Notable Successes

Paul A. Bondor

The American Lawyer has recognized Desmarais LLP partner Paul Bondor as a 2022 Northeast Trailblazer for pursuing an intellectual property lawsuit in unfamiliar territory and walking away a winner.
 
“Exceptional litigation outcomes often require boldness and innovation. That was certainly true when I filed a high-stakes patent case in an unusual venue, resulting in a major payoff for my client and a satisfying victory over a formidable opponent,” Bondor told The American Lawyer. He added, “In my view, litigation should be treated as a puzzle, where you’re solving for the best possible outcome based on the options available and the most effective route to get there.”
 
Bondor's client had filed the lawsuit after a direct competitor, a much larger company in the industry, began infringing on its medical device patent. The client argued that the competitor was using its technology against it in the marketplace, which meant a quick court intervention was needed to halt lost sales and revenue.
 
But the Supreme Court’s 2017 TC Heartland decision had tightened venue rules, so Bondor had to file the case in a district where he knew it would not be transferred. Rather than going to a more common patent venue (e.g., Delaware, Texas, or California), Bondor chose the Western District of Tennessee, where the competitor’s relevant division was located. That allowed the case to progress swiftly. Even though the U.S. Patent and Trademark Office agreed to an inter partes review of the patent, the district court judge ruled that the case could still proceed (an increasingly uncommon ruling for a single-patent case). This meant after winning before the Patent Office, the case was nearly ready for trial in Memphis Federal Court. Before that could happen, Bondor and his team secured a series of significant motion-practice wins, which resulted in a rapid pre-trial settlement and licensing agreement in October 2021.
 
“This win signals to the IP industry that patent litigators can succeed in unfamiliar districts, and it shows why we shouldn’t automatically avoid these courts – done correctly, you can find victory there too,” Bondor told The American Lawyer.
 
Read The American Lawyer story

Paul A. Bondor