Desmarais

Firm overview:

Intellectual property specialist Desmarais was founded in June 2010 with three partners, a secretary and a legal assistant. The firm now employs more than 80 lawyers across three US offices, continuing its robust trial practice, strong appellate practice, and successful IPR and ITC practices.

Operating from New York, San Francisco and Washington, DC, Desmarais focuses on the litigation of complex, often technology-driven disputes. The firm handles all stages of litigation and has successfully obtained trial results for its clients—both plaintiffs and defendants—in dozens of patent infringement cases, as well as cases involving other IP practice areas.

Desmarais has tried cases before juries and judges throughout the country, as well as before administrative bodies and arbitration panels. At the appellate level, the firm has briefed and argued cases before numerous appellate courts.

The firm’s attorneys have participated in more than 20 International Trade Commission (ITC) investigations, most of which have gone through an evidentiary hearing before one of the ITC’s Administrative Law Judges (ALJs). The firm’s lawyers are familiar with how those investigations interplay with district court and Patent Trial & Appeal Board (PTAB) proceedings.

Desmarais handles cases concerning technologies as diverse as semiconductors, telecommunications, software, consumer electronics, pharmaceuticals, medical devices, biotechnology, chemicals, and transportation.

Clients of the firm are leaders in a wide variety of industries, including Fortune 100 companies and smaller entities, including individuals.

Team overview:

Founding partner John Desmarais, “is probably the best that I've come across,” says a high-profile peer. “I haven't tried a case against John, but I've gotten right to the day before we picked a jury, and I've seen him in the courtroom—he's pretty impressive.”

John Desmarais is the founding partner of Desmarais. Before establishing the firm he practised IP litigation at Fish & Neave and Kirkland & Ellis. He was also an Assistant United States Attorney in the Southern District of New York, where for three years he tried criminal jury trials for the federal government. He specialises in jury trials for plaintiffs and defendants and focuses on alternative fee structures.

Key matters:

Litigation:

• Apple v Masimo et al, Case Nos. 1:22-cv-01377 and 1:22-cv-01378, US District Court for the District of Delaware, 2024

John Desmarais was lead counsel for Apple in its jury trial against Masimo in Wilmington, Delaware. Masimo was found to have wilfully infringed two Apple design patents for the Apple Watch and its charger.

Apple was represented by John Desmarais, Jordan Malz, Cosmin Maier, Kerri-Ann Limbeek, Jeffrey Scott Seddon II and Peter Magic of Desmarais; Jennifer Milici, Dominic Vote and Mark Ford of WilmerHale; and David Moore, Bindu Palapura and Andrew Moshos of Potter Anderson & Corroon.

Masimo was represented by Joseph Re, Stephen Jensen, Stephen Larson, Benjamin Katzenellenbogen, Edward Cannon, Brian Claassen, Jared Bunker, Mark Lezama, Kendall Loebbaka, Douglas Wentzel, Brian Horne, Adam Powell, Daniel Hughes and Carol Pitzel Cruz of Knobbe Martens; and John Phillips Jr and Megan Haney of Phillips McLaughlin & Hall PA.

• Ravgen v Natera, Case No. 1:20-cv-00692, US District Court for the Western District of Texas, 2024

Desmarais represented Maryland-based biotech firm Ravgen in a dispute over genetic prenatal screening methodology.

In 2020, Ravgen challenged Austin-based lab testing company Natera and its subsidiary NSTX over its genetic prenatal test Panorama, which uses non-invasive prenatal testing (NIPT) of blood in pregnant women to screen for common chromosomal conditions that affect a baby’s health.

Four years later, following a week-long trial in January 2024, a Texas jury found that prenatal screening technology owned by Natera infringed a patent held by Ravgen, awarding damages of $57 million. The  ordered to pay the damages, but conceded that there was no wilful infringement.

Desmarais’ partner Kerri-Ann Limbeek led the trial team for Ravgen, along with John Desmarais; other members of the team were Brian Matty, Ben Luehrs, Kyle Petrie, Joze Welsh, Jun Tong, Deborah Mariottini, Frederick Ding, Kevin Goon, and Gillian Moore.

Natera’s counsel was led by WilmerHale partner Michael Summersgill, along with partners Amanda Major, Jordan Hirsch and Robert Gunther, and counsel Harry Hanson.

• Certain Automated Put Walls and Automated Storage and Retrieval Systems, Associated Vehicles, Associated Control Software, and Component Parts Thereof, Investigation No. 337-TA1293, US International Trade Commission, 2023

Desmarais’ attorneys secured a victory at the ITC for warehouse automation firm OPEX Corporation, after conducting a one-week evidentiary hearing that resulted in a complete victory for the client.

The ITC found that the competitors infringed the patented technology embodied in its industry-leading Sure Sort product line. OPEX alleged that HC Robotics, based in Hangzhou, China, was importing warehouse automation systems through Pennsylvania-based distributor Invata, which infringed its patents.

OPEX was represented by Paul Bondor, Goutam Patnaik, David Shaw, Tuhin Ganguly and Jonathan Lewis of Desmarais. Invata and HC Robotics was represented by Andrew Riley, Lei Mei, Robert Hall, Guang-Yu Zhu and Jiwei Zhang of Mei & Mark.

Clients:

Apple, Alcatel-Lucent, Fraen, Calgon Carbon, Google, IBM, Kuraray, OPEX, Ravgen, Shionogi, 3Shape, ViiV Healthcare.