James Gatto

Sheppard, Mullin, Richter & Hampton LLP

$ $$$

Pennsylvania Avenue Northwest 2099
Washington 20006 DC US

James G. Gatto is a partner in the Intellectual Property Practice Group in the firm’s Washington, D.C. office. He is also Team Leader of the firm’s Blockchain Technology and Digital Currency team, and its Social Media and Games industry team. He also is Team Leader of the firm’s Open Source team.

Mr. Gatto leverages his unique combination of nearly 30 years of IP experience, business insights and attention to technology trends to help companies develop IP and other legal strategies that are aligned with their business objectives. His practice focuses on all aspects of intellectual property, internet and technology law, including patent, trademark, copyright, trade secret and open source.

Mr. Gatto advises clients of all sizes (start-ups to Fortune 100 companies) on key legal and business issues relating to the use of social media, video games, social games and online gambling (gamblification), virtual goods and currency, social networks, virtual worlds, mirror worlds, augmented reality, open source user-generated content, location-based services and gamification.

He has extensive experience advising internet and social media companies on business and legal strategies relating to virtual goods and virtual currency, developing IP protection and monetization strategies, handling terms of service and end user license agreements, development, licensing and partnership agreements, developing DMCA policies, handling DMCA enforcement, privacy and COPPA policies and much more.

Mr. Gatto’s practice is national and international, and it encompasses a full range of IP and technology issues, including:

  • patent, trademark, copyright and trade secret litigation;
  • counseling and technology transactions; developing and implementing IP strategies to protect and to monetize IP assets;
  • creating and implementing corporate IP programs;
  • conducting IP audits;
  • conducting complex patent prosecution, including patent appeals, interferences, Inter Partes Review (IPRs), reissues and protests;
  • handling patent enforcement issues, including licensing and litigation;
  • negotiating and drafting technology agreements;
  • conducting IP due diligence in and negotiating IP aspects of mergers, acquisitions and financings;
  • rendering opinions concerning the infringement, validity and enforceability of patents;
  • handling trademark prosecution, domain name, copyright and trade secret matters;
  • handling IP aspects of employment issues;
  • advising clients on legal issues associated with open source software including open source patent issues, licensing, open source compatibility issues, indemnity issues and developing and implementing corporate policies on use of open source software;
  • advising clients on the legality of cutting edge Internet business methods and technology; and
  • advising clients on computer law issues such as computer fraud and abuse and SPAM-related issues.

Education:

  • J.D., Georgetown University Law Center, 1988
  • B.E., Electrical Engineering (with Physics minor), Manhattan College, 1984

Admissions :

  • Commonwealth of Virginia
  • District of Columbia
  • U.S. Court of Appeals for the Federal Circuit and the Court of Federal Claims
  • U.S. District Court for the District of Columbia
  • U. S. Patent and Trademark Office

Experience:

  • Represented Catalina Marketing in their acquisition of Modiv Media. The deal involved an acquisition and strategic integration of Modiv’s mobile and digital technology to supplement Catalina’s bricks and mortar-based targeted marketing infrastructure.
  • Assisted VoiceBox Technologies Corp. by securing dozens of patents to protect its award-winning contextual voice technology. VoiceBox was recently named in the IEEE’s Patent Power 2013 Scorecard, an independent industry evaluation of the best patent portfolios conducted by the research firm 1790 Analytics.
  • Has successfully assisted Playfish in shutting down unauthorized secondary markets for its virtual goods and currency
  • Co-lead trial team for Computer Associates, Inc. in a matter involving the divestiture of an open source software product prevailing on all substantive issues and obtaining an award of attorney’s fees
  • First chaired team that obtained preliminary and permanent injunction on behalf of financial services company for a business method patent relating to the municipal bond industry
  • First chaired team that successfully sued the United States Government under 28 U.S.C. § 1498 for patent infringement in the Court of Federal Claims
  • First chaired team that, in a declaratory judgment action filed against a California company in Asheville, NC, obtained summary judgment of infringement, validity and enforceability on behalf of a patent owner
  • Developed a patent portfolio, which has been successfully enforced, for pioneering semiconductor technology relating to gallium nitride based blue LEDs and blue laser devices

Memberships:

  • American Bar Association—Vice-Chair, Section of Science & Technology Law, Virtual Worlds and Multi-User Online Games; Patent, Trademark and Copyright Committee; Section of Intellectual Property Law—Special Committee on Computer Gaming
  • International Technology Law Association—Chair, Social Media & Games Committee
  • Association of Virtual Worlds—Advisory Board Member; Chair of Legal Committee
  • American Intellectual Property Law Association—Chair, Open Source Subcommittee; Electronic and Computer Law Committee; Patent Law Committee; Emerging Technology Committee
  • Patent Lawyers Club of Washington (Past President)
  • Intellectual Property Owners (IPO)—Open Source Committee
  • District of Columbia Bar—Arts, Entertainment, Media & Sports Law Section

Cost

Rate : $$$$

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Pennsylvania Avenue Northwest 2099
Washington 20006 DC US
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Broadway 42
New York 10006 NY US
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