Three years after leaving Kirkland & Ellis to start the patent licensing company Round Rock Research LLC, John Desmarais stepped down as the company’s CEO. Desmarais made the move in November, but it had not been previously reported.
 
In a conversation with the Litigation Daily, Desmarais explained that he’s still the sole owner of Round Rock, but he wants to devote himself to Desmarais LLP, the law firm he founded to represent Round Rock and others in litigation. “In the early days of this venture it was easy to do both,” he said. “But my first love is being a jury trial lawyer.”
 
Desmarais chose Gerald deBlasi to replace him as Round Rock’s CEO. The two men first worked together as associates at Fish & Neave. DeBlasi then worked in-house at a series of tech companies, including AT&T Inc. and the former Lucent Technologies Inc., and most recently at tech advisory firm IPValue, where he was the director of licensing. DeBlasi initially joined Round Rock as a vice-president more than a year ago.
 
Desmarais opened Round Rock in January 2010 with a portfolio of 4,500 patents that he acquired from computer chip maker Micron Technology Inc., and shortly thereafter founded Desmarais LLP. (We wrote at length about his career switch here.) The law firm now has five partners and 20 associates and of counsel.
 
Desmarais’s unusual dual roles at Round Rock and Desmarais LLP had come under attack in an infringement case that Round Round brought against Dell Inc. As we previously reported here, Dell tried to get Desmarais LLP effectively disqualified from the case, arguing that the entire firm should be barred from accessing confidential discovery material. Because of his dual positions at the law firm and Round Rock, Desmarais had consented to protective orders barring him from accessing Dell’s confidential business information. But Dell argued that wasn’t good enough—it wanted the protective orders to apply to the whole firm.
 
The U.S. Court of Appeals for the Federal Circuit rejected Dell’s argument in a ruling last October. Although Dell lost, the case showed how Desmarais’s role as a lawyer could be limited in cases where he simultaneously represented Round Rock and served as its CEO.
 
Desmarais said the Dell challenge didn’t cause him to step away from running Round Rock. “We won that argument in the Federal Circuit,” he said. “I think that issue was put to rest.” He added: “It really had to do with the fact that Desmarais LLP has been really successful with its development and this has become a full-time job. It had become too difficult to give Round Rock the attention it deserved.”
 
Round Rock, which is one of the larger of the so-called “non-practicing entities,” has also brought patent infringement suits against HTC Corporation over smart phone technology and against Oracle Corporation over server technology. Desmarais LLP—which only takes cases for a contingency or fixed fee—has moved beyond just representing Round Rock. The firm’s clients include other non-practicing entities, such as Oasis Research and Intellectual Ventures LLC, and it’s representing tech company EasyWeb in litigation against Facebook Inc. and Twitter Inc. In a January 29 ruling, a Federal Circuit panel sided with Oasis and Desmarais LLP in a venue dispute with EMC Corporation.
 
In addition, Desmarais LLP is handling a few defense-side cases for International Business Machines Corporation, Cisco Systems Inc., and Micron. Desmarais is preparing to defend Cisco in a March trial against infringement claims brought by VirnetX in Tyler, Texas.