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

Mr. 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, complex patent prosecution, trademarks, trade secrets, copyrights, and IP licensing.

Chambers USA (2012) again ranks Mr. DiMatteo among the leading individuals practicing in the area of Intellectual Property (Patent) Law in New York, praising him as "an extremely able and impressive trial lawyer."  Earlier editions of Chambers USA have recognized him as a "skilled strategist able to connect with juries because he's down to earth” and a “technical genius who impresses with his sharp mind, quick strategic thinking and ability to solve problems effectively.”  He was also named to the 2012 BTI Client Service All-Star Team, an elite group of attorneys recognized by leading corporate counsel for delivering superior client service, and was ranked as a "Litigation Star" in Benchmark Litigation (2013).

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

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

Patent Litigation

• Lead trial counsel for Cox Communications and CableOne in defense of a claim of patent infringed brought by British Telecommunications involving patents directed to voice-over-IP, set-top box security, and network monitoring. The case is currently pending in the District of Delaware.
  
  
• Lead trial counsel for Arkema Inc. in a declaratory judgment action seeking to invalidate patents directed to 1234yf, a hydrofluorocarbon used in refrigeration. The case is currently pending in the Eastern District of Pennsylvania.
  
  
• Lead trial counsel for Starhome Inc. in asserting its patents to cell roaming technology against AT&T, T-Mobile and Roamware. The case is currently pending in the District of Delaware.
  
  
• Lead trial counsel for Fred Bassali in his claim to inventorship of the basic radio frequency patents used in universal garage door openers. The case is pending in Western District of Michigan.
  
  
• Lead trial counsel for a Bloomberg L.P. in defense of a patent infringement action relating to data compression technology. The case is pending in the Southern District of New York.
  
  
• Lead trial counsel for Unilin B.V. in enforcing an earlier obtained General Exclusion Order from the ITC.
  
  
• As lead trial counsel for Philips Lighting N.V., successfully asserted client’s pioneering patent for ultra-high pressure mercury vapor discharge lamps against a Japanese competitor’s infringing product. A jury awarded over $40 million in damages. A very favorable settlement for our client was reached two days after oral argument before the Federal Circuit.
  
  
• As lead trial counsel for LumiLEDs, successfully moved to disqualify patentee’s lead counsel and sought reexamination based on anticipating prior art. Client thereafter received a very favorable settlement.
  
  
• As lead trial counsel, successfully defended Johnson & Johnson against a claim for infringement asserted against their proprietary computer security system. After a favorable claim construction in district court, the plaintiff stipulated to non-infringement and appealed. The Federal Circuit affirmed our claim construction and the stipulation of non-infringement.
  
  
• As lead trial counsel, successfully represented NXP Semiconductors in defense of a patent infringement claim filed at the International Trade Commission against NXP’s TriMedia VLIW microprocessors. After a two-week trial the ALJ found no infringement, the patent invalid, and that the patentee committed inequitable conduct.
  
  
• As lead trial counsel, successfully represented Unilin B.V. 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. On appeal, the Federal Circuit affirmed infringement, validity, and the general exclusion order.
  
  
• As lead trial counsel, successfully represented Heartstream, 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 -- settled on the courthouse steps with a favorable result for our client.
  
  
• As lead trial counsel, successfully defended Philips Electronics Norelco shavers in defense of a claim for patent infringement. Motion for summary judgment of non-infringement was granted by the district court and affirmed by the Federal Circuit.
  
  
• As lead trial counsel, successfully defended Unilin B.V. and two of its licensees 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.
  
  
• As lead trial counsel, successfully represented Philips Semiconductors 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.
  
  
• As lead trial counsel, defended Vanderlande Industries B.V. 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.

Patent Interferences

• Represented Philips Electronics and Gil Hyatt company in complex patent interference relating to the single chip computer.

• Currently representing Bloomberg L.P. in its fair use defense to claims brought by Swatch Ltd for copyright infringement. The case is currently pending in the Southern District of New York.

Trade Secret Litigation

• As lead trial counsel, successfully represented Cordis Corporation 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 represented Philips Electronics 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.

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

Trademarks

• Represented Philips Lighting N.V. in obtaining a trademark for the color green as applied to low mercury fluorescent light bulbs. Registration allowed company to maintain its exclusive rights to this valuable mark.

• Consulted with semiconductor company in enforcing and enhancing its licensing program directed to a well adopted industry standard for integrated chip communications.
  
  
• Consulted with leading flooring company to help develop an international licensing program for the rights to its pioneering floor joint technology.
  
  
• Consulted with leading medical company in licensing its AED technology.
  
  
• Consulted with international medical device manufacturer in licensing cardiovascular and orthopedic medical device technology.
  
  
• Consulted with international lighting company in licensing key LED technology to the lighting industry.