Jim is passionate about technology. He combines that passion with years of experience to help clients develop legal strategies that increase value and reduce risk around their most important intellectual property assets.

Jim co-chairs the firm’s Technology Practice Group and is former chair of the firm's Intellectual Property Department. He is recognized as a global thought leader in patents and technology intellectual property transactions. Jim also leverages his previous experience as an engineering project manager to ensure that clients receive practical advice, clear communications, responsive support and efficient service.

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

• patent strategies, including securing patents for innovative technologies, designing products that avoid infringement of competitors’ patents, and implementing strategic license opportunities
• complex technology transactions, software and platform licensing, technology-focused supply chain agreements, and university technology transfer agreements
• corporate brand protection and personal name, image and likeness (NIL) licensing
• IP due diligence in mergers and acquisitions, and helping clients prepare for due diligence activities

Jim also supports the firm’s IP litigation teams when clients are involved in disputes.

Jim’s patent and transactional experience spans a range of technologies, including: electronic devices; computer systems and software; autonomous vehicles and other robotic systems; virtual and augmented reality systems; digital media delivery systems; printing and packaging systems; lighting systems; power generation and distribution equipment; wireless communication technologies; medical devices; data security and encryption technologies; blockchain technologies; automotive components; consumer products; and food and beverage production systems.

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

Experience

Specific examples of Jim’s experience include:

• Managing patent portfolios for the world’s leading makers of workplace and digital printing solutions; autonomous vehicle control and advanced driver assistance systems; LED lighting; power management solutions; cloud storage and data delivery; and electronic device cleaning products.
• Developing template license agreements and negotiating customer-specific agreements for regional banks, telecommunication service 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.
• Representing a developer of entertainment content for mixed-reality devices in all aspects of 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 until the company’s acquisition by a global industrial engineering group.
• Representing sports industry technology companies in patent, IP litigation and technology licensing matters involving baseball swing training technologies and virtual reality sports 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 negotiating name-branded restaurant arrangements; 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 10 consecutive years in the IAM Patent 1000, and for all four 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.”