"He is unbelievably engaging – not to mention brilliant."
Chambers & Partners USA 2017

Overview

Alan Grimaldi is a partner in Mayer Brown's Intellectual Property practice. Accomplishments include a jury verdict of non-infringement after a five week trial in the Federal court in Arizona. In addition, he obtained a $76 million judgment against the United States in a breach of contract case for a Midwestern banking client. At his former firm, he was co-chair of a 250 member intellectual property practice and was previously co-chair of that firm's commercial trial group.

He has extensive experience in patent and other intellectual property litigation, including mediation and arbitration, and has represented IP clients in the consumer goods, health care, chemical, electronics, automotive, banking, defense, energy & oil, and drug industries.

Alan has also had significant experience in all aspects of private and government antitrust and other complex commercial litigation including nationwide class action litigation, multi-district litigation in federal and state courts, federal and state administrative agency litigation, unfair competition, insurance coverage, products liability and litigation dealing with trade-related matters.

He was ranked in the 2014 edition of the IAM Patent 1000, which noted that Alan is an extremely popular lawyer whose "client-comes-first philosophy sets him apart." He was named Washington DC Patent Law Lawyer of the Year in the 2015 edition of Best Lawyers.

Alan clerked for the honorable Barrington D. Parker, US District Court for the District of Columbia from 1971-1972 and worked at the US Patent and Trademark Office from 1967-1971 (including clerkships to the Board of Appeals, Assistant Commissioner, and Office of International Affairs).

Spoken Languages

  • English

Experience

  • DuPont Air Products NanoMaterials v. Cabot Microelectronics. Member of trial team in this patent infringement case representing DA NanoMaterials of Tempe, Arizona, a joint venture between DuPont and Air Products. DA NanoMaterials originally brought suit in federal court in Phoenix, Arizona for declaratory judgment of invalidity and non infringement of several Cabot Microelectronics patents after Cabot had threatened DA Nano with claims of infringement. Cabot unsuccessfully counterclaimed and alleged and argued infringement and willful infringement of four patents. The team secured a declaratory judgment of non-infringement of all asserted claims on all four patents at issue. The jury also found no infringement under the doctrine of equivalents and no willful infringement. The Federal Circuit affirmed the jury verdict.
  • U.S. Philips Corp. v. ATI Technologies, Inc. (S.D.N.Y.). Represented Philips (on behalf of NXP) against ATI for infringement of a patent essential to the practice of the l2C bus specification. The case was settled on behalf of NXP for a substantial confidential payment.
  • Fifth Third Bank. Represented Fifth Third Bank in a breach of contract case brought against the government for client Fifth Third Bank. Two trials over five weeks and two appeals. Was lead counsel in securing a $76 million judgment for our client. This Court had never awarded more than $75,000 for any plaintiff against the government.
  • SPA Syspatronic v. United States. Represented NXP Semiconductor and Gemalto Inc. with respect to SPA's claim of patent infringement against the U.S. Government in its use of ePassports and secure ID cards for sensitive government employees. The patent at issue relates to electronic security measures on semiconductors used in such products.
  • Impulse Technology, Ltd. v. Microsoft et al., Civil Action No. 1:11-cv-00586-GMS (D. Del.). Representing Impulse in assertion of seven patents against nine videogame makers for the Microsoft Kinect videogame system related to interactive exercise gaming technology.
  • Masimo Corp. v. Philips Electronics North America Corp., Civil Action Nos. 1:09-cv-00090-LPS-MPT, 11-742-LPS-MPT. Representing Philips in two patent infringement cases on pulse oximetry algorithms involving 27 patents, fraud and antitrust counterclaims, and $1 Billion in claimed damages. Successfully narrowed the case to two patents and obtained a summary judgment of no willful infringement.
  • In Re Neurografix (D. Mass.). Numerous pending cases alleging infringement of patents related to MRI’s.

Education

The Catholic University of America, Columbus School of Law, JD, Catholic University Law Review, Editor (1969-1971)

The City College of The City University of New York, BS, Chemical Engineering

Admissions

  • Maryland
  • District of Columbia

Court

  • US Supreme Court
  • US District Court for the District of Columbia
  • US Court of Appeals for the First Circuit
  • US Court of Appeals for the Third Circuit
  • US Court of Appeals for the Fourth Circuit
  • US Court of Appeals for the Sixth Circuit
  • US Court of Appeals for the Ninth Circuit
  • US Court of Federal Claims
  • US District Court for the District of Maryland
  • US Patent and Trademark Office
  • Chambers & Partners USA – Washington DC: Intellectual Property: Litigation– 2015 – 2016
  • IAM Patent 1000 – DC Metro Area – 2013 – 2016
  • Managing Intellectual Property – IP Star – 2013 - 2016
  • Washington DC Patent Law Lawyer of the Year, Best Lawyers – 2015
  • Washington Post Best Lawyer’s for Washington DC & Baltimore – 2014
  • Super Lawyers – 2013 – 2016