James D. Heisman (Jim) Founding Member
BIOGRAPHY
Jim has been practicing law for over three decades and he has significant experience in complex commercial litigation including trade secret, unfair competition, trademark, licensing, employment issues, patent matters and construction law. Jim also regularly counsels and represents high tech companies on matters such as GxP compliance and best practices, data privacy issues and technology services contracts for Computer Services Providers (CSPs) among other issues. In addition, Jim counsels companies with respect to Delaware corporate law including the selection of the best type of entity to satisfy its clients requirements.
Jim has litigated matters in all Delaware Courts, except the United States Bankruptcy Court. He has also appeared in and litigated cases in scores of Federal Courts across the country. Jim recently appeared as lead counsel in the matter of McTighe v. Signature Life Sciences, LLC, et.al., (N.D. OH, Sept. 30, 2021) where he secured a multi-million dollar judgment for his client in connection with the breach of a technology transfer agreement relating to hip replacement technology.
Before establishing Heisman Law in 2018, Jim worked for and was a partner in several national law firms including Connolly Bove Lodge and Hutz where he began his career in 1989 and continued there until 2012.
Selected Accomplishments
Developed and led program targeting rogue online pharmacies selling unauthorized generic products for a multi-national pharmaceutical company resulting in the closure of multiple infringing websites and the transfer or cancellation of multiple domain names.
Managed licensing program for a multi-national pharmaceutical company and negotiated scores of technology transfer licenses with universities.
Developed a comprehensive system for a national materials supplier to optimize its rights as a creditor under Delaware law.
Defended manufacturing company accused of misappropriating trade secrets obtaining favorable settlement.
Successfully prosecuted scores of mechanics lien actions, including multi-million dollar projects involving condominiums and apartments.
Substantial experience as part of patent litigation trial teams focusing primarily on damages, privilege issues and discovery disputes and overseeing large document productions.
Successfully prosecuted and defended numerous construction disputes under the auspices of the American Arbitration Association including design defect cases.
Successfully prosecuted multiple bid disputes and bond claims.
Representative Cases
Timothy McTighe, LLC v. Signature Life Sciences, LLC, et. al,
1:20 CV 902-PAG, Mem. Op. (N.D. OH 2021) As lead counsel, secured a multi-million dollar judgment for his client in connection with the breach of a technology transfer agreement related to hip replacement technology.
Eastern Industrial Services, Inc. v. Perry et. al.,
2018-0113-PAF (Del. Ch. 2021), As lead counsel, obtained favorable settlement on the eve of trial for employer in connection with the alleged breach of fiduciary duties committed by a former employee.
Ecolab Inc. v. FMC Corp.,
C.A. No: 05-831(D. Minn. 2009) Trial counsel in Patent infringement and trade secret action pertaining to processes for reducing microbial contamination on poultry and other meats. Obtained a verdict of infringement of all four of the client’s patent claims asserted and invalidated 13 of the 17 claims asserted against the client. Significantly reduced amount of damages claimed against client for trade secret misappropriation.
Universal Products, Inc. v Scientific Chemicals, Inc., et al.,
C.A. No: 591 (Del. Ch. 2005) As lead counsel, obtained favorable settlement for client accused of misappropriating trade secrets after discovery demonstrated there was no misappropriation.
TruePosition Inc. v. Andrew Corp.,
568 F.Supp.2d 500 (D. Del. 2008) Delaware counsel for client asserting a patent which taught a method of locating a cellphone in idle mode (that is, not engaged in a voice call) using U-TDOA on the control channel. Jury awarded client 45 million in damages and entered a permanent injunction.
Wohlsen Construction Co. v. State of Delaware, 1998 WL 157365 (1998)
Part of trial team representing the second lowest bidder, obtained an injunction prohibiting the award of a 48 million dollar prison project and mandating a rebid due to indefinite and imprecise bid specifications.
Willemijn Houdstermaattschappij BVv. Standard MicroSystems Corp., 103 F.3d 9 (2nd Cir. 1997)
Part of trial team representing a computer networking patentee, obtained affirmance of an arbitration decision that our client, the patentee, did not violate a Most Favored Licensee provision, thus preserving our client’s extensive licensing program.
In re: Manchak Patent Litigation, 320 F. Supp. 2d 178 (D. Del. 2002).
Part of trial team in MDL patent litigation action pertaining to a method to neutralize organic materials in sludge. The patent was asserted against our client which was the owner of the Anaconda superfund site. The claim required an “aqueous organic material containing sludge” be put in a sludge-lime mixing chamber. The material processed at Anaconda, however, was inorganic flue dust and as a result summary judgment was awarded in favor of client even though there may have been trivial quantities of organic material from the soil.