"He is unbelievably engaging – not to mention brilliant."Chambers & Partners USA 2017
Alan Grimaldi is a partner in Mayer Brown's Intellectual Property practice and is the former co-leader of the practice. 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. 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.
He has extensive experience in both offensive and defensive patent and other intellectual property litigation, including mediation and arbitration, and has represented IP clients in the consumer goods, smartphone, 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.
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).
- Maxell, Ltd. v. ZTE Corporation et al. (E.D. Tex. 2018) – Part of the trial team that recently secured a $43.3m verdict in July 2018 in patent enforcement action involving wireless technology–smartphone applications and infrastructure.
- U.S. Philips Corp. v. LG Electronics, et al. (S.D.N.Y.) Represented Philips in the US arm of worldwide litigation against LG for infringement of patent essential to the JPEG compression standard, working with multiple international law firms to coordinate litigations in several jurisdictions, including Korea, the Netherlands, Germany, the United Kingdom and France. (eight figure settlement was achieved).
- U.S. Philips Corp. v. Pantech Wireless, Inc. (E.D. PA) Represented Philips in the US arm of worldwide litigation against Pantech Wireless for infringement of a patent essential to the JPEG image compression standard. Argued claim construction hearing in the Eastern District of Pennsylvania, which led to a worldwide seven figure settlement.
- U.S. Philips Corp. v.Palm, Inc. (N. D. Cal.) Represented Philips in assertion of patent essential to JPEG compression standard, accusing Palm’s mobile phones of infringement. Resulted in favorable seven figure settlement after mediation.
- 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 seven figure 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.
- Impulse Technology, Ltd. v. Microsoft et al., Civil Action (D. Del.). Represented Impulse in assertion of seven patents against nine videogame makers for the Microsoft Kinect videogame system related to interactive exercise gaming technology.
- Impulse Technology, Ltd. v. Nintendo of America, Inc. et al. (N.D. Ohio), Impulse's patent covers a system for measuring physiological exertion. We were lead counsel against seven video game makers. The matter involved Nintendo's Wii console and hardware devices, as well as fitness/exercise/dance-related games for the Wii made by both Nintendo and six other game manufacturers that measure physiological exertion.
- 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. The team secured jury verdict 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.
- EcoServices, LLC v. Certified Aviation Services, LLC (Central District of California). Co-counsel for the defendant, Certified Aviation Services, LLC, in a recent jury trial involving patent infringement matter between competitors in the aircraft engine wash industry. Matter is currently on appeal.
- In Re Neurografix (D. Mass.). Numerous cases alleging infringement of patents related to MRI's. Matter was settled after mediation.
- Masimo Corp. v. Philips Electronics North America Corp., Civil Action Nos. 1:09-cv-00090-LPS-MPT, 11-742-LPS-MPT. Represented Philips in two patent infringement cases on pulse oximetry algorithms involving 27 patents, fraud, and antitrust counterclaims and $1 Billion in claimed damages. After a jury trial in Delaware, the matter was settled which included business transactions.
- Numerous defensive cases for Philips over a 15 year period.
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
- US Court of Appeals for the First Circuit
- US Court of Appeals for the Fourth Circuit
- US Court of Appeals for the Sixth 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, 2020
- 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