “Applying Alice: Summer 2016 in Review,” Daily Journal publication, August 2016
Awards & Affiliations
Memberships & Associations
- Orange County Bar Association
- OC Intellectual Property Associations
- California Bar Association
- Eta Kappa Nu – Electrical And Computer Engineering Honor Society
Awards & Honors
- Southern California Super Lawyers, Rising Stars Edition, 2023
- High Tech Law Certificate with Honors
- High Tech Excellence Award
- Senior Comments Editor for the Santa Clara Computer and High Technology Law Journal, Vol. 29
- CALI Excellence for Constitutional Law II
