Professional Profile

John Desmarais is the founding partner of Desmarais LLP. From 1999-2009, he was a partner at Kirkland & Ellis LLP and served as a member of Kirkland's Firm Management Committee from 2004-2009. Mr. Desmarais obtained a degree in Chemical Engineering from Manhattan College and a law degree from New York University. After practicing in the area of intellectual property litigation and counseling for several years, he left private practice to serve as 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. After leaving the government, Mr. Desmarais returned to the practice of intellectual property litigation, and later joined Kirkland's New York office. Mr. Desmarais is a member of the bars of New York and Washington, D.C., the U.S. Supreme Court, the Federal Circuit Court of Appeals, and various other federal district courts and courts of appeal. Mr. Desmarais is also registered to practice before the United States Patent and Trademark Office.

Mr. Desmarais's $1.5 billion win for Alcatel-Lucent against Microsoft resulted in the largest plaintiff's jury verdict in a patent infringement action. This win has been profiled in the following articles: "Microsoft Hit With $1.52 Billion Verdict in MP3 Suit," The Wall Street Journal; "MP3 Patents In Upheaval After Verdict," The New York Times; "Microsoft Loses Music Patent Case," The Los Angeles Times; and "Microsoft Loses Big in MP3 Patent Suit," The Washington Post; "Practice Makes Perfect for These Hot Litigators," in The National Law Journal; and "B2B Takes on a Whole New Meaning" in The National Law Journal. Additionally, Mr. Desmarais was quoted in "This Verdict Made Jaws Drop," in The National Law Journal's profile of the top 100 verdicts of 2007.

Mr. Desmarais was quoted in "The Road Less Traveled," in the America Lawyer's "Taming Texas" cover story, which referred to his two recent defense jury verdicts in the Eastern District of Texas. Mr. Desmarais was quoted regarding the Charter Communications jury trial victory in "For a Litigator on a Streak, There's a Science to Winning," The Wall Street Journal.

Mr. Desmarais was quoted in "What Now for the USPTO's Rules on Continuations?" in Managing Intellectual Property, Dec. 2007/Jan. 2008, reporting on his success in obtaining an injunction against the PTO's proposed new patent rules.

Mr. Desmarais's win for Infineon Technologies AG, was featured in "Same Facts - Different Stories" from the March 2006 edition of The American Lawyer. His success was also profiled in Fortune, "A Hot Stock's Dirty Secret," Vol. 144, No. 1, Pg. 106, July 9, 2001. That article quotes some of Mr. Desmarais's key cross-examination and concludes that: "During the trial Rambus' lawyers were outmaneuvered at every turn by a team from the New York office of Kirkland & Ellis." Additionally, Mr. Desmarais was quoted regarding the Rambus case in the following articles: "A Fatal Paper Cut Ends Rambus's Case," The American Lawyer; "Claim Against Infineon Tossed," Richmond Times-Dispatch; "Rambus Is Ordered by Jury to Pay $3.5 Million to Infineon Over Patents," The Wall Street Journal; and "California-Based Chip Designer Rambus Found Guilty of Fraud in Patent Case," San Jose Mercury News. This case was also featured in the monthly "Deals & Suits" column in Corporate Counsel.

Mr. Desmarais's work on behalf of Verizon Wireless and several other cellular service providers was selected as Defense Verdict of the Week by The National Law Journal. The article is entitled "Company Loses $271 Million Claim Over Wireless Patents."

Mr. Desmarais was selected by Managing Intellectual Property Magazine as U.S. Intellectual Property Practitioner of the Year 2008. He was selected by National Law Journal's "Winning Section" in 2007 in "Hand Signals Work." He was selected by the American Lawyer for "45 Under Forty-Five: The Rising Stars of the Private Bar." He was selected as one of the 7 best IP trial lawyers in the IP Worldwide article, "The Magnificent Seven, IP's Best Young Trial Lawyers." He was also recognized as one of the most successful young litigators in America in The National Law Journal's "40 Under 40, A Look at Some of the Most Successful Young Litigators in America." The path towards his career as a Kirkland IP litigator was profiled in the IP Worldwide article, "IP Litigation Makes Desmarais a Happy Guy."

Each year since 2003, Chambers and Partners, publishers of the world-famous guides to law firms and lawyers, distinguishes Mr. Desmarais as "the best of the best" for intellectual property in both Chambers USA, America's Leading Lawyers for Business and Chambers Global, The World's Leading Lawyers. Chambers notes that Mr. Desmarais "enjoys an outstanding reputation as a hard-nosed warrior with 'great legal acumen.'"

Mr. Desmarais was featured in both "Young and Hungry," an article about the American Lawyer's 2008 IP Litigation Department of the Year, and in "Top Guns," an article about the American Lawyer's Litigation Department of the Year for 2008. Mr. Desmarais was featured in "Medically Devised," an article about the America Lawyer's 2006 IP Litigation Department of the Year. Additionally, Mr. Desmarais was mentioned in "Long-Term Sluggers," also a feature on the American Lawyer's 2003 IP Litigation Department of the Year.

Mr. Desmarais was profiled by The Journal News on April 2, 2003 in the article, "Chappaqua's Desmarais Defends Trademarks and High-Tech Patents."

Representative Matters

Representative Appellate Matters

Microsoft v. Alcatel-Lucent, sustained District Court judgment of validity and infringement by Microsoft of Alcatel-Lucent's patent, Federal Circuit, Summer 2009

GlaxoSmithKline v. The U.S. Patent Office, sustained an injunction against portions of the sweeping patent reform rules proposed for implementation by the PTO, Federal Circuit, Spring 2009

Cordis Corporation v. Boston Scientific and Boston Scientific v. Cordis Corporation, sustained a Boston Scientific patent infringement verdict, and reversed a district court judgment on Cordis' patent claims against Boston Scientific's Taxus Liberté® stent, Federal Circuit, Spring 2009

Alcatel-Lucent v. Microsoft and Dell Corporation, reversed the District Court's summary judgment against an Alcatel-Lucent patent on web-technology, Federal Circuit, Spring 2008

Forest Laboratories and Lundbeck v. Ivax and Cipla, sustained trial decision in favor of Forest and Lundbeck to protect the Lexapro® drug from generic competition, Federal Circuit, Summer 2007

Medtronic v. Boston Scientific, sustained summary judgment on Medtronic's stent design patents, Federal Circuit, Summer 2006

Cordis Corporation v. Boston Scientific, defeated a preliminary injunction request to stop the launch of the Taxus® Express, which later became the leading coronary artery stent in the world, Federal Circuit, Summer 2004

Representative Patent Trials for the Plaintiff

Alcatel-Lucent v. Microsoft, one of the largest patent verdicts to date, $512 million, San Diego, California, Winter 2008

Alcatel-Lucent v. Microsoft, another of the largest patent verdicts to date, $1.53 billion, San Diego, California, Winter 2007

Forest Laboratories and Lundbeck v. Ivax and Cipla, patent infringement judgment protecting multi-billion dollar drug Lexapro®, Wilmington, Delaware, Spring 2006

Boston Scientific v. Cordis Corporation, patent infringement liability verdict against Cordis' Cypher® stent, Wilmington, Delaware, Summer 2005

Lucent Technologies v. Newbridge Networks, patent infringement and damages verdict on five data-networking patents, Wilmington, Delaware, Fall 1999

Representative Patent Trials for the Defendant

Microsoft v. Alcatel-Lucent, complete defense verdict on five Microsoft patents relating to communications products, San Diego, California, Spring 2008

Dell Computer v. Alcatel-Lucent, complete defense verdict on two Dell patents relating to Web-based systems, Sherman, Texas, Winter 2008

Hybrid v. Charter Communications, complete defense verdict on four Hybrid patents relating to high-speed data networking over cable, Marshall, Texas, Summer 2007

Rambus v. Infineon Technologies, complete defense verdict on unclean hands and spoliation defenses, Richmond, Virginia, Spring 2005

MLMC v. Verizon Wireless, et al., complete defense verdict on two Harris patents to analog and digital cellular telephone equipment, Wilmington, Delaware, Fall 2001

Rambus v. Infineon Technologies, complete defense verdict on four Rambus patents and successful verdict on fraud counterclaim, Richmond, Virginia, Spring 2001

Representative Trademark Infringement Trials

Playboy Enterprises v. On-Line Entertainment, represented Playboy in a trademark jury trial in Eastern District of New York, Spring 2003

Hermes of Paris v. Lederer, represented Hermes in a trademark and unfair competition jury trial in Southern District of New York, Summer 2001

Hermes of Paris v. Pelle via Roma, represented Hermes in a trademark and unfair competition jury trial in Southern District of New York, Summer 1999

Numerous preliminary injunction and TRO hearings to protect Hermes designs and Playboy marks.

Memberships & Affiliations

American Bar Association

New York Bar Association

Federal Bar Council

New York County Lawyer's Association

New York Intellectual Property Law Association

Intellectual Property Owners Association

The Association of the Bar of the City of New York

International Trademark Association (INTA)

Other Distinctions

Awarded The Thurgood Marshall Award for Pro Bono Service in a Death Penalty Appeal by the Association of the Bar for the City of New York, July 2008

Director, Board of Directors of the Legal Aid Society, 2009

Publications

"State Responses to Leaking Underground Petroleum Storage Tanks," 1987 Annual Survey of American Law 731

Seminars

Panel Member on "Patent Jury Trials from Voir Dire to Verdict" at the 6th Patent Strategies Conference (October 2008)

Presented on "Current Issues in Hatch-Waxman ANDA Litigations" to the New Jersey Intellectual Property Law Association (NJIPLA) (March 2006).

Panel Member on "Due Deference? Claim Construction, The District Courts and The Federal Circuit" at the annual meeting of the New York Intellectual Property Law Association (NYIPLA) (March 2006).

Panel Member on "Keep It Real: Protect Your Brand's Integrity" at the 2nd Annual Anticounterfeiting Summit hosted by Harper's Bizarre magazine (February 2006).

Presented on "Patents and Industry Standards" at IPO Annual Meeting in Chicago (September 2003).

Guest speaker at MIT's Sloan School of Management on "Patents and Industry Standards" (March 2002).

Presented on "Developments in United States Patent Litigation Strategies" to the Pharmaceutical International Lawyers Legal Seminars (PILLS)(January 2000).

Presented on "Developments in United States Exhaustion Laws" to the Pharmaceutical International Lawyers Legal Seminars (PILLS) (January 1999).

Ran Round-Table on "Jury Trials of Trademark Cases" at the International Trademark Association (INTA) Annual Meeting (May 1998).

Prior Experience

Courts

United States District Court, Southern and Eastern Districts of New York and United States Court of Appeals, Second and Federal Circuits