James K. Sakaguchi
Academic and Professional Credentials
UCLA School of Law, J.D. 1995
UC Irvine, B.S. Engineering, 1986 (cum laude)
Admitted to California State Bar
Registered Patent Attorney, U.S. Patent and Trademark Office
Admitted to U.S. District Courts (Central, Northern, Southern Districts of California)
Admitted to U.S. Courts of Appeal (Ninth Circuit, Federal Circuit)
Background and Experience
Mr. Sakaguchi specializes in advising and representing high technology clients on Intellectual Property (IP) matters throughout the innovation and commercialization process. Starting with the inventive concept, Mr. Sakaguchi helps his clients devise global IP strategies, then implement and manage that strategy through IP preparation and prosecution. Mr. Sakaguchi advises on IP issues relating to acquisition of IP rights, financing, in-licensing, collaborations, Mergers & Acquisitions and commercialization of inventions either independently or through licensing and strategic alliances. In addition, he represents his clients in IP disputes, up to and including litigation.
Prior to attending law school, Mr. Sakaguchi worked as an engineer for six years . His engineering experience includes project and production engineering in the aerospace field working on environmental control systems and gas turbine engines and performing civil engineering design. Through his engineering experience, Mr. Sakaguchi developed expertise in complicated mechanical, electro-mechanical and electronic systems.
Mr. Sakaguchi received his Juris Doctorate from the UCLA School of Law in 1995 and immediately joined the IP law firm of Lyon & Lyon, LLP. At Lyon & Lyon, Mr. Sakaguchi's practice included IP licensing, patent and trademark preparation and prosecution, extensive litigation support and general counseling on IP strategy. While at Lyon & Lyon, he drafted opinion letters regarding patent infringement and validity, and prosecuted and obtained patents in a wide variety of technical fields, including medical devices, medical imaging systems, laboratory instrumentation, software, automotive components, electronics packaging, superconductive electronics, and suspension systems.
In late 1999, Mr. Sakaguchi left Lyon & Lyon to become associate counsel at Aurora Biosciences Corporation. Aurora (subsequently acquired by Vertex Pharmaceuticals, Inc. in mid-2002) was a biotechnology company which developed novel biological tools and laboratory instrumentation for accelerating the discovery and development of new drugs. His responsibilities at Aurora encompassed a broad range of law practice in the biotechnology/pharmaceutical field. In addition to developing and managing Aurora's patent portfolio and overall IP strategy, he counseled senior management on patent enforcement strategy and managed outside patent counsel. On the business development side, he developed and implemented global commercialization plans for several of Aurora's proprietary technologies through licensing and strategic alliances. Mr. Sakaguchi negotiated, drafted and executed both domestic and international agreements for a wide array of high-tech commercial transactions, including technology transfers, strategic alliances, in-licensing, out-licensing, supply, manufacturing, distribution, collaborative R&D and sponsored research. His general corporate practice comprised legal review of external company communications (e.g. press releases, SEC filings, annual reports and public disclosure of technology), legal support and diligence for M&A, counseling on employment matters and handling other general business legal issues.
After successfully transitioning Aurora's legal work to Vertex following their merger, Mr. Sakaguchi established his own law practice. He began working with Neal Cohen in January 2003, and in July 2003 they formed Cohen & Sakaguchi LLP.