James R. Muldoon

Firm: Harris Beach
Location: Syracuse - NY

  • 333 West Washington Street
    Syracuse, NY 13202
  • Tel : 315-423-7100
  • Fax : 315-422-9331

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.

Awards & Recognitions

  • 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

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).

Harris Beach

Since our founding in 1856, Harris Beach has grown to be among the country’s top law firms, as ranked by The National Law Journal.

From the earliest years, we have been on the cutting edge of the law. At the turn of the 20th century, we helped guide the expansion of the railway system throughout New York state. We were there to help one of our clients secure the patent for a novel photo-imaging system that many thought would never catch on, but became an international leader in photocopying systems. Before the rest of the country focused on health care reform, we were helping our clients design a community system that resulted in costs dramatically below the national average.

Our law firm remains at the forefront of issues facing businesses in the 21st century, whether it’s competing in the global marketplace, protecting innovations, helping organizations manage cyberattacks or meeting the demands of complying with the Affordable Care Act. Above all, we understand and match our clients’ needs to move faster, think more creatively and develop new business models to achieve sustainable growth.