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James Muldoon
D: (315) 214-2021  
jmuldoon@harrisbeach.com

James R. Muldoon

  Member

Legal Teams Leader -  
Intellectual Property
Industry Teams Leader -  
Unmanned Aircraft Systems – Drones
(315) 214-2021  |
  jmuldoon@harrisbeach.com
“In intellectual property litigation, my greatest satisfaction is derived from obtaining a deep understanding of my client’s technologies, guiding them through strategies in litigation procedure, and presenting a persuasive case to a jury that highlights the importance and value of my client’s technology. I also value developing relationships with my clients and understanding their businesses so that I can provide meaningful advice and guidance to identify and protect their competitive advantages.”
Profile
Representative Matters
Professional and Civic
Areas of Experience
Admissions
Education
Location

Jim’s practice focuses on the enforcement and defense of intellectual property infringement and related claims in federal and state courts and in arbitration.  He has been actively involved in a large number of patent infringement lawsuits, encompassing diverse technologies such as feed-through filter for implantable medical devices; methods for archiving and viewing sporting events over the Internet; natural language processing for queries to computer systems; compression-style coaxial cable connectors, electro-surgery blades and coagulation probes, and macroporous media for high performance liquid chromatography columns.  Jim  has also litigated federal trademark, unfair competition and antitrust claims and represented plaintiffs in copyright infringement actions on behalf of construction professionals, software publishers and performing rights organizations.

In addition to IP litigation, Jim prosecutes patent and trademark applications in a wide range of technologies such as electrical connectors and diplex filters for the cable television industry, medical devices, military weapon cleaning systems; high alloy tool steels, chromatography columns, microsphere and hydrogel adhesives, automotive components, cross-head extrusion die assemblies, and recreational equipment.  He also counsels clients and participates in the assessments of intellectual property portfolios and the licensing and sale of intellectual property rights, as well as advising several university clients in technology transfer programs.

Jim leads the firm’s Unmanned Aircraft Systems legal team.

Before joining Harris Beach, Jim was a named partner of a Syracuse law firm.  He has served as a Navy Judge Advocate and a Navy Pilot.

  • Greatbatch Ltd. v. AVX Corp. et al. (U.S. District Court, D. Del. 2019): Represented patent owner in patent infringement action over key components for pacemakers and implantable defibrillators. Jury verdicts found infringement of three U.S. Patents, and awarded lost profits and price erosion. Judgment on the jury verdict exceeded $27 million in damages.
  • Bradshaw Medical Inc v. MedTorque Inc et al. (U.S. District Court, E.D. Wisc. 2019): Represented manufacturer of orthopedic torque limiting ratchets. Obtained summary judgment of non-infringement.
  • Daneshvar v. NeuroNexus Techs., et al. (E.D. Mich. 2017): Represented developer and manufacturer of maneuverable deep brain stimulation probes. Obtained summary judgment that plaintiff was not an inventor of any patents in portfolio.
  • MAXStick v. Iconex. Successful claim construction decision lead to a favorable settlement for the client.
  • In re Certain Laser Abraded Denim : (ITC 2015) Obtained favorable settlement and license of Unfair Import Investigation for patent infringement before International Trade Commission.
  • Optoelectronics Systems Consulting Inc. v. Grantham: (Conn. Sup. Ct. 2015) Obtained favorable settlement of inventor’s claim to ownership of patent and patent application to implantable biosensors.
  • ODU GmbH & Co. v. Circulite, Inc. (PTAB 2015) Brought Patent Derivation Proceeding before PTAB regarding implantable connectors resulting in correction of inventorship and favorable settlement.
  • Buttner v Palmer, et al.: (NDNY 2014) Obtained summary judgment of noninfringement of copyright claims for architectural works and drawings by for construction contractor.
  • Lorillard Tobacco Co. v. Zahran; v. Al-Shaikh; v. Shehadeh; (NDNY 2013) Obtained ex parte seizures, favorable settlements and consent judgments against convenience stores selling counterfeit tobacco products.
  • NCP Liquors Inc. v. Syracuse Liquor Square Inc. (NY Sup. Ct. 2012) Obtained preliminary injunction and favorable settlement of trademark infringement action.
  • Face of Jesus, LLC v. New City Press et al. (NDNY 2011) Obtained favorable settlement of copyright infringement claims for cover art on published book with proceeds used to fund charity work of Fr. Pompei’s ministry in Buffalo, NY.
  • Reed Elsevier Inc. v. Graziano (NAF 2012) Successful defense of computer consulting firm in domain name dispute arbitration under Uniform Domain-Name Dispute Resolution Policy (UDRP)
  • In re Certain Coaxial Cable Connectors (ITC 2011) Lead patent trial counsel in Unfair Import Investigation based on patent infringement of coaxial cable connectors. Obtained general exclusion orders in trial proceedings before Int’l Trade Commission. Conducted training for Customs and Border Protection agents leading to multiple seizures of infringing goods.
  • Hinderwadel’s Inc. v. Isadore A. Rapasadi & Sons, Inc. et al. (NDNY 2006) Obtained preliminary injunction and consent judgment and decree in trademark infringement and counterfeiting action with respect to famous regional food product (salt potatoes).

Professional and Civic

  • American Intellectual Property Law Association (AIPLA), member
  • Central New York Patent Law Association, member
  • International Association for the Protection of Intellectual Property (AIPPI), member
  • Licensing Executive Society (USA and Canada), member
  • MIT Educational Council, member
  • New York State Bar Association, Intellectual Property and Commercial and Federal Litigation Sections, member
  • Onondaga County Bar Association, member
  • Rochester Intellectual Property Law Association, member
  • Advocates, Inc., director
  • Cavalry Club Golf Board, member and tournament chairman
  • Elmcrest Children’s Center, member of the Board of Directors and Advisors
  • Exceptional Family Resources, Inc., president and director, 1994-2000
  • Loretto Management Corporation, chairman and trustee, 2004-2011
  • Loretto Foundation, Inc., chairman and trustee, 2001-2011
  • M&T Bank Loretto FUTURES Professional Golf Tournament, chairman, 2002 and 2003
  • New York State Developmental Disabilities Planning Council, member, 2000-2003
  • PACE CNY, chairman and trustee, 2006-2011

Recognition

  • American Lawyer Media and Martindale-Hubbell, “Top Rated Lawyer in Intellectual Property” since 2013
  • Best Lawyers, Litigation – Patent, since 2014
  • Leadership Syracuse, 40 Under 40 award, 1999
  • Super Lawyers, Intellectual Property Litigation, since 2007

Legal Practices

Intellectual Property

Industry Teams

Food and Beverage
Medical and Life Sciences
Photonics
Science and Technology
Unmanned Aircraft Systems – Drones

Illinois

New York

U.S. Court of Appeals, Federal Circuit

U.S. Court of Appeals, Second Circuit

U.S. District Court, District of Colorado

U.S. District Court, Illinois - Northern District

U.S. District Court, New York - Eastern District

U.S. District Court, New York - Northern District

U.S. District Court, New York - Southern District

U.S. District Court, New York - Western District

U.S. Patent and Trademark Office

U.S. Supreme Court

University of Chicago Law School

JD
1990

Massachusetts Institute of Technology

1983
New York, NY Office
Syracuse, NY Office
All Publications, Legal Alert |
 December 15, 2021
New Procedures for Challenging Trademark Registrations at the U.S. Patent and Trademark Office
On December 18, two new procedures will be available for challenging U.S. trademark registrations....read more
All Insights, All Publications, Legal Alert |
 May 3, 2021
Federal Aviation Administration Effectuates New Rules Regarding the Use of Drones
On April 21, 2021, the Federal Aviation Administration’s (FAA) long awaited final rules regarding the use of drones took effect and are a si...read more
All Insights, All Publications, Legal Alert |
 July 11, 2019
Supreme Court Brings Protections to Licensees of Trademarks
The United States Supreme Court has rendered a decision that represents a victory for licensees of trademarks throughout the country when fa...read more
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(866) 999-0659

James R. Muldoon

jmuldoon@harrisbeach.com
D: (315) 214-2021
New York, NY Office
Syracuse, NY Office
James Muldoon
https://www.harrisbeach.com/people/muldoon-james-r/

■ Areas of Expertise

Intellectual Property Legal Practice
Food and Beverage Industry Team
Medical and Life Sciences Industry Team
Photonics Industry Team
Science and Technology Industry Team
Unmanned Aircraft Systems - Drones Industry Team

■ Profile

Jim’s practice focuses on the enforcement and defense of intellectual property infringement and related claims in federal and state courts and in arbitration.  He has been actively involved in a large number of patent infringement lawsuits, encompassing diverse technologies such as feed-through filter for implantable medical devices; methods for archiving and viewing sporting events over the Internet; natural language processing for queries to computer systems; compression-style coaxial cable connectors, electro-surgery blades and coagulation probes, and macroporous media for high performance liquid chromatography columns.  Jim  has also litigated federal trademark, unfair competition and antitrust claims and represented plaintiffs in copyright infringement actions on behalf of construction professionals, software publishers and performing rights organizations.

In addition to IP litigation, Jim prosecutes patent and trademark applications in a wide range of technologies such as electrical connectors and diplex filters for the cable television industry, medical devices, military weapon cleaning systems; high alloy tool steels, chromatography columns, microsphere and hydrogel adhesives, automotive components, cross-head extrusion die assemblies, and recreational equipment.  He also counsels clients and participates in the assessments of intellectual property portfolios and the licensing and sale of intellectual property rights, as well as advising several university clients in technology transfer programs.

Jim leads the firm’s Unmanned Aircraft Systems legal team.

Before joining Harris Beach, Jim was a named partner of a Syracuse law firm.  He has served as a Navy Judge Advocate and a Navy Pilot.

■ Representative Matters

  • Greatbatch Ltd. v. AVX Corp. et al. (U.S. District Court, D. Del. 2019): Represented patent owner in patent infringement action over key components for pacemakers and implantable defibrillators. Jury verdicts found infringement of three U.S. Patents, and awarded lost profits and price erosion. Judgment on the jury verdict exceeded $27 million in damages.
  • Bradshaw Medical Inc v. MedTorque Inc et al. (U.S. District Court, E.D. Wisc. 2019): Represented manufacturer of orthopedic torque limiting ratchets. Obtained summary judgment of non-infringement.
  • Daneshvar v. NeuroNexus Techs., et al. (E.D. Mich. 2017): Represented developer and manufacturer of maneuverable deep brain stimulation probes. Obtained summary judgment that plaintiff was not an inventor of any patents in portfolio.
  • MAXStick v. Iconex. Successful claim construction decision lead to a favorable settlement for the client.
  • In re Certain Laser Abraded Denim : (ITC 2015) Obtained favorable settlement and license of Unfair Import Investigation for patent infringement before International Trade Commission.
  • Optoelectronics Systems Consulting Inc. v. Grantham: (Conn. Sup. Ct. 2015) Obtained favorable settlement of inventor’s claim to ownership of patent and patent application to implantable biosensors.
  • ODU GmbH & Co. v. Circulite, Inc. (PTAB 2015) Brought Patent Derivation Proceeding before PTAB regarding implantable connectors resulting in correction of inventorship and favorable settlement.
  • Buttner v Palmer, et al.: (NDNY 2014) Obtained summary judgment of noninfringement of copyright claims for architectural works and drawings by for construction contractor.
  • Lorillard Tobacco Co. v. Zahran; v. Al-Shaikh; v. Shehadeh; (NDNY 2013) Obtained ex parte seizures, favorable settlements and consent judgments against convenience stores selling counterfeit tobacco products.
  • NCP Liquors Inc. v. Syracuse Liquor Square Inc. (NY Sup. Ct. 2012) Obtained preliminary injunction and favorable settlement of trademark infringement action.
  • Face of Jesus, LLC v. New City Press et al. (NDNY 2011) Obtained favorable settlement of copyright infringement claims for cover art on published book with proceeds used to fund charity work of Fr. Pompei’s ministry in Buffalo, NY.
  • Reed Elsevier Inc. v. Graziano (NAF 2012) Successful defense of computer consulting firm in domain name dispute arbitration under Uniform Domain-Name Dispute Resolution Policy (UDRP)
  • In re Certain Coaxial Cable Connectors (ITC 2011) Lead patent trial counsel in Unfair Import Investigation based on patent infringement of coaxial cable connectors. Obtained general exclusion orders in trial proceedings before Int’l Trade Commission. Conducted training for Customs and Border Protection agents leading to multiple seizures of infringing goods.
  • Hinderwadel’s Inc. v. Isadore A. Rapasadi & Sons, Inc. et al. (NDNY 2006) Obtained preliminary injunction and consent judgment and decree in trademark infringement and counterfeiting action with respect to famous regional food product (salt potatoes).

■ Professional and Civic

  • American Intellectual Property Law Association (AIPLA), member
  • Central New York Patent Law Association, member
  • International Association for the Protection of Intellectual Property (AIPPI), member
  • Licensing Executive Society (USA and Canada), member
  • MIT Educational Council, member
  • New York State Bar Association, Intellectual Property and Commercial and Federal Litigation Sections, member
  • Onondaga County Bar Association, member
  • Rochester Intellectual Property Law Association, member
  • Advocates, Inc., director
  • Cavalry Club Golf Board, member and tournament chairman
  • Elmcrest Children’s Center, member of the Board of Directors and Advisors
  • Exceptional Family Resources, Inc., president and director, 1994-2000
  • Loretto Management Corporation, chairman and trustee, 2004-2011
  • Loretto Foundation, Inc., chairman and trustee, 2001-2011
  • M&T Bank Loretto FUTURES Professional Golf Tournament, chairman, 2002 and 2003
  • New York State Developmental Disabilities Planning Council, member, 2000-2003
  • PACE CNY, chairman and trustee, 2006-2011

■ Admissions

  • American Lawyer Media and Martindale-Hubbell, “Top Rated Lawyer in Intellectual Property” since 2013
  • Best Lawyers, Litigation – Patent, since 2014
  • Leadership Syracuse, 40 Under 40 award, 1999
  • Super Lawyers, Intellectual Property Litigation, since 2007

■ Education

University of Chicago Law School
 ,JD
 ,1990
Massachusetts Institute of Technology
 ,1983

Harris Beach and its subsidiaries provide a full range of legal and professional services for clients across New York state, as well as nationally and internationally. Harris Beach is among the country’s top law firms as ranked by The National Law Journal and is among the BTI Elite law firms based on in-depth interviews of more than 600 corporate counsel at the world’s largest and most influential companies. Our clients include Fortune 100 corporations, privately-held companies, emerging businesses, public sector entities, not-for-profit organizations and individuals. Principal industries we represent include education, energy, financial, food and beverage, health care, insurance, manufacturing, medical and life sciences, real estate developers, and state and local governments and authorities.

Industry Teams
Automotive and Vehicle Dealerships
Cannabis
Construction and Surety
Educational Institutions Higher Ed
Educational Institutions K-12
EMS and Fire Protection Providers
Energy
Financial Institutions and Capital Markets
Food and Beverage
Health Care
Industrial and Consumer Manufacturing
Medical and Life Sciences
Municipalities and Local Agencies
Nanotechnology
Photonics
Racing and Gaming
Real Estate Developers
Science and Technology
Telecommunications and Media
Unmanned Aircraft Systems
USA Collegiate Sports
Veterinary Medicine

Practices
Alternative Dispute Resolution
Appellate
Business and Commercial Litigation
Collection Law
Commercial Real Estate
Corporate
Cybersecurity Protection and Response
Diversity Compliance
E-Discovery (e-infoSM)
Employee Benefits
Employment Litigation
Environmental Law
Financial Restructuring, Bankruptcy and Creditors’ Rights
Government Compliance and Investigations
Health Law
Immigration Law
Insurance Coverage
Intellectual Property Law
International Trade Law
Internet Law
Labor and Employment Law
Mass Torts and Industry-Wide Litigation
New Markets Tax Credit
Patent, Trademark and Copyright Law
Product Liability and Comprehensive General Liability
Public Finance and Economic Development
Real Property Valuation Litigation
Residential Real Estate
Sports Law
Tax Law
White Collar Crime
Wills, Trusts and Estates

Consulting Services
HB Solutions LLC
Collegiate Sports Compliance
Data Privacy and Cybersecurity
Economic Development and Public Affairs
Educational Institution Assistance
EMRG® (E-Discovery Management Resources Group)
Energy
Health and Human Services
Human Resources
Information Technology
Marketing and Communication Services
Municipal and Local Agency Assistance

HB Cornerstone LLC
Owner Representation
Design Services
Facilities Consulting
Move Management

Caetra.io
CyMetric (Cybersecurity Regulation Compliance Software)

Offices throughout New York:

Albany
677 Broadway
Albany, NY 12207
518-427-9700

Buffalo
726 Exchange Street
Buffalo, NY 14210
716-200-5050

Ithaca
119 East Seneca Street
Ithaca, NY 14850
607-273-6444

Long Island
333 Earle Ovington Boulevard
Uniondale, NY 11553
516-880-8484

New York City
100 Wall Street
New York, NY 10005
212-687-0100

Rochester
99 Garnsey Road
Pittsford, NY 14534
585-419-8800

Saratoga Springs
513 Broadway
Saratoga Springs, NY 12866
518-587-0551

Syracuse
333 West Washington Street
Syracuse, NY 13202
315-423-7100

White Plains
445 Hamilton Avenue
White Plains, NY 10601
914-683-1200

Offices also in:

New Haven, CT
195 Church Street
New Haven, CT 06510
203-784-3159

Newark, NJ
One Gateway Center
Newark, NJ 07102
973-848-1244

Attorney Advertising. Prior results do not guarantee a similar outcome.
© 2022 Harris Beach PLLC

Content current as of May 26, 2022 9:20 am
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