James J. DeCarlo

James J. DeCarlo: Attorney with Greenberg Traurig, LLP AV stamp icon
  • Shareholder at Greenberg Traurig, LLP (2016 Attorneys)
  • 500 Campus Drive, Suite 400, Florham Park, NJ 07932
    View James J. DeCarlo's other office locations
  • Peer Reviews

    5.0/5.0
  • Profile Visibility [ i ]
Attorney Awards

Biography

Jim DeCarlo is a Shareholder in Greenberg Traurig’s Intellectual Property and Technology Practice. A registered patent attorney and electrical engineer, he is actively involved in virtually all aspects of intellectual property counseling. Jim started his career in the computer industry, and since transitioning to law has spent over 25 years litigating, licensing and procuring patents in the software, hardware, internet and networking space, among many others. Jim’s experience includes litigating patent matters in District Courts around the country, handling matters before the PTAB, counseling clients on the strategic use and management of intellectual property assets, and drafting infringement, validity and freedom to operate opinions.

He also counsels clients on the drafting and negotiating of complex technology agreements and directs the prosecution of patent applications in areas such as networking, artificial intelligence, cloud computing, virtual and augmented reality, IoT, streaming media, electronic commerce, Internet search engines, search advertising, client/server systems, mobile and land based telecommunications, and computer software and hardware.

Jim’s litigation and prosecution matters have covered other wide-ranging technology areas including semiconductors, semiconductor fabrication, pharmaceuticals, medical devices, fiber optics, cameras, injection molding, manufacturing, toys, pulp and paper, steel production, electronics and electro-mechanical devices.

Jim’s clients in the US and abroad range from start-ups with one or two key patents to giants with thousands of patents worldwide. A frequent author and lecturer on patent law issues, he is relied on by clients to assist in protecting their most significant technology in a manner that will stand up in litigation, to defend against charges of infringement frequently brought by patent assertion entities, and to work with in-house counsel to develop processes and procedures to effectively manage worldwide patent portfolios. Jim also maintains strategic relations with the USPTO, and has conducted hundreds of personal interviews with US Patent Examiners to more rapidly move his clients’ cases to allowance.

Concentrations

•Intellectual property litigation
•Intellectual property counseling
•Patent procurement
•Technology and emerging companies

Recognition & Leadership

Awards & Accolades

•Listed, Chambers USA Guide, 2014-2016
•Listed, IAM magazine, IAM Patent 1000, 2014-2018
•Patent Litigation and Transactions, 2015-2018
•Prosecution, 2018
•Patent Litigation, 2014
•Member, Winning Team, New Jersey Law Journal’s General Litigation Department of the Year award, 2013
•Rated, AV Preeminent 5.0 out of 5

(Also at New York, NY Office)

Areas of Practice (4)

  • Intellectual Property & Technology
  • Intellectual Property Litigation
  • Emerging Technology
  • Augmented Reality & Virtual Reality

Education & Credentials

Contact Information:
+1 212.801.6729  Phone
973.301.8410  Fax
www.gtlaw.com/People/James-J-DeCarlo
University Attended:
Worcester Polytechnic Institute, B.S., Electrical Engineering, 1980
Law School Attended:
New York Law School, J.D., cum laude, 1991
Year of First Admission:
1992
Admission:
U.S. Patent and Trademark Office; U.S. District Court for the Southern District of New York; U.S. Court of Appeals for the Federal Circuit; U.S. District Court for the District of New Jersey; U.S. District Court for the Eastern District of New York; U.S. District Court for the Western District of Wisconsin; U.S. District Court for the Eastern District of Texas; New Jersey; New York; U.S. District Court for the District of Colorado
Memberships:

Professional & Community Involvement

•Patent Litigation Committee On-line Program Coordinator, American Intellectual Property Lawyers Association
•Former Co-chair, Intellectual Property Section, New York County Lawyers Association
•Member, American Bar Association
•Member, New York Bar Association

Birth Information:
Brooklyn, New York, September 24, 1956
Reported Cases:
Experience: Representative Matters: FUJIFILM North America Corporation v. PLR IP Holdings, LLC and PLR Brand Services, 1:17-cv-08796 (NRB), Southern District of New York; RAH Color Technologies LLC v. Fujifilm North America Corp., 1:17-cv-02924, Northern District of Illinois; Iron Oak Technologies, LLC v. Fujitsu America, Inc., 3:16-CV-03319, Northern District of Texas; Texas Patent Imaging LLC v. FUJIFILM Holdings America Corp ., 2:16-cv-00356-JRG-RSP, Eastern District of Texas.; Verify SmartCorp. v. Yahoo! Inc ., 2:15-cv-07965, District of New Jersey.; Raster Printing Innovations v.Fujifilm Holdings, 1:15-cv-03964, Northern District of Illinois.; 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.; Data Carriers, LLC v. Fujitsu America, Inc., 1:12-cv-00332, District of Delaware.; Walker Digital LLC v. FUJIFILM North America Corporation, 1:11-cv-00326, District of Delaware.; 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. Aeropostale, 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.; 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.
ISLN:
901244725

Peer Reviews

  • 5.0/5.0
  • High ethical standing icon
  • A Martindale-Hubbell Peer Rating reflects a combination of achieving a Very High General Ethical Standards rating and a Legal Ability numerical rating.

*Peer Reviews provided before April 15, 2008 are not displayed.

Documents (2)

Documents by this lawyer on Martindale.com

Florham Park, New Jersey

Contact James J. DeCarlo

Required Fields

Required Fields


By clicking on the "Submit" button, you agree to the Terms of Use, Supplemental Terms and Privacy Policy. You also consent to be contacted at the phone number you provided, including by autodials, text messages and/or pre-recorded calls, from Martindale and its affiliates and from or on behalf of attorneys you request or contact through this site. Consent is not a condition of purchase.

You should not send any sensitive or confidential information through this site. Emails sent through this site do not create an attorney-client relationship and may not be treated as privileged or confidential. The lawyer or law firm you are contacting is not required to, and may choose not to, accept you as a client. The Internet is not necessarily secure and emails sent though this site could be intercepted or read by third parties.