Jim Kritsas

Patent Attorney - Focused on Complex Litigation, IPRs, and IP Portfolio Strategies

Chicago, Illinois, United States

About

I represent plaintiffs and defendants in complex intellectual property (IP) disputes across the United States, including patent, trade secret, trademark, copyright, and breach of contract litigation. I represent clients in US district and appellate courts, before the US International Trade Commission, and in AIA post-grant and inter partes review (IPR) proceedings before the US Patent and Trademark Office (USPTO). With a background in mechanical engineering, I have patent litigation experience covering a broad range of technologies, including disputes related to medical devices, wireless and RFID radios, LED technologies, and consumer products. My experience includes litigating matters from complaint to trial across a wide range of technologies. I have played a central role in several jury trials and preliminary injunction hearings and am 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. I also utilizes my IPR experience to analyze infringement claims and formulate comprehensive litigation strategy for clients. I also advise clients on IP portfolio management, licensing, pre-litigation 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. I counsel 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, I ensure 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. My ability to manage patent portfolios and handle important trade secrets allows me to counsel clients through the creation of a diverse assortment of IP programs. While in law school, I 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 my legal career, I worked as an engineer and provided engineering design services for clients in the energy & chemical; food & beverage; pharma & biotech; and manufacturing industries.

Experience

  • Senior Counsel, Intellectual Property Litigation at Abbott
    Aug 2024 - Present · 1 yr 11 mos

  • Associate at Morgan, Lewis & Bockius LLP
    Aug 2018 - Aug 2024 · 6 yrs 1 mo

    Secured $45 million complete trial victory in patent infringement and trade secret misappropriation lawsuit in the District of Delaware for a global leader in physical security industry, including 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 and secured dismissal of all claims on summary judgment. Secured complete victory in 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 technology in three ITC investigations; two investigations were dismissed shortly before trial and the third resulted in determinations of non-infringement, invalidity, and lack of domestic industry.

  • Associate at McDermott Will & Emery
    Aug 2013 - Sep 2018 · 5 yrs 2 mos

    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. The 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.

  • United States District Court for the Northern District of Illinois (10 mos)
    • Judicial Extern to the Honorable Robert M. Dow, Jr.
      Jan 2013 - May 2013 · 5 mos

    • Judicial Extern to the Honorable Michael T. Mason
      Aug 2012 - Dec 2012 · 5 mos

  • Summer Associate at McDermott Will & Emery
    May 2012 - Aug 2012 · 4 mos