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 (2009) ranks Mr. DiMatteo among the leading individuals practicing in the area of Intellectual Property (Patent) Law in New York.

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

• Lead trial counsel for a large manufacturer of LEDs in defense of a claim of patent infringement. Case is pending in the Eastern District of Texas.
  
  
• Lead trial counsel for an international lighting manufacturer in asserting its pioneering patent for ultra-high pressure mercury vapor discharge lamps against a Japanese company accused of infringement. A jury awarded our client over $40 million in damages. The case is pending on post trial motions in the Southern District of New York.
  
  
• Lead trial counsel for a manufacturer of medical systems in defense to claims of patent infringement asserted against our client’s MRI machines. The case is pending in the central district of California.
  
  
• Lead trial counsel for a major medical device manufacturer in defending its catheter designs from a claim of patent infringement. After the Federal Circuit denied plaintiff an injunction, the case is on remand in the Eastern District of Oklahoma.
  
  
• As lead trial counsel, successfully defended a large health care corporation against a claim for infringement asserted against the corporation’s 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 a semiconductor manufacturer in defense of a patent infringement claim filed at the International Trade Commission against our client’s 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 a European flooring 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. On appeal, the Federal Circuit affirmed infringement, validity, and the general exclusion order.
  
  
• As lead trial counsel, 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.
  
  
• As lead trial counsel, 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.
  
  
• As lead trial counsel, 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.
  
  
• As lead trial counsel, 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.
  
  
• As lead trial counsel, 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.
  
  
• As lead trial counsel, successfully represented a leading manufacturer of sonic toothbrushes in asserting its patents against an accused infringer. The case settled favorably for our client.
  
  
• As lead trial counsel, 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.