James J. DeCarlo is a registered patent attorney actively involved in virtually all aspects of intellectual property counseling. His experience includes, litigating patent, trademark and copyright matters, counseling clients on the strategic use and management of intellectual property assets and drafting infringement, validity and freedom to operate opinions. He counsels clients on the drafting and negotiating of complex technology licenses, software agreements and Internet agreements; and directing the prosecution of patent applications in areas such as electronic commerce, streaming media, Internet search engines, telecommunications, computer software and hardware. Jim is also experienced in business methods, pharmaceuticals, medical devices, semiconductors, electronics and electro-mechanical devices.
Areas of Concentration
· Intellectual property litigation
· Intellectual property counseling
· Patent procurement
· Technology and emerging companies
Professional & Community Involvement
· Member, American Intellectual Property Lawyers Association
· Member, New York Bar Association
· Former Co-chair, Intellectual Property Section, New York County Lawyers Association
Awards & Recognition
· Member, Winning Team, New Jersey Law Journal's "General Litigation Department of the Year" award, 2013
· Rated, AV Preeminent® 5.0 out of 5
· eDigital Corporation v. Apple, Inc., 3:13-cv-00785, Southern District of California.
· eDigital v. FujiFilm Corporation, et al., 3:13-cv-00112, Southern District of California.
· LED Tech Development, LLC v. Fujitsu America, Inc.: Fujitsu Ltd., 1:12-cv-01443, District of Delaware.
· GeoTag, Inc. v. Canon Inc., and Canon U.S.A., Inc., 2:12-cv-00043, Eastern District of Texas.
· Brandywine Communications Technologies, LLC v. Apple Inc. et al., 6-11-cv-1512-Orl-35, Middle District of Florida.
· Walker Digital LLC v. FUJIFILM North America Corporation, 1:11-cv-00326, District of Delaware.
· Emblaze Limited v. Apple Inc., 1:10-cv-05713, Southern District of New York.
· e.Digital v. Canon USA, Inc. and Canon Inc., 1:09-cv-2578, District of Colorado.
· Ambato Media, LLC v. Garmin International, Inc., et al., 2:09-cv-242, Eastern District of Texas.
· Furnace Brook LLC v. Aéropostale, Inc., et al., 1:09-cv-4310, Northern District of Illinois.
· VoxPath Networks, Inc. v. Broadview Networks, Inc., et al., 4:08-cv-127, Eastern District of Texas.
· Bennett v. Alcoa Inc., et al., 2:07-cv-00558, Eastern District of Texas.
· Enzo Biochem, Inc. v. Amersham PLC, et al., 1:02-cv-8448, Southern District of New York.
· NextCard, LLC v. American Express Company, et al., 2:07-cv-354, Eastern District of Texas.
· In re Certain Laminated Floor Panels, Investigation 337-TA-545, U.S. Int'l Trade Comm.
· Turn-Key-Tech, LLC v. Fuji Photo Film USA, et al., 01-1490-B, Southern District of California.
· Touchstone Technology, Inc., et al. v. Fuji Photo Film, et al., 00-1-700, District of Massachusetts.
· Connectel, LLC v. Arbinet Holdings, Inc., 00-3354, Southern District of New York.
· In re Certain Lens Fitted Photographic Film Packages, Investigation 337-TA-406, U.S. Int'l Trade Comm.
Publications & Presentations
Articles, Lectures & Publications
· Author, "The Board's Responsibility for IP Management," Corporate Governance Advisor/Aspen Corporations Reports, January 2005
· Author, "Savvy Prospectors Can Reap Patent Mining Rewards," Licensing in the Boardroom, October 2004
· Author, "The IP Audit," Stroock Special Bulletin, July 2004
· Co-author, "California's Anti-Computer Spyware Statute Goes into Effect," Stroock Special Bulletin, February 2005
· Co-author, "California Online Privacy Protection Act," Stroock Special Bulletin, September 2004
· Co-author, "The Intellectual Property Audit: An Effective IP Asset Management Tool," Journal of Biomolecular Screening, April 2003
· Co-author, "Invention Disclosures Can Streamline Patent Paperwork," SBS News, February 2003
· Speaking Engagements, Patent Strategies Conferences
· Panelist, Anti-Troll Strategies
· Panelist, Choosing the Right IP Protection Business Model; Association for Laboratory Automation LabFusion: Innovation Management - Developing a Culture of Protection; Drug Discovery Technology Conference
· Session Chair, Strategies for Successful Biotech Financing; Society for Biomolecular Screening Annual Conference: Intellectual Property and the Business Deal
· Lecturer, NYU Stern School of Business Entrepreneurs Forum: Intellectual Property Law Concerns For the Start-Up Company
· Lecturer, NYU School of Continuing Professional Education: Patent Law Basics
· Lecturer, New York County Lawyer's Association, Patent Law for the Non-Patent Lawyer
· Continuing Legal Education Lectures: Advanced Trademark Issues; Intellectual Property Basics; Using Videotaped Depositions During Cross Examination; Effective Use of Demonstrative Exhibits in Patent Cases; Intellectual Property Issues for the Entrepreneur; Drafting and Negotiating Non-Disclosure Agreements
(Also at Florham Park, NJ Office)