Jim helps technology innovators transform business. He is a trusted strategic partner who draws on years of experience helping tech companies of all sizes develop legal strategies that create value and reduce risk around their most important intellectual property assets.

Jim co-chairs the firm’s Technology Practice Group, previously chaired the firm's Intellectual Property Department and is a member of the firm's Artificial Intelligence Task Force. His work in patents and technology transactions has earned international recognition, while his previous experience as an engineering project manager keeps his advice practical and grounded. Jim's clients can count on clear communication, responsive support and efficient service.

Jim draws on a deep well of experience to support clients in:

• Complex technology transactions, from software and platform licensing to technology-focused supply chain and university technology transfer agreements.
• Patent strategies, from securing patent protection for innovative technologies and designing products around competitors’ patents to implementing strategic licensing opportunities.
• Protecting corporate brands, digital media assets and creative works. 
• IP due diligence in mergers and acquisitions, including leading reviews and helping clients prepare for them. 

Jim’s patent and transactional experience spans a broad range of technologies. His fields of work have included electronic devices, computer systems and software, autonomous vehicles and other robotic systems, artificial intelligence technologies and machine learning platforms, virtual and augmented reality systems, digital media delivery systems, printing and packaging systems, LED and other lighting systems, power generation and distribution equipment, wireless communication technologies, medical devices, data security and encryption technologies, automotive components, consumer products, and food and beverage production systems.

Jim has guided the development of IP portfolios that supported notable exits through acquisition by technology leaders, including Amazon, Autodesk, Eaton, Ford, Google, Microsoft, Motorola, Nielsen, Proofpoint, Sandvik, Signify and Xerox.

Experience

Some examples of Jim’s work include:

• Drafting and negotiating technology development and license agreements for regional banks, telecommunications service providers, energy solutions providers, data storage and file-sharing services, and vendors of industry-focused systems such as car wash equipment, waste management equipment, data security solution providers, and many other solutions.
• Leading the firm’s patent and licensing teams for a hospital-based research institution.
• Developing high-value patent portfolios for leading makers of secure printing solutions, autonomous vehicle control and advanced driver assistance systems, LED lighting, portable energy storage equipment, artificial intelligence and machine learning systems and platforms, power management solutions, cloud storage and data delivery, robotic systems, electronic device cleaning products, oral care solutions and other consumer products.
• Representing a developer of entertainment content for mixed-reality devices across its business, including content production and license agreements, agreements with creative talent, and contracts with presenting venues.
• Leading IP due diligence for a private equity group’s acquisition of a multinational conglomerate’s business unit, then developing the new company’s patent portfolio, licensing, and freedom-to-operate strategies through its acquisition by a global industrial engineering group.
• Representing sports industry technology companies in patent, IP litigation, and technology licensing matters involving training technologies and simulators.
• Representing a cloud gaming provider in customer and license agreements with cable TV service providers.
• Representing an NHL legend in developing and licensing a hockey equipment brand, All-Pro NFL players in name-branded restaurant negotiations, and the heirs of an NBA pioneer in licensing his name for use by a leading shoe company.

Client Comments

Jim has been ranked for more than 15 consecutive years in the IAM Patent 1000, and for all six years of the IAM Global Leaders list, in which clients commented:

• “[Jim] often takes the time to pay a personal visit to our labs and is flawless in his execution when it comes to securing protection for our most advanced inventions. He is the perfect ‘down-the-hall’ colleague, as he is always available for quick consultations.”
• “As a transactional lawyer, [Jim] brings incredible value to an engagement because he is so pragmatic. He’s not an academic type who only thinks of the law – instead he keeps his commercial needs and objectives at the forefront of his mind.”
• Jim is “a repository of trust for a myriad of high-profile innovators” and is noted for “communicating his advice in crystal-clear and concise language.”