John Desmarais, Partner
Admissions & Qualifications
1989, New York
1989, District of Columbia
United States District Court in the Southern and Eastern Districts of New York
United States Courts of Appeals for the Second and Federal Circuits
U.S. Supreme Court
Registered to practice before the United States Patent and Trademark Office
New York University School of Law, J.D., 1988
Manhattan College, B.Ch.E., 1985, magna cum laude, Chemical Engineering Medal
John Desmarais is the founding partner of Desmarais LLP. After practicing in the area of intellectual property litigation and counseling for several years at Fish & Neave, in 1992, 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 Fish & Neave and to the practice of intellectual property litigation. In 1997, he joined the New York office of Kirkland & Ellis as a partner. From 2004-2009, he served as a member of Kirkland’s Firm Management Committee. After 13 years at Kirkland, in 2010, Mr. Desmarais left to found Desmarais LLP, an Intellectual Property trial boutique that specializes in jury trials and alternative fee structures.
Mr. Desmarais’s $1.5 billion win for Alcatel-Lucent against Microsoft resulted in one of the largest plaintiff’s jury verdicts 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.
On the defense side, Mr. Desmarais has secured defense verdicts in three of the Districts in the Eastern District of Texas (Marshall, Tyler and Sherman). For instance, most recently Mr. Desmarais defended Cisco against Virnetx in a jury trial in Tyler, Texas, on four VPN-related patents. After a five day trial, the jury found that none of Cisco’s products infringed any Virnetx patents. Intellectual Property, Fall 2013, ‘Trolling for Respect’.
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 (Marshall and Sherman). 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 Intellectual Property Asset Management (IAM) magazine as one of the top 50 individuals, companies and institutions that have helped shape the IP market over the past eight years. IAM Magazine, “The Players,” Issue 50, November/December 2011.
IAM Magazine also selected Mr. Desmarais in its IAM 250, “The World’s Leading IP Strategists,” 2011.
Mr. Desmarais and his firm were profiled by the American Lawyer Media Intellectual Property Magazine in Spring 2011 in “Back to Basics.”
Mr. Desmarais was selected as the 2012 New York City Litigation Patent Lawyer of the Year by The Best Lawyers in America (2012), 18th Edition.
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.”
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Desmarais, John [MC1985]
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