James L. Korenchan

Overview

James L. Korenchan is a partner with McDonnell Boehnen Hulbert & Berghoff LLP. He has over nine years experience drafting and prosecuting patent applications in numerous technical fields, with a specialty in the areas of electrical engineering and computer hardware and software. Mr. Korenchan’s patent prosecution experience includes all phases of U.S. and foreign patent prosecution, client counseling, due diligence, and advice regarding validity, infringement, and enforceability of patents.

Mr. Korenchan has advised a variety of clients (including Fortune 500 companies) that span a diverse range of technologies. Examples of Mr. Korenchan’s technical experience in the electrical engineering and computer hardware and software fields relate to mobile apps and operating systems, cloud computing, software as a service (SaaS) and platform as a service (PaaS), wearable computing devices, telecommunications, digital map and vehicle navigation, robotic control, speech recognition, media production and broadcasting systems, renewable energy computing, and consumer electronics. Examples of Mr. Korenchan’s technical experience in the mechanical and materials fields relate to kinematic robotic designs, advanced ignition systems, automotive diagnostics, automotive design, and antenna design.

Mr. Korenchan joined MBHB in 2012 as a technical advisor/patent agent, and prepared and prosecuted patent applications. He attended law school evening classes while maintaining his full-time position at the firm.

Prior to joining MBHB, Mr. Korenchan worked as an associate engineer at an automotive company in the Chicago metropolitan area, putting to use his mechanical and electrical engineering skills in several departments to execute projects relating to engine control systems, current product support, and reliability. Mr. Korenchan also has experience working as a systems engineering intern at a telecommunications equipment company to evaluate various application lifecycle management platforms.

Mr. Korenchan has received training in improvisational comedy from The iO Theater and The Second City, and has performed at both theaters.  He is a former Boy Scout and attained the rank of Eagle Scout in 2006.  He has also been involved in other community projects and initiatives including the Habitat for Humanity Work Tour and Relay for Life (an American Cancer Society benefit).

Education
  • J.D., Chicago-Kent College of Law,

    Cum Laude

  • B.S., University of Illinois at Urbana-Champaign,

    Electrical Engineering

Bar Admissions
  • U.S. Patent & Trademark Office
  • Illinois
Memberships
  • PTAB Bar Association
  • Bohemian Lawyers Association of Chicago

Experience

  • Preparing and prosecuting U.S. and foreign patent applications directed to robots, automotive applications, and other technologies for a Fortune 100 technology company.
  • Preparing and prosecuting patent applications for large cellular wireless communications corporation.
  • Working with cloud computing company to assist with patent acquisition and IP portfolio growth.

Published Articles

Comparing eligibility in the US and Japan,” World IP Review, November 29, 2019.

User Interfaces: Navigating the Patent Eligibility Landscape,” Legaltech News, Law.com, August 2, 2018.

3 Interesting Facts about the Patent Landscape for Cryptocurrency and Blockchain,” Legaltech News, Law.com, May 10, 2018.

Pre-AIA And Post-AIA Issues Presented By The On-Sale Bar,” Law360.com, August 11, 2016.

Patent Docs

The following publications include links to the Patent Docs weblog, a site focusing on patent law news.

Personalized Media Communications, LLC v. Apple, Inc. (E.D. Tex. 2021) (February 3, 2021)

Barbaro Technologies, LLC v. Niantic, Inc. (N.D. Cal. 2020) (May 28, 2020)

Pebble Tide LLC v. Arlo Technologies, Inc. (D. Del. 2020) (February 13, 2020)

Ubisoft Entertainment, S.A. v. Yousician Oy (E.D.N.C.) (August 16, 2019)

Claims for Monitoring and Analyzing Suspicious Network Activity Found Patent Eligible (March 27, 2019).

Claims for Dynamically Rating Internet Content Deemed Patent-Ineligible (March 18, 2019).

PTAB Affirms Patent Eligibility of Claims for Playing Dice Game (January 23, 2019).

Claims for Determining an Orientation of a 3D Pointing Device Using Sensor Data Found to be Patent-Eligible (November 13, 2018).

PTAB Affirms Patent Eligibility of Claims for Using Dwell Time to Rank Search Results (October 16, 2018).

Claims for Keyword-Based Navigation of Hierarchically-Structured Data Found Abstract But Survive Motion to Dismiss (September 26, 2018).

Claims for Scheduling Packet Data Communication Survives Patent Eligibility Challenge in Motion to Dismiss (September 11, 2018).

Claims for Displaying Message Timing Data Found Patent Ineligible (August 29, 2018).

A Look at Recent PTAB Appeal Decisions Related to Graphical User Interface Claims (August 1, 2018).

Cloud Computing Claims Deemed Patent-Ineligible (July 1, 2018).

Claims for Managing and Delivering Targeted Advertising Data Found Invalid under Covered Business Method (CBM) Patent Review (June 19, 2018).

PTAB Affirms Patent Eligibility of Claims for Training a Spoken Language Understanding Classifier (May 24, 2018).

USPTO Director Addresses U.S. Patent System’s Decline in U.S. Chamber of Commerce Worldwide Patent Protection Rankings (May 10, 2018).

Claims for Refreshing Phone Display Found Patent Eligible (April 18, 2018).

PTAB Affirms Patent Eligibility of Virtual Reality Advertising Claims (April 4, 2018).

Virtual Reality Patents Survive Patent-Eligibility Challenge (March 27, 2018).

District Court Throws Out Haptic Feedback Claims on Grounds of Patent Ineligible Subject Matter (March 18, 2018).

Claims Directed to Attenuating Driveline Vibrations Fall Victim to Law of Nature Challenge (March 4, 2018).

General Plastic Industrial Co. v. Canon Kabushiki Kaisha (September 11, 2017).