Ten Pillsbury Partners Recognized as IP Stars
James G. Gatto
Jim Gatto created and is the leader of the law firm's Social Media & Games team and leader of the Open Source team. He 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 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'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.
Over the years he has had leading roles in a number of national and local legal and technology-related industry organizations. Mr. Gatto is frequently invited to speak at leading business and legal conferences in the U.S. and internationally. Mr. Gatto mentors many start-ups, directly and through some leading accelerators such as Founders Institute, Yetizen and Northern VA Tech Council’s FastTrac. He is a regular contributor to 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.
- Has handled Patent and IP-based sales involving hundreds 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 assisted 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 (2007-2013)
- Legal 500 US, Patent Licensing & Transactional and Patent Prosecution (2007-2013)
- IAM Strategy 250, Intellectual Asset Management Magazine (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
- Managing Intellectual Property, IP Star (2013)
- Martindale-Hubbell, AV® Rated
- Super Lawyers (2006-2008, 2010-2014)