Desmarais LLP

Firm Details:

Partners: Steven M Balcof, Paul A Bondor, John M Desmarais, Bindu Donovan, Tuhin Ganguly, Yung-Hoon (Sam) Ha, Gabrielle E Higgins, Alan S Kellman, Todd L Krause, Kerri-Ann Limbeek, Peter C Magic, Cosmin Maier, Jordan N Malz, Brian D Matty, Jonas R McDavit, Lindsey E Miller, Alyssa B Monsen, Karim Z Oussayef, Tamir Packin, Goutam Patnaik, Jeffrey Scott Seddon II, David J Shaw, Leslie M Spencer, Justin PD Wilcox

Number of partners: 24

Number of lawyers: 76

Firm Overview:

Desmarais LLP is a leader in high-stakes patent litigation, particularly cases likely to go to a jury trial, for both patent owners and accused infringers. Founded in 2010, the firm has won numerous high-profile trials for those wrongfully accused of patent infringement, as well as vindicating the rights of numerous patent owners against infringers with substantial jury awards and judgments. The firm also handles significant appellate matters, having argued the appeal of numerous cases that have shaped the substantive direction and development of intellectual property law. Additionally, the firm has extensive experience and a consistent winning track record handling inter partes reviews before the Patent Trial and Appeal Board.

Innovative Fee Structures:

In addition to Desmarais LLP’s record of success, its flexible and innovative approach to fee arrangements sets it apart from other top-tier firms that handle the same types of large, complex litigations. The firm has abandoned the traditional (and frequently inefficient) billable-hour approach in favor of fee arrangements tailored to its clients’ interests. For clients who want predictability, the firm’s fee structures will accommodate a flat fee negotiated at the outset. For those interested in a shared-risk approach, Desmarais LLP is open to contingent fee arrangements and hybrid fee structures that meet the needs of its clients and the case.

Main Areas of Practice:

Intellectual Property Litigation

Patents

Trade Secrets

Unfair Competition

Antitrust

Trademarks

Copyright

Intellectual Property Litigation:

Desmarais LLP handles all stages of litigation, and the firm’s attorneys have significant trial experience in every major forum for technology disputes in the United States, including federal District Courts, the International Trade Commission (ITC), the Patent Trial and Appeal Board (PTAB), as well as private arbitration panels, both domestic and international.

Desmarais LLP and its lawyers are consistently recognized in industry publications as leaders in its areas of practice. In fact, the firm boasts an unparalleled deep bench of lawyers with real-world jury trial experience in the nation’s busiest districts for patent litigation. Likewise, at the appellate level, Desmarais LLP’s attorneys have successfully briefed and argued cases before numerous appellate courts, including the Court of Appeals for the Federal Circuit. Whether for jury trial, bench trial, or appellate argument, Desmarais LLP’s focused approach will bring a lean team of experienced and creative professionals dedicated to achieving client’s business goals.

Desmarais LLP’s practice centers on technology-related disputes. Attorneys have achieved successful trial results for firm clients in dozens of patent infringement cases, concerning technologies such as semiconductors, telecommunications and networking, computer software, consumer electronics, pharmaceuticals, medical devices, biotechnology, chemicals, and transportation.

On appeal, Desmarais LLP has preserved both offensive and defensive victories for its clients, obtained reversal of adverse results, and steered the development of substantive law in its clients’ interests. Desmarais LLP’s technology litigation expertise also extends well beyond patent infringement cases. The firm’s attorneys have successfully litigated a wide variety of technology-driven disputes centered on other causes of action, including antitrust, unfair competition, trade secret, fraud, and contract claims. Further, even beyond technology matters, the firm’s attorneys have also built a strong track record of litigation success in other IP areas, such as trademark, trade dress, and counterfeiting matters.

Clients:

Desmarais LLP represents a diverse set of clients, as both plaintiffs and defendants, in a wide variety of technology areas. Its clients include Fortune 100 companies that rely on the firm to protect their most important intellectual property assets, as well as to defend them against claims that jeopardize their critical business interests. In addition, Desmarais LLP represents smaller entities, including individuals, who seek to enforce the exclusive rights in their inventions or technology.

Representative Matters:

■ Ravgen, Inc. v. Laboratory Corporation of America Holdings, 6:20-cv-00969-ADA (W.D. Tex.): Won a $272.5 million jury verdict – and an additional $100 million in enhanced damages – for Ravgen against LabCorp in a patent infringement case involving non-invasive prenatal genetic testing technology

■ Egenera Inc. v. Cisco Systems Inc., 1:16-cv-11613-RGS (D. Mass.): Earned a jury verdict of non-infringement for Cisco Systems in a two-week trial that eliminated a $371 million damages claim; three years earlier the firm also won a complete defense verdict for Cisco in a three-day bench trial

■ ViiV Healthcare Co. v. Gilead Sciences, Inc., 1:18-cv-002224 (D. Del.): Secured a settlement in a patent infringement matter for ViiV Healthcare and Shionogi & Co. with a $1.25 billion upfront payment from Gilead plus a 3% royalty payment on future U.S. sales of Gilead's triple-drug HIV therapy, Biktarvy

■ XMTT, Inc. v. Intel Corporation, 1:18-cv-1810-RGA (D. Del.): Won a summary judgment ruling that eliminated all claims against Intel; the case had alleged nearly all of Intel’s desktop and mobile processors since 2012 infringed two XMTT patents related to computer memory architecture in hybrid serial and parallel computing systems

■ Certain Automated Put Walls and Automated Storage and Retrieval Systems, Associated Vehicles, Associated Control Software, and Component Parts Thereof, ITC Inv. No. 337-TA-1293: Secured a trial win for OPEX Corporation before the International Trade Commission where a judge ruled a competitor’s warehouse automation products infringed its patented Sure Sort product

■ Arista Networks, Inc. v. Cisco Systems, Inc., 5:16-cv-923-BLF (N.D. Cal.): Defended Cisco Systems in an antitrust matter, securing a $400 million payout from Arista to Cisco to settle the matter and to end separate patent infringement litigation

■ Straight Path IP Group Inc. v. Cisco Systems, Inc., 3:16-cv-3463-WHA (N.D. Cal.); 18-1492 (CAFC): Defended Cisco Systems in a $123 million patent infringement matter, winning a complete defense verdict on summary judgment, which was affirmed by the Federal Circuit; Desmarais LLP also secured $1.9 million in attorneys’ fees for Cisco

■ IBM Corp. v. Groupon, Inc., 1:16-cv-122-LPSCJB (D. Del.): Won an $82.5 million verdict for IBM after a jury found Groupon willfully infringed four patents; the verdict resulted in a $57.5 million settlement and licensing agreement

■ VoIP-Pal.com v. Apple, 18-cv-6216 (N.D. Cal.), 18-cv-6217 (N.D. Cal.): Following a successful stay and transfer of the original patent case, Desmarais LLP secured a complete dismissal of a $2.8 billion multi-patent suit against Apple on patent eligibility grounds, which was affirmed by the Federal Circuit; Desmarais LLP also achieved dismissal of a second related case involving four additional patents, which was also affirmed by the Federal Circuit

■ Avanos Medical Sales v. Medtronic Sofamor Danek USA, 2:19-cv-02754 (W.D. Tenn.): Achieved a favorable settlement for Avanos in a patent infringement matter following several pre-trial victories (in an IPR, on motions for summary judgment, IPR estoppel, and Daubert exclusion) and after defeating Medtronic’s motions (for summary judgment, motions to strike, Daubert motions, and for post-IPR claim construction). The win also produced just the second published decision applying IPR estoppel to system art, precluding its use at trial

■ Guardant Health, Inc. v. Keygene, N.V., ICC Arbitration Case No. 24039/MK: Represented Keygene, N.V. in an International Chamber of Commerce (ICC) arbitration involving DNA sequencing technology in the field of cancer diagnostics, which led to a favorable settlement that included the extension of a worldwide, non-exclusive license agreement

■ Parallel Networks Licensing v. IBM, 17-2042 (CAFC): Secured a complete defense victory for IBM on summary judgment against $100 million in patent infringement claims; the Federal Circuit affirmed the lower court’s verdict without opinion

■ Princeps Interface Technologies LLC v. Google LLC, 1:19-cv-01102 (D. Del.); Google LLC v. Princeps Interface Technologies LLC et al., 3:19-cv-6566 (N.D. Cal.): Defended Google and secured dismissal of plaintiff’s suit in the District of Delaware after Desmarais LLP identified defects in the plaintiff’s standing. In a follow-on declaratory judgment action filed by Google, Desmarais LLP secured dismissal of the patentee’s counterclaims of indirect and willful infringement, ultimately leading to resolution of the matter on favorable terms

■ Intuitive Surgical Inc. v. Auris Health Inc., 1:18-cv- 01359-MN (D. Del.): Defending Auris against patent infringement claims related to robotic surgical and medical procedures; Desmarais LLP has secured dismissal of three of eight originally asserted patents and won summary judgment against all of Intuitive’s lost-profits claims

■ Uniloc 2017 LLC v. Cisco Systems, Inc., 2:18-cv-00505-JRG (E.D. Tex.): Defended Cisco in a lawsuit involving alleged infringement of two patents, which resulted in Uniloc dismissing its case with prejudice after approximately a year of litigation

■ IBM v. Iancu, 18-1065 (CAFC): Secured two inter partes review (IPR) victories before the Federal Circuit, overturning the Patent Trial and Appeal Board’s invalidation of an IBM patent covering online user authentication technology

■ In re A.D.I: Earned a pro bono victory for a refugee from Ghana. Attorneys at Desmarais LLP successfully secured asylum for the immigrant, who was detained and faced deportation proceedings after he entered the country at the U.S.-Mexico border

■ In re J.V.P.Z: Achieved a pro bono win for an Ecuadorian immigrant fleeing religious violence in her country; the firm secured a guardianship to allow the client, a minor, to live in the U.S. with her father and an order stopping removal proceedings

Offices:

Contact: Jonas R McDavit (New York)

Tel: 212 351 3425

Email: [email protected]

Contact: Peter C Magic (San Francisco)

Tel: 415 573 1899

Email: [email protected]

Contact: Justin PD Wilcox (Washington, DC)

Tel: 202 451 4905

Email: [email protected]