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James G. Gatto
Mr. Gatto created and is the leader of the firm's Social Media & Games team, leader of the Virtual Worlds and Video Games team and leader of the Open Source team. He leverages his unique combination of over 25 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. His areas of technical focus include computer software, social media, video games, social networks, virtual worlds, mirror worlds, augmented reality, user-generated content, location-based services, business methods, Internet and e-commerce technology, media, financial services, bioinformatics, personalized medicine, optics, and wired and wireless telecommunications.
He has extensive experience advising internet and social media companies on business and legal strategies relating to virtual goods and virtual currency, handling terms of service and end user license agreements, (e.g. for online games, video games, virtual worlds and mirror worlds), developing DMCA policies, handling DMCA enforcement, privacy and COPPA policies and much more.
Mr. Gatto has been in the intellectual property field since 1984, when he started as a Patent Examiner while attending Georgetown University Law School at night. Prior to joining our firm, Mr. Gatto headed the local IP practice for Mintz Levin's Reston and Washington offices, and was co-chair of the firm-wide IP Section. Prior to that, he co-founded and co-headed the National Patent Practice and Northern Virginia Technology Practice for Hunton & Williams, the then largest Virginia-based law firm.
Mr. Gatto is frequently invited to speak at leading business and legal conferences in the U.S. and internationally. He is a regular contributor to www.SocialGamesLaw.com, Pillsbury's blog that addresses business and legal issues that affect social media applications, technologies and business models. He has also appeared as a featured guest on Bloomberg television and the Fox Business Network, and has been quoted in popular internet news sites, such as CNN.com.
- Has handled Patent and IP-based sales involving tens of millions of dollars
- Assisted Activision on IP issues associated with its $100 million acquisition of the Guitar Hero franchise from Red Octane
- 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
- Advised StarMine LLC from its inception on IP issues and developed and implemented IP strategy through its sale to Thomson-Reuters, Inc.
- 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
- Obtained patent for and developed successful multi-million dollar licensing program for Information Planning Management Service, Inc.
- Managed internet portfolios and assisted in IP based sale of United Toll, LLC to a Roper Industries, Inc. entity
- Prevailed in a patent interference matter for a university professor for his Nobel-prize winning invention in the field of Chemistry
- 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 successfully defended two patent infringement lawsuits in the Internet coupon field and successfully enforced patent against a competitor in a third suit; then assist in sale of that business to Catalina Marketing Corp.
- 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
- Successfully represented a bioinformatics company in a patent infringement lawsuit involving Oxford Gene Technology patents relating to oligonucleotide arrays
- Developed a patent portfolio, which has been successfully enforced, for pioneering semiconductor technology relating to gallium nitride based blue LEDs and blue laser devices
- Chambers USA, Intellectual Property—Northern Virginia (2007-2012)
- Legal 500 US, Intellectual Property (2007-2012)
- IAM Strategy 250, Intellectual Asset Management Magazine (2011)
- Super Lawyers (2006-2008, 2010-2011)
- Greater Washington Legal Elite, SmartCEO Magazine (2010)
- Best Intellectual Property Author, Lexology Legal Writing Awards—US (2010)
- Legal Writing Awards Winner 2010 for Author of the Year, Intellectual Property USA
- Top IP/IT Attorneys in Virginia, Virginia Business Journal Survey
- DC Area's Go-To Attorneys, Washington SmartCEO
- Martindale-Hubbell, AV® Rated
- Managing Intellectual Property, IP Star (2013)