PJ McCarthy

PJ McCarthy is a partner in Goodwin’s IP Litigation practice. PJ is a first chair litigator with particular expertise handling Section 337 investigations at the International Trade Commission (ITC). Having handled about forty investigations, PJ counsels ITC clients across a wide breadth of industries and regarding various areas of law. PJ stays current on all developments at the ITC, he regularly speaks about practicing at the Commission, and sits on the Executive Committee for the ITC’s leading bar association – the ITC Trial Lawyers Association (ITCTLA).

PJ also regularly leads district court patent litigations and is an accomplished jury trial specialist. PJ handles a broad scope of technologies in his practice, but as an electrical engineer tends to focus on such things as semiconductors, computers, wireless technologies, consumer electronics, and the mechanical arts. In June 2021, PJ led a trial team that secured a windfall jury verdict for his clients that resulted in national Litigator of the Week recognition.

PJ’s recent representative experiences include:

Consumer Electronics (software, GPS, smartphones, television, etc.) and Medical Devices

• Certain Filament Light-Emitting Diodes and Products Containing Same (II), ITC Inv. No. 337-TA-1220: Lead Attorney for major lightbulb companies in patent litigation brought at the International Trade Commission. Goodwin secured a complete victory for its clients in front of the Chief Administrative Law Judge. The decision was upheld by the Commissioners and is now on appeal to the Federal Circuit.
• Certain Outdoor and Semi-Outdoor Electronic Displays, Products Containing Same, and Components Thereof, ITC Inv. No. 337-TA-1331; Components for Certain Environmentally-Protected LCD Digital Displays and Products Containing Same, ITC Inv. No. 337-TA-1349: Lead Attorney for Samsung in multiple contentious competitor litigations at the ITC and in the Eastern District of Texas.
• Ultravision v. Shenzhen Absen Optoelectronic Co., LTD. and Absen, Inc.; Certain Modular Led Display Panels and Components Thereof, ITC Inv. No. 337-TA-1114: Lead Attorney for numerous outdoor display manufacturers in litigations that include up to nine asserted patents. A first case went to trial in June 2021 and a jury found all patents that remained for trial were both not infringed and invalid. It was a complete win that garnered national Litigator of the Week recognition.
• Certain Robotic Vacuum Cleaning Devices and Components Thereof Such as Spare Parts, ITC Inv. No. 337-TA-1057: First chair trial attorney, delivered opening statement at trial. Multiple patents found not infringed and invalid. Client secured favorable settlement during the Review stage.*
• Mobile Telecommunications Technologies, LLC v. Samsung Telecommunications America, LLC (E.D. Tex.): Part of litigation and trial team that secured client’s first ever patent litigation winning jury trial verdict in the Eastern District of Texas.*

Consumer Products (materials and manufacturing)

• US Synthetic Corp v. Fujian Wanlong Superhard Material Technology Co Ltd: Lead Attorney for multiple manufacturers of polycrystalline diamond compacts. Successfully convinced the presiding ALJ that the asserted patents, all related to polycrystalline diamond compacts were not patentable under 35 U.S.C. § 101. The decision was upheld by the Commission and is currently appealed to the Federal Circuit.
• Certain Height-Adjustable Desk Platforms and Components Thereof: Lead Attorney in multiple litigations related to adjustable height desks, including one where the complainant was convinced to drop the case in its entirety.
• Mouldtec, Inc. v. Pagter & Partners International B.V. and Pagter Innovations, Inc. (Ct. App. Fed. Cir.): Successfully argued summary judgment appeal before a three judge panel at the Court of Appeals for the Federal Circuit.*

Semiconductors

• Ocean v. Renesas Electronics Corporation: Lead Attorney for major semiconductor manufacturer in five patent case. Led a defense that resulted in substantially early and favorable settlement for his client. The case was effectively consolidated with numerous other defendants, who did not settle early.
• Certain Integrated Circuit Products and Devices Containing the Same, ITC Inv. No. 337-TA-1295: Goodwin represented Amlogic in multiple patent infringement matters filed by Future Link Systems, LLC. The most active of those infringement matters was brought at the ITC. The matter favorably settled.
• Digital Televisions Containing Integrated Circuit Devices and Components Thereof, ITC Inv. No. 337-TA-806: Achieved settlement for client which resulted in client being paid substantial sum, even though the client was not the party that instigated litigation originally.*

Automotive/Engines

• Signal IP, Inc. v. Kia Motors America, Inc. (C.D. Cal.): Part of litigation team that invalidated numerous asserted patents and other asserted patent claims at the claim construction stage of the case based on indefiniteness grounds. Prevail on summary judgment motion and achieved settlement for client.*
• Voxathon LLC v. Hyundai Motor America (E.D. Tex.): Prevail on motion to dismiss the asserted claims.*
• EcoServices, LLC v. Certified Aviation Services, LLC (C.D. Cal.): Prevailed at a jury trial and was awarded all damages.*

* Denotes experience prior to joining Goodwin.

Member, Patent Bar

• Registered Patent Attorney

Member, American Bar Association

Voting member

• ITC Committee and Patent Litigation Committee
• Executive Committee, ITC Trial Lawyers Association

Member, American Intellectual Property Law Association

• ITC Committee and Patent Litigation Committee

Member, Federal Circuit Bar Association

Trustee, Washington Lawyers' Committee

• Recommended for Patent Litigation by Legal 500, 2019-2023
• IAM Patent 1000, 2019-2023
• DCA Live, "Rising Stars of Law-Top 40 under 40," 2018
• Super Lawyers magazine, Washington, D.C. Super Lawyers, "Rising Stars," 2016-2018

Publications

• PJ is a frequent contributor on ITC topics, specifically publishing the ITC 337 Quarterly Insider
• Editor, “Big Molecule Watch,” Goodwin’s award-winning blog that reports real-time analysis and updates on regulatory issues, litigation, legislation and other news in the developing world of biosimilars
• Author, “The USITC: where patent venue has no name,” World Intellectual Property Review, October 2018
• “Evidentiary Issues in the Federal Circuit Court of Appeals: Preservation and Avoiding Waiver; Chapter 13,” Evidence in Patent Law, October 2018
• “Patent Litigation Around the World: Canada, China, and Germany,” 22nd Annual Advanced Patent Law Institute, University of Texas School of Law, November 2017
• Author, “America First: Section 337 as the Ultimate Border Wall?”, Legal Intelligencer, April 2017
• “Appeals to the Court of Appeals for the Federal Circuit,” ANDA Litigation: Strategies and Tactics for Pharmaceutical Patent Litigators, Second Edition, ABA Section of IP Law, 2016

Presentations

• US-China Intellectual Property Exchange and Development Foundation (UCIPF) ITC Seminar, November 9, 2021
• ITC Webinar Series 2020 Part II – Innovators, Disruptors, and Startups Behold the ITC, June 23, 2020
• ITC Webinar Series 2020 Part I – Non-Patent Cases at the ITC, May 5, 2020
• ITC Webinar Series – Part 3: Post Remedy Issues at the ITC, November 20, 2019
• ITC Webinar Series – Part 1: Your ITC Primer, September 25, 2019
  
• Current Developments in ITC Section 337: Patent And Non-Patent Based Investigations, Interplay with the PTAB, And More! November 28, 2018
• Statutory IP-based Investigations: Patents; ITC Section337 Investigations: Your Thorough Guide for 2017 and Beyond. Webcast, The Knowledge Group, May 3, 2017
• US Trade Policies and Section 337 Investigations, presented to China Council for the Promotion of International Trade and its members in Foshan, March 1, 2017
• US Trade Policies and Section 337 Investigations, presented to the Chongqing SASAC (State-owned Assets Supervision and Administration Commission) and its members, February 28, 2017
• US Trade Policies and Section 337 Investigations, presented to the China Chamber of International Commerce and its members, February 23, 2017