James J. DeCarlo

New Jersey

Greenberg Traurig, LLP
500 Campus Drive
Suite 400
Florham Park, NJ 07932

Tel: +1 212.801.6729

Email: decarloj@gtlaw.com
Web: www.gtlaw.com

Professional 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 IP counseling.

Jim started his career in the computer industry, and since transitioning to law has spent three decades litigating, licensing and procuring patents in the software, hardware, internet and networking spaces, 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.

Representative Matters

  • Amperex Technology Limited v. Maxell, Ltd. and Maxell Holdings, Inc., 2:21-cv-08461-KM-MF, District of New Jersey.
  • Maxell Holdings, Ltd. v. Amperex Technology Lmited, 6:21-cv-00347-ADA, Western District of Texas.
  • 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.
  • 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.

The IP Law Practice

Greenberg Traurig’s Intellectual Property & Technology Practice has more than 250 full-time intellectual property attorneys and professionals serving clients across the United States and in key business centers around the world. We handle all aspects of intellectual property, including patent, copyright, trademark, trade secret, Digital Millennium Copyright Act (DMCA) and right of publicity litigation; trademark prosecution and brand management; copyright and DMCA agent registration; patent prosecution and portfolio management; licensing; inter partes review; third-party monitoring; domain name management; and interferences. We also counsel on the full range of data privacy and security breach issues, provide licensing and cross-border services and defend data privacy, security breach, and Telephone Consumer Protection Act (TCPA) class action suits.

Our team includes skilled and technical professionals with a deep understanding of both specialized technology and the complex dynamics of worldwide distribution, providing our clients with an entrepreneurial approach. We advise on patent litigation and re-examinations, as well as assist clients in managing international portfolios. Our Trademarks and Brand Management Practice features one of the largest trademark prosecution, portfolio management, licensing, litigation, and counseling legal practices worldwide. We also counsel extensively on fair use, social media, mobile, cloud, and new technology issues. Our litigation teams regularly handle complex copyright, trademark, patent, and trade secret cases. GT lawyers likewise handle complex transactions and help clients structure new business models and protect and reduce exposure from new technologies. Additionally, our attorneys have deep-rooted science and engineering backgrounds. Together, we offer clients integrative and strategic counsel in virtually all areas of Intellectual Property & Technology. The deftness of our global network provides our clients with creative and forward-thinking legal services aimed at further enhancing their business operations.

About Greenberg Traurig

Greenberg Traurig, LLP has more than 2750 attorneys in 48 locations in the United States, Europe and the Middle East, Latin America, and Asia.

The firm is a 2022 BTI “Highly Recommended Law Firm” for superior client service and is consistently among the top firms on the Am Law Global 100 and NLJ 500. Greenberg Traurig is Mansfield Rule Certified Plus by The Diversity Lab.

The firm is recognized for powering its U.S. offices with 100% renewable energy as certified by the Center for Resource Solutions Green-e® Energy program and is a member of the U.S. EPA’s Green Power Partnership Program.

The firm is known for its philanthropic giving, innovation, diversity, and pro bono.