James J. DeCarlo

James J. DeCarlo

Shareholder

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

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Capabilities

Experience

  • 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. 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.
  • 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.

Recognition & Leadership

  • Listed, Chambers USA Guide, 2014-2016
  • Listed, IAM magazine, "IAM Patent 1000," 2014-2017
    • Patent Litigation and Transactions, 2015-2017
    • 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

AV®, AV Preeminent®, Martindale-Hubbell DistinguishedSM and Martindale-Hubbell NotableSM are certification marks used under license in accordance with the Martindale-Hubbell® certification procedures, standards and policies.

  • 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

Credentials

Education
  • J.D., cum laude, New York Law School, 1991
  • B.S., Electrical Engineering, Worcester Polytechnic Institute, 1980
Admissions
  • New Jersey
  • New York
  • U.S. Patent and Trademark Office
  • U.S. Court of Appeals for the Federal Circuit
  • U.S. District Court for the Eastern District of New York
  • U.S. District Court for the Southern District of New York
  • U.S. District Court for the District of New Jersey
  • U.S. District Court for the Eastern District of Texas
  • U.S. District Court for the District of Colorado
  • U.S. District Court for the Western District of Wisconsin