James J. Kritsas

James’ experience includes litigating matters from complaint to trial across a wide range of technologies. James has played a central role in several jury trials and preliminary injunction hearings and is well versed in handling all stages of a case’s lifecycle, including pleadings, fact and expert discovery, motion practice, court hearings, claim construction, trial practice, and appeals. James also utilizes his IPR experience to analyze infringement claims and formulate comprehensive litigation strategies for clients. His experience also includes prosecuting patent applications before the USPTO, and he frequently counsels startups and entrepreneurs on developing and protecting IP.

James also advises clients on IP portfolio management, licensing, prelitigation counseling, due diligence analysis associated with corporate mergers and acquisitions, and opinions and strategic advice relating to complex patentability, patent validity, infringement, and freedom-to-operate issues. James counsels on all matters related to patent strategies, patent validity, patent due diligence, and freedom-to-operate opinions.

As companies evolve and modernize the way they operate, James ensures that they are able to establish exclusive positions to protect how they do business through procuring patent protection as well as evaluating patent validity and freedom-to-operate positions for competitor patents. His ability to manage patent portfolios and handle important trade secrets allows him to counsel clients through the creation of a diverse assortment of IP programs.

Prior to joining Morgan Lewis, James was an associate in the IP practice group of another global law firm. While in law school, James was the conference editor of the Loyola University Chicago Law Journal and served as a judicial extern for Judge Robert M. Dow, Jr. and Magistrate Judge Michael Mason of the US District Court for the Northern District of Illinois. Prior to his legal career, James worked as an engineer, providing engineering design services for clients in the energy and chemical, food and beverage, pharma and biotech, and manufacturing industries.

• Secured a $45 million complete trial victory in a patent infringement and trade secret misappropriation lawsuit in the District of Delaware for a global leader in the physical security industry, including a willfulness finding on all counts
• Successfully invalidated all claims of a competitor’s patent in an IPR for a large boating manufacturer
• Represented a global leader in enterprise asset intelligence in a Western District of Texas patent infringement case related to RFID technology; secured dismissal of all claims on summary judgment
• Secured a complete victory in a patent infringement lawsuit in the District of Delaware for a global leader in enterprise asset intelligence and successfully invalidated all patent claims at the motion to dismiss stage
• Represented a manufacturer of light-emitting diode (LED) technology in three ITC investigations; two investigations were dismissed shortly before trial and the third resulted in determinations of noninfringement, invalidity, and lack of domestic industry
• Served as trial counsel for a global chipset company in a technology theft case related to WiFi chipset source code; secured a favorable settlement for the client after a two-week jury trial
• Represented a medical device company in a 15-patent litigation involving spinal, hip, and knee implants and surgical methods with nearly $300 million in potential damages at stake; shortly after the court’s Markman ruling and within a week of the court accepting our inequitable conduct allegations, the case settled on very favorable terms for the client
• Defended an LED lighting manufacturer in a patent infringement case against a competitor concerning LED dimming circuitry and integration with AC wall dimmers; case was successfully dismissed at the outset and without any payment to the plaintiff
• Seconded to a consumer products company client and performed a range of in-house IP responsibilities related to licensing, patent and trademark portfolio analysis, product clearance, and design around recommendations
• Represented a construction company in a patent dispute with an equipment supplier related to water treatment systems; all patent counts were dismissed at the outset of the case
• Served as lead counsel for a pro bono client in a right of publicity lawsuit in Illinois state court and achieved a complete victory for client at the motion to dismiss stage