jkozuch@caesar.law

James J. Kozuch

Specialties

Arbitration
Business/Commercial
Construction
Discovery
Engineering
Intellectual Property
Patent Infringement
Personal Injury
Pharmaceutical
Product Liability
Professional Liability
Settlement Administration

James J. Kozuch has practiced law since 1985, primarily as a litigator.  He has been a registered patent attorney since 1995, and has been a licensed professional engineer since 1977.

Mr. Kozuch served as a Special Master in a complex trade secrets case, BIEC International, Inc. v. Global Steel Services, Ltd. for the U.S. District Court for the Eastern District of Pennsylvania.

As a trial attorney, he has handled hearings, jury trials, and bench trials in a variety of matters, including breach of contracts, products liability, construction failures, professional liability, negligence, patent infringement, trademark infringement, trade secret misappropriation, and breach of non-competition covenants.

As an attorney handling intellectual property (IP) law (patents, trademarks, copyrights, and trade secrets) and IP litigation, he has counseled clients on all aspects of IP law, prosecuted U.S. and international patent applications, provided opinions on patentability, infringement, and validity, and litigated many IP cases.  He also has handled patent licensing at various levels – prepared license agreements and other agreements, litigated agreements, reviewed agreements in due diligence projects, and advised clients on licensing and related issues.

Before becoming an attorney, Mr. Kozuch worked in engineering, strategic planning, and financial analysis for several Fortune 500 companies, including major energy and chemicals companies.  As a result, he is experienced with electric power generation, petroleum refining, co-generation, synthetic fuels, alternative energy sources, and the exploration for and mining of coal and uranium.

Employment History

Partner, Caesar Rivise, PC, 1998-present; Associate, Seidel, Gonda, Lavorgna & Monaco, 1995-98; Partner/Associate, Rawle & Henderson, 1987-95; Associate/Intern, Butz, Hudders & Tallman, 1982-87; Strategic Planner, Air Products & Chemicals, 1980-82; Strategic Planner, Gulf Oil, 1979-80; Engineer/Strategic Planner, Mobil Oil, 1974-79; Engineer, Pennsylvania Power & Light, 1972-74.

Case List

ADR Experience

Mr. Kozuch was appointed to the National Roster of Neutrals of the American Arbitration Association (AAA) in 2003 and serves on the Commercial Roster of Neutrals.  He also is a member of four specialty panels – AAA’s National Patent Arbitration Panel, Pharma Panel, HiTec Panel, and Intellectual Property (IP) Panel.  In 2012 he became a member of the International Panel of Arbitrators for the International Centre for Dispute Resolution (ICDR).

Mr. Kozuch has attended over a dozen arbitrator training courses, seminars, and webinars since 2004. And he has served as an arbitrator in a variety of cases briefly summarized below, at least four of which have been “significant” (i.e., claims of $1 to $5 million).

Served as an arbitrator on a 3-member Panel in a significant medical device case involving a claim for breach of a Royalty Agreement and a counterclaim for patent misuse/antitrust violation, and various defenses, including forgery and conspiracy.  The Panel submitted a reasoned award.

Also served as an arbitrator on a 3-member Panel in a significant energy-related case involving claims for breach of covenant not to compete, misappropriation of trade secrets, breach of contract, and trademark infringement.  The parties were engineering and equipment companies in the petroleum field that had entered into an Asset Purchase Agreement and a License & Supply Agreement.  The claimant sought damages and injunctive relief.

Served as a sole arbitrator in a significant chemicals supply case for breach of a Supply Agreement and payment of royalties pursuant to a Royalty Agreement, plus a counterclaim for damages and a patent infringement defense.

Also served as a sole arbitrator in a dispute over alleged breaches of several related agreements between a manufacturer of metal alloys and an exclusive sales agent for the metal alloys. The claimant sought significant monetary damages and immediate termination of an agreement.

Served as a sole arbitrator in a breach of contract case involving a dispute between two medical professionals over monies owed in connection with an independent contractor agreement.

Also served as a sole arbitrator in a dispute over an alleged breach of a Franchise Agreement for a restaurant.  A declaratory award was sought as to whether the Franchise Agreement had been breached.  In addition to claimed damages, the claimant wanted the respondent to discontinue use of trade names, trademarks, and service marks.

Served as a sole arbitrator in a breach of contract case involving a dispute between two small businesses for technical services and product development.

Also served as a sole arbitrator in a case involving an alleged breach of contract for website design services provided by an independent contractor.

Served as a sole arbitrator in several cases for alleged breach of agreements involving commercial loans/financing provided to small businesses.

Served as a court appointed arbitrator in a variety of personal injury cases and in a property damage case involving construction and engineering issues.

Honors Membership Awards

Awards
Martindale Hubbell AV rated since 2004; Listed in The Best Lawyers in America for “Patent Law” and “Litigation – Patent” in 2013-2016; Named Pennsylvania SuperLawyer 2004-2016 in “Intellectual Property Law” and later in “Intellectual Property Litigation”; Selected “2013 Top Rated Lawyer in Commercial Litigation” and “Philadelphia Top Rated Lawyer” by American Lawyer Media and Martindale-Hubbell; Trial Advocacy Award for Achievement in the Field of Trial Advocacy, The Barristers Society, Temple University School of Law, 1985.

Memberships
Academy of Court-Appointed Masters (ACAM);
Intellectual Property Owners Association (Past Vice Chair, IP Licensing Committee);
Pennsylvania Bar Association (Delegate in House of Delegates);
Philadelphia Bar Association; Bar Association of Lehigh County (Board Member,  Vice President);
Bar Association of Lehigh County Inn of Court;
Philadelphia Intellectual Property Law Association;
Federal Bar Association; American Bar Association;
Association of Intellectual Property Firms (Past Board Member);
Lehigh Lawyers Association (Founder in 2009 and Past Board Member);
Cornell Engineering Alumni Association (Past Board Member);
American Society of Mechanical Engineers (Thomas Edison Patent Award Committee, Past Chair).

Admissions
Admitted to Pennsylvania Supreme Court (1985)
Admitted to Practice in:
U.S. Court of Appeals for the Third Circuit
U.S. Court of Appeals for the Federal Circuit
U.S. District Court for the E. D. Pennsylvania
U.S. District Court for the M. D. Pennsylvania
U.S. District Court for the W. D. Michigan
U.S. Patent and Trademark Office

Education

Cornell University (BS, Mechanical Engineering-1972); Lehigh University (MBA-1976); Temple University (JD-1985).