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In developing a trial practice, impatience proved a virtue for intellectual property litigator John M. Desmarais. Desmarais joined the New York intellectual property firm Fish & Neave right out of law school. But after three years, he says, “I was becoming concerned that I was not getting enough courtroom training.” Rather than wait for his turn to get into court, Desmarais left Fish & Neave and became an Assistant U.S. Attorney in the Southern District of New York. He stayed there three years and handled 12 jury trials and one bench trial. He was first chair in all the trials, though for the first three he had a Senior Assistant U.S. Attorney in the courtroom as an observer. “After the first three, there was no babysitter.” All the trials involved felonies and included a wide range of alleged crimes, from narcotics, to racketeering, murder, kidnapping, bank robbery and fraud. “My second trial was an acquittal,” he notes. “All the rest were convictions.” When he returned to Fish & Neave, he was at a more senior level. But in the trials, he was second chair. “It was going to stay that way a long time. It would be another 15 years before I could be first chair,” he says. When Kirkland & Ellis approached him five years ago to join that firm, he decided to move. He realized, he says, “If I go to Kirkland, I can be first chair right now.” He is now a partner in the firm’s New York office. The switch, he believes, “was the greatest professional decision I ever made.” He began gaining more clients and becoming involved as lead counsel in an increasing number of significant patent and trademark disputes. In 1999, he won a jury verdict of $9.5 million for Lucent Technologies Inc. in a patent infringement claim against Newbridge Networks Corp. over data-networking patents. He won a summary judgment finding noninfringement on behalf of AlliedSignal in Florida over ground-proximity warning systems installed in aircraft cockpits. Then in 2001, Desmarais had what’s known in professional sports as a “career year.” In May, a jury in Virginia awarded his client Infineon Technologies A.G. $3.5 million in a fraud claim against Rambus Inc. The fraud charge had been a counterclaim by Infineon filed after Rambus had sued the other company for patent infringement on memory chip patents. Earlier, Desmarais had persuaded the court to dismiss all of the Rambus patent claims. Following the jury decision, the court ordered Rambus to pay all of Infineon’s attorney fees and entered an injunction against Rambus from suing Infineon again over particular product lines. In June, Desmarais won a $1.1 million verdict for Hermes International, the luxury goods retailer, over claims that a rival company had copied Hermes handbag designs. In December Desmarais won a defense of a patent infringement claim against Verizon, AllTel Corp. and other cellular service providers in a case in which the plaintiff was seeking $271 million in damages and an injunction. But the jury found no infringement and that the patent at issue was invalid. In 2001, Desmarais was also part of the Kirkland & Ellis team that won the reversal of a $63 million judgment against Osram Sylvania Inc. This spring, continuing his winning streak, Desmarais won the appeal of that $9.5 million Lucent Technologies verdict. The judge enhanced the verdict and added attorney fees, leaving the current award at $21 million and counting. The three-year stint in the U.S. Attorney’s Office was the key to his development as a trial lawyer, Desmarais believes. “I learned how to deal with jurors. I became very familiar with the federal rules of evidence and the application of the rules to trial work,” he adds. “If you work for a law firm right out of law school it’s hard to get contact with the court system. I was in court every day. I would be carrying 100 to 200 cases at any one time. It was like being an intern or a resident at a hospital.”

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