By Hannah Albarazi

Law360 (March 22, 2021, 7:09 PM EDT) --

Goutam "Gooch" Patnaik

Tuhin Ganguly

David Shaw

Three former Troutman Pepper Hamilton Sanders LLP partners have joined Desmarais LLP to launch its virtual presence in Washington, D.C., adding to a growing number of firms expanding their U.S. International Trade Commission practice to meet booming demand for ITC investigations in response to pandemic-induced backlogs in district courts.

Goutam "Gooch" Patnaik, Tuhin Ganguly and David Shaw all left Troutman for Desmarais with the goal of helping the New York City-based intellectual property boutique expand its patent-litigation-focused ITC and appellate practice areas.

John Desmarais, the founding partner of Desmarais LLP, told Law360 on Monday that "ITC investigations have been rising and will continue to do so for the foreseeable future because, compounding the already difficult circumstances involved in getting injunctive relief in the district courts, the addition of the COVID-19 lockdowns have led to a severe backlog in the district courts."

"So, their schedules are starting to get very extended, whereas the ITC provides a very fast timeline to an exclusion order to block infringing products from entering the country," Desmarais explained.

Desmarais' new, albeit virtual, D.C. office is being launched at a time when ITC investigations have increased by 15% from 2019 to 2020. The number of Section 337 investigations being filed over unfair trade practices went up from 54 to 62 in 2020, according to a February report published by California-based intellectual property firm Patexia.

Desmarais is among a handful of firms that are seeking a bigger piece of the growing ITC practice area pie.

For instance, attorneys at White & Case LLP and Winston & Strawn LLP who specialize in ITC litigation jumped to "virtual" law firms such as Rimon PC and FisherBroyles. Jenner & Block LLP last month announced the hiring of three partners from Goodwin Procter LLP and Oblon McClelland Maier & Neustadt LLP to lead its newly launched ITC practice in Washington, D.C.

Desmarais' newest partners, Patnaik, Ganguly and Shaw, have worked closely together for years.

In 2020, the trio worked together to nab a win for companies accused of importing car emissions filter systems that infringed Ingevity Corp.'s patented technology, with the ITC ruling that Ingevity's patent claims are invalid.

Patent litigator Patnaik, who recently served as president of the International Trade Commission Trial Lawyers Association, told Law360 on Monday that Desmarais is getting ready for the post-COVID-19 era.

"When COVID restrictions are fully relaxed, there will be pent up demand for patent trials across multiple venues," Patnaik said. "We, like many patent litigation practices, will have to juggle competing needs when those trials finally get scheduled in conjunction with building our ITC practice."

"Desmarais LLP has already demonstrated the ability to succeed when handling multiple trials in a short amount of time, as we have been able to do in recent years at the ITC," Patnaik said.

He said the trio is excited to help Desmarais "navigate the accelerated proceedings of the ITC."

Shaw, a patent litigator who began his legal career at a boutique firm before transitioning to BigLaw for nearly a decade, told Law360 he's "excited to revisit the entrepreneurial spirit of a boutique firm, and meet the challenge of helping build both a D.C. office and an ITC Section 337-focused practice group that live up to the established standard of excellence for the Desmarais brand."

Describing the challenges ahead, Shaw said, "Unsurprisingly, we've seen an increasing backlog of cases that are ready for trial, but have not yet been tried in court due to the pandemic. As things hopefully return to normal, clients will need to increasingly rely on counsel who can efficiently try a number of cases in a relatively short period while simultaneously continuing to move forward in cases that are at an earlier stage, such as fact discovery." 

Patent litigator Ganguly has been busy representing Tela Innovations in its ITC fight with tech heavyweights Acer Inc., Intel Corp., Lenovo Inc., and others. The ITC is investigating Tela's complaint alleging its rivals are illegally importing integrated circuits into the U.S. that infringe a Tela patent.

The three litigators left 1,200-attorney firm Troutman Pepper Hamilton Sanders LLP less than a year after a merger between Pepper Hamilton and Troutman Sanders, opting instead for the far younger and far smaller Desmarais firm.

Desmarais said the firm, which he founded in 2010 and which now has over 60 attorneys, has been looking for litigators with ITC expertise in D.C. for some time. He said when Desmarais partner Justin Wilcox relocated to the D.C. area amid the COVID-19 pandemic, "the timing came together very neatly."

"Because the current environment allowed us to open virtually, there was no reason to wait," Desmarais said.

At Desmarais, Wilcox is representing tech heavyweights including Cisco Systems in its trade secret litigation with former employees and Amazon.com in IP litigation brought by Israeli weapons designer Maglula Ltd.

Wilcox will first lead the D.C. office virtually due to the pandemic. But once it's safe to do so, the firm intends to obtain physical office space in the D.C. area.

--Editing by Emily Kokoll.

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