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John Desmarais “talk-fights” for a living. The 38-year-old IP litigator uses the talk-fight term to describe his work to his children, Julia, 5, and Jack, 7. Desmarais is a partner at the New York office of Chicago’s Kirkland & Ellis. In recent years, Desmarais has won several million-dollar talk-fights. Desmarais is probably best known for his successful defense of German memory-chip maker Infineon Technologies A.G. against rival chipmaker Rambus Inc. of Los Altos, Calif. In August 2000, Rambus sued Infineon in federal court in the Eastern District of Virginia for patent infringement. Infineon had refused to take a license for Rambus’ memory-chip technology. Infineon’s defense played off of what Desmarais portrayed as Rambus’ bad acts. In the early 1990s, Rambus was a member of the Joint Electron Device Engineering Council (JEDEC), which sets industrywide standards for memory chips. According to Infineon, Rambus amended its patent applications to conform to standards that had been set at a 1992 council meeting. This would have violated the council’s policy, which requires committee members to reveal whether any of their patents might impinge on proposed standards. At trial, industry experts testified that if they’d known Rambus was seeking patents on chips that fell within the standards, they would have pushed for different standards. In May 2001, U.S. District judge Robert Payne rejected Rambus’ infringement claims, and a week later, the jury handed Infineon a $3.5 million verdict. In June 2001, Payne ordered Rambus to pay Infineon’s attorney fees (in the $7 million range). And on Nov. 26, 2001, Rambus was permanently barred from suing Infineon for patent infringement. Litigation wasn’t always Desmarais’ dream. In high school he wanted to be a chemist, but his grades were low. A science teacher suggested chemical engineering as a more practical career option. However, when Desmarais was halfway through his undergraduate work in chemical engineering at Manhattan College, he had second thoughts. He was making good grades and wanted an advanced degree. So, Desmarais opted for law school. After graduating from New York University School of Law in 1988, Desmarais joined New York’s Fish & Neave. But he wanted to litigate. In 1991 he began work in the criminal division of the U.S. Attorney’s Office in New York. Desmarais was instantly gratified. After three weeks there, he landed a jury trial. Over the next four years he tried a mixed bag of small drug and theft cases, moving eventually to trials involving bank robberies, postal-truck hijackings, and the like. But the lure of patent litigation was strong. Desmarais left the U.S. Attorney’s Office in 1995 and joined New York’s Davis & Hoxie, Faithfull & Hapgood. To Desmarais’ dismay, the firm merged with San Francisco’s Orrick, Herrington & Sutcliffe three months later. Desmarais didn’t want to be part of a large, full-service firm, so he wound up back at Fish & Neave. Two years later, Kirkland & Ellis’ New York IP group made Desmarais an enticing offer. And in March 1997 he joined as a partner. Though the bulk of his cases involve high-tech matters, Desmarais recently got a taste of high fashion, when he represented Herm�s International SCA. For years, various boutiques had been openly selling copies of Herm�s’ Kelly bag, which acquired celebrity status when Princess Grace of Monaco was pictured carrying it to conceal her pregnancy. Herm�s had contacted a number of firms, but was always told that under the doctrine of laches, the infringement had gone unchallenged for too long to be stopped. Desmarais pointed out to Herm�s — and eventually to a federal judge in Manhattan — that in this case the infringement had been so blatant that laches would not hold up. But in order to pull off a case, Desmarais says, “we needed to prove that [the infringers] were bad actors.” Desmarais hired investigators to visit boutiques that sold the bags and make surreptitious video and audiotapes of clerks bragging about the copies’ high quality. The tapes worked: In 1998 Desmarais brought action for Herm�s against five companies. Three settled before trial. Desmarais won two other trials in July 1999 and June 2001. Both defendants subsequently settled instead of appealing. Desmarais understands more than just chips and bags. In 1999 he won a $9.6 million verdict for Lucent Technologies Inc. of Murray Hill, N.J., in federal court in Delaware. The case involved data transmission — a subject so complicated, he says, that “sometimes you’re shocked when the technology actually does work.” He adds, “I take my hat off to the people who invent this stuff.”

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