James M. McCarthy is a partner with McDonnell Boehnen Hulbert & Berghoff LLP and has extensive experience in all areas of intellectual property law.
Mr. McCarthy has coordinated complex litigations involving patent, design patent, trademark, trade dress, copyright, trade secret, and unfair competition issues. He has participated in all phases of litigation before federal courts and the Trademark Trial and Appeal Board.
In addition to his litigation practice, Mr. McCarthy actively manages global trademark portfolios and develops brand building and protection strategies for his clients. He has counseled Fortune 500 companies, small clients and individuals regarding the procurement, enforcement, and licensing of intellectual property rights. Mr. McCarthy has also conducted sophisticated trademark searches and rendered clearance and infringement opinions involving both patent and trademark law.
Mr. McCarthy is passionate about helping clients improve people’s lives and has concentrated on representing clients in the health care industry. He has represented medical boards, distributors of rehabilitation and assisted living products, and the manufacturers of medical devices.
Representative Experience
- Coordinating patent litigation in defense of new medical device company leading to the launch of its first product
- Arguing defendant’s positions in patent Markman hearing and achieving favorable claim construction
- Developing comprehensive branding strategy for health care providers interested in maintaining board certification
- Managing global trademark portfolio for expanding distributor of rehabilitation and assisted living products
- Coordinating defense in complex, consolidated trademark opposition proceeding before the Trademark Trial and Appeal Board, defeating summary judgment motion and proceeding through final briefing
- Successfully defending against patent infringement allegations through to a favorable settlement in a medical device patent case
- Defeating preliminary injunction in medical device patent case, allowing client to continue with its new product launch
- Securing a multi-million dollar jury verdict (and affirmance on appeal) in a patent infringement litigation involving mechanical arts in the automotive industry
Published Articles
Federal Subject Matter Jurisdiction: When Does a Case Involving the Breach of a Copyright Licensing Contract “Arise Under” the Copyright Act, 19 U. Dayton L. Rev. 165 (1993).
ABA Honors Thurgood Marshall, ABA Journal, August 1992, at 104.
Speaking Engagements
2011 INTA Annual Meeting – Strategic Personal Branding
2007 INTA Leadership Meeting – Co-Chair and Master of Ceremonies
2002 INTA Annual Meeting – Advanced Litigation Strategies