Firm / Organisation

Desmarais LLP

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This content is provided by Desmarais LLP.

Partners: Paul A Bondor, John M Desmarais, Bindu Donovan, Alan S Kellman, Todd L Krause, Peter C Magic, Jonas R McDavit, Ameet A Modi, Karim Z Oussayef , Tamir Packin, Laurie N Stempler, Justin P D Wilcox
Number of partners: 12 Number of lawyers: 43

Firm Overview:
Desmarais LLP is a trial boutique focused on the litigation of complex, often technology-driven disputes. Its lawyers have successfully tried some of the most important intellectual property disputes in recent times, for some of the largest companies in the world. 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.

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
Trademarks
Unfair Competition
Trade Secrets
Copyright
Antitrust

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 administrative bodies (such as International Trade Commission) and arbitration panels. 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.
Desmarais LLP and its lawyers are consistently recognized in industry publications as leaders in its areas of practice. In addition, the firm boasts a deep bench of lawyers with realworld jury trial experience in the nation’s busiest districts for patent litigation. 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 extends well beyond patent infringement cases. The firm’s attorneys have successfully litigated a wide variety of technologydriven disputes, such as those involving 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 who rely on the firm to protect their most important intellectual property assets, and also 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:
■In re Certain Electronic Devices (ITC): After five-day trial, won initial determination on behalf of Nokia Corporation that HTC infringed two patents and secured a limited exclusion order barring HTC smartphones from entering the country
■Enzo Life Sciences, Inc. v. Affymetrix, Inc., No. 12-cv- 433-LPS (D. Del.); and associated cases: In coordinated patent infringement litigations brought by client Enzo Life Sciences, Inc. concerning nucleic acid labeling and detection technologies, obtained settlements and associated licenses involving payments to Enzo totaling over $90M
■Intellectual Ventures I LLC et al. v. Toshiba Corp. et al. (Delaware, February 2017): In a patent infringement case brought by client Intellectual Ventures involving Toshiba consumer electronic products, won jury verdict of patent infringement
■Arista Networks, Inc. v. Cisco Systems, Inc., 5:16-cv- 923-BLF (N.D. Cal.): Defend Cisco Systems in an antitrust matter, including winning a stay of the matter until resolution of other pending intellectual property actions
■IBM Corp. v. The Priceline Group et al., 1:15-cv-137- LPS (D. Del.): Represent Patentee IBM against Priceline and others, including overcoming a motion to dismiss IBM’s complaint on the basis of 35 U.S.C. § 101, and successfully defeating several summary judgment motions
■Straight Path IP Group Inc. v. Cisco Systems, Inc., 3:16-cv-3463-WHA (N.D. Cal.); 18-1492 (CAFC): Defend Cisco Systems in an patent infringement matter, winning a complete defense verdict on summary judgment, which was recently affirmed by the Federal Circuit
■IBM Corp. v. Groupon, Inc., 1:16-cv-122-LPS-CJB (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-6217 (N.D. Cal): Following a successful stay and transfer of the original patent case, Desmarais LLP secured a dismissal of a multi-patent suit against Apple on patent eligibility grounds
■Uniloc USA, Inc. et al v. Cisco Systems, Inc., No. 6:15-cv-1175 (E.D. Tex.) / Uniloc USA, Inc. et al v. Cisco Systems, Inc., No 2:17-cv-00527-RAJ: Defend Cisco Systems in a patent infringement matter, including winning a motion to transfer the case from the Eastern District of Texas to the Western District of Washington despite numerous previous and co-pending suits in the East Texas, and successfully staying the case pending resolution of IPRs
■Parallel Networks Licensing v. IBM, 2017-2042 (CAFC): Following a complete defense win for IBM on summary judgment, the Federal Circuit affirmed the District Court’s verdict without opinion
Key Clients: Acelity, Apple, Cisco, Cloud9, Eagle Pharma, Enzo, GSK, IBM, Intel, IV, KeyGene, Nokia, Sound View
Contact: Paul A Bondor
Tel: 212 351 3424 Email: [email protected]
Contact: Peter C Magic
Tel: 415 573 1899 Email: [email protected]