John M. DiMatteo Partner MAIN OFFICE: New York Willkie Farr & Gallagher LLP 787 Seventh Avenue New York, N.Y. 10019-6099, U.S.A. T 212-728-8299 F 212-728-9299

John M. DiMatteo is Chair of the Intellectual Property Department and a partner in the Litigation Department of Willkie Farr & Gallagher LLP in New York.  Mr. DiMatteo specializes in patent litigation, trade secret litigation, patent prosecution, trademarks, and IP licensing.

Chambers USA (2008) ranks Mr. DiMatteo among the leading individuals practicing in the area of intellectual property law in New York.

Mr. DiMatteo is a member of the American Intellectual Property Law Association, the American Bar Association, the Institute of Electrical and Electronics Engineers, and the Association for Computing Machinery.

Mr. DiMatteo is a Registered Professional Engineer, State of New York (1989) and a Registered Patent Agent, United States Patent and Trademark Office (1987).

Prior to joining Willkie, Mr. DiMatteo was a partner at Patterson, Belknap, Webb & Tyler LLP, a senior associate at EGLI Patentwälte, and an associate at Morgan & Finnegan.  He also served as a computer engineer in the Research and Development Department of Triquest Corporation and as a project engineer for Baldwin & Cornelius, P.C.

Patent Litigation

• Currently representing leading manufacturer of LEDs in defense of a claim of patent infringement.  Case is currently pending in EDTX.
  
  
• Currently defending a large health care corporation against a claim for infringement asserted against the corporation’s computer security system.  After a favorable claim construction, the plaintiff stipulated to non-infringement.  Case is currently on appeal to the Federal Circuit.
  
  
• Currently representing a leading manufacturer of high-pressure mercury-vapor lamps in asserting its patents against a Japanese company accused of infringement.   The Federal Circuit, reversed summary judgment finding of no infringement and trial is expected in early 2008.
  
  
• Currently representing a major medical device manufacturer in defending its catheter designs from a claim of patent infringement.  The case is currently on appeal to the Federal Circuit.  A separate interlocutory appeal to the Federal Circuit decided in our favor that plaintiff’s corresponding foreign patents should not be tried in a U.S. district court.
  
  
• Successfully represented a semiconducter manufacturer of a VLIW microprocessor in defense of a patent infringement claim filed in the International Trade Commission.  Case was tried in January 2007 with a finding of no infringement, invalidity and inequitable conduct.
  
  
• Successfully represented a European manufacturer before the International Trade Commission in asserting multiple patents relating to mechanically locking floor panels against numerous Asian and European importers.  The ITC found all asserted patent claims to be valid and infringed, and issued a general exclusion order precluding any importation of infringing products.
  
  
• Successfully represented a leading manufacturer of Automatic External Defibrillators (“AEDs”) in asserting its patents against an accused infringer and defending against a counter claim for infringement.  The case -- involving over 20 patents -- recently settled on the courthouse steps with a favorable result for our client.
  
  
• Successfully defended a leading manufacturer of electric shavers in defense of a claim for patent infringement.  Motion for summary judgment of non-infringement was granted and affirmed by the Federal Circuit.
  
  
• Successfully represented a major medical device manufacturer in defending against claims of theft of trade secret and patent infringement.  Motion for summary judgment of no trade secret violation was granted and affirmed by the Court of Appeals for the Sixth Circuit.  Plaintiff dismissed with prejudice its patent claims in view of our summary judgment of invalidity.
  
  
• Successfully defended a European manufacturer and two of its licenses before the International Trade Commission (ITC) against claim for infringing three patents relating to methods and apparatuses for mechanically locking floor panels.  ITC properly construed claims as not covering clients’ products. The case was affirmed by the Court of Appeals for the Federal Circuit.
  
  
• Successfully represented a major electronics company in federal district court in asserting patents relating to fundamental integrated circuit communication protocol against numerous chip manufacturers.  Case settled with client being awarded significant past damages and licensing fees going forward. 
  
  
• Successfully represented a leading manufacturer of sonic toothbrushes in asserting its patents against an accused infringer.  The case settled favorably for our client.
  
  
• Defended a European equipment manufacturer before the ITC and in federal district court against a claim for infringing a patent relating to high-speed sorting equipment.  Resulted in a limited exclusion order allowing client to continue to import products to its major U.S. customer.  The case concluded with a favorable settlement.

• Represented major electronics company in complex patent interference relating to the single chip computer.

 Trade Secret Litigation

• Successfully defended large medical device manufacturer in defense of a theft of trade secrets claim filed by a practicing physician.  Summary judgment of no theft was affirmed by the Sixth Circuit.
  
  
• Successfully represented a large consumer products company in asserting claim for theft of trade secrets and copyright infringement of computer software.  After protracted litigation the defendant conceded liability and the case was settled favorable for our client.
  
  
• Successfully defended manufacturer of electronic shavers against  claim for theft of trade secrets.  Prevailed upon plaintiff to voluntarily withdraw complaint filed in federal district court.
  
  
• Successfully defended European manufacturer of roller coasters against claim of theft of trade secrets.  Prevailed upon plaintiff to voluntarily withdraw complaint filed in federal district court.

• Represented various U.S., European, and Asian companies in complex patent reissue, reexamination, and continuation applications.

Trademarks

• Represented major lighting manufacturer in obtaining trademark for the color green as applied to light bulbs.  Registration allowed company to maintain its exclusive rights to this valuable mark.

IP Licensing

• Represented major lighting manufacturer in obtaining trademark for the color green as applied to light bulbs.  Registration allowed company to maintain its exclusive rights to this valuable mark.