Alan S Kellman

Partner at Desmarais LLP
Ranked in United States: New York
IAM Research

The Patent 1000 focuses exclusively on patent practice and has firmly established itself as the definitive 'go-to' resource for those seeking world-class legal patent expertise.

Silver - Individuals: litigation

Senior general counsel hail Desmarais as “unparalleled in terms of expertise and client service when it comes to high-stakes litigation”. The richly resourced team lives to fight mission-critical patent, trade secret, antitrust and other technology-intensive cases for household names, and has cracked the code of winning trials – on both sides of the ‘v’ – in all key forums in the United States. Meanwhile, its flexible and innovative fee arrangements further set it apart. Repeating its stellar showing in the previous edition, it once again has several new faces in the IAM Patent 1000 this year in Bindu Donovan, Todd Krause and Yung-Hoon (Sam) Ha, which attests to the sheer depth of the squad. Donovan and biological sciences PhD Krause are anchors of the life sciences practice and poised advocates for drug originators in Hatch-Waxman litigation and other pharmaceutical and biotechnology disputes. Together, they recently represented patent holder Actelion Pharmaceuticals in a case against Zydus Pharmaceuticals and Cadila Healthcare relating to a treatment for pulmonary arterial hypertension. Materials science and engineering PhD Ha is the team’s top post-grant specialist. As a key ingredient of its success, the firm puts leanly configured but rigorously cooperative teams onto the playing field – a model which sees those already named join up with the likes of gold-ranked John Desmarais and Paul Bondor, both of whom are talismanic figures for the group. “John is the best in the profession – a wise, analytical, clear-thinking lawyer with great courtroom presence, who identifies the key issues that lawyers elsewhere miss. He has built a group with tremendous depth and which gets superb results in case after case.” He and likeminded lawyer Bondor are frequently hired to take over matters – as they were when Johnson & Johnson subsidiary Auris Health decided to make a switch before the close of fact discovery in a patent infringement suit brought by Intuitive Surgical involving robotic-assisted surgery technology; since becoming involved, the plaintiff has dropped three of the eight patents it originally asserted. Working with them on this is Tamir Packin, who is also heavily engaged in the firm’s representation of Cisco Systems; he and Jonas McDavit – together with San Francisco-based Peter Magic – recently earned an important trial win invalidating $400 million in claims brought against the tech conglomerate by software company Egenera. An “excellent trial lawyer and brief writer”, McDavit is “one of the best litigators at one of the best firms”. Further firepower comes from Alan Kellman and Karim Oussayef, who also have a lot on. Kellman has acted for Sound View Innovations in infringement litigation against multiple parties relating to multimedia streaming architecture, real-time data analytics and distributed computing technologies; while Oussayef, alongside John Desmarais, is representing IBM in asserting the infringement of 12 patents against online real estate website Zillow.

Alan S Kellman's Profile

Alan S Kellman is one of the original partners of Desmarais LLP, where his practice focuses on the trial and litigation of complex, technology-driven disputes. Mr Kellman has tried cases in the federal district courts, before the International Trade Commission and in arbitration, and has argued before the US Court of Appeals for the Federal Circuit. In addition, he has represented clients in trade secret, antitrust and unfair competition matters in federal and state courts. Mr Kellman has represented and counselled clients in disputes relating to a wide range of technical subject matters, including pharmaceutical and surgical products, network switching equipment, telecommunications equipment, local and wide area networks, digital signal processing systems, digital audio and video coding systems, cellular telephony, personal computers, digital watermarking, semiconductor processing technology, microprocessor design and development, electro-chemical lighting systems, lottery networking systems and remote surgical robotics.

After graduating from Harvard Law School, Mr Kellman began his career at Kirkland & Ellis, where he was named partner in 2005. After litigating numerous high-profile cases at Kirkland, Mr Kellman left the firm in 2010 along with John Desmarais to open Desmarais LLP.

Mr Kellman is admitted to the Bar of New York, as well as the US Court of Appeals for the Federal Circuit and various federal district courts. He is also registered to practise before the USPTO.

Education

  • Harvard Law School, JD, 1999, cum laude; editor in chief, Harvard Journal of Law & Technology
  • University of Pennsylvania, BSE, systems engineering, 1996, summa cum laude, university scholar
Firm Profile

Desmarais LLP is a trial boutique focused on the litigation of complex, often technology-driven disputes. Our lawyers have successfully tried some of the most important IP disputes in recent times for some of the largest companies in the world. We also handle significant appellate matters, having argued the appeal of numerous cases that have shaped the substantive direction and development of IP law.

Clients

Desmarais represents a diverse set of clients, including both plaintiffs and defendants, in a wide variety of technology areas. Our clients include Fortune 100 companies which rely on us to protect their most important IP assets and to defend them against claims that jeopardise their critical business interests. In addition, we represent smaller entities, including individuals, that seek to enforce the exclusive rights in their inventions or technology.

Litigation

Our firm handles all stages of litigation and we have significant trial experience in every major forum for technology disputes in the United States. We have successfully tried cases before juries and judges throughout the country, as well as before administrative bodies (including the International Trade Commission) and arbitration panels. At the appellate level, we have successfully briefed and argued cases before numerous appellate courts, including the Court of Appeals for the Federal Circuit.

Desmarais and its lawyers have been consistently recognised in industry publications as leaders in its areas of practice, and virtually all are technically trained, with degrees in engineering or the sciences. In addition, the firm boasts an unusually deep bench of lawyers with real-world jury trial experience, particularly in the nation’s busiest districts for patent litigation. Whether for jury trial, bench trial or appellate argument, in whatever jurisdiction, our focused approach will bring a lean team of experienced and creative professionals dedicated to achieving clients’ business goals.

Although the cases that we litigate span a wide range of subjects, Desmarais’s practice centres on technology-related disputes. Our lawyers have achieved successful trial results for clients in dozens of patent infringement cases, concerning technologies as diverse as semiconductors, telecommunications and networking, computer software, consumer electronics, pharmaceuticals, medical devices, biotechnology, chemicals and transportation. On appeal, we have preserved both offensive and defensive victories for our clients in various subject matter areas, obtained reversal of adverse results and steered the development of substantive law in our clients’ interests.

Our technology litigation expertise extends well beyond patent infringement cases. We have also successfully litigated, for both plaintiffs and defendants, a wide range of other technology-driven disputes, including antitrust, unfair competition, trade secret, fraud and contract claims. Further, even beyond technology matters, we have built a strong track record of litigation success in other IP areas. For example, our attorneys have successfully conducted trials and appeals in high-profile trademark, trade dress and counterfeiting matters.

Innovative fee structures

In addition to our record of success, our flexible and innovative approach to fee arrangements sets us apart from other top-tier firms that handle the same types of large, complex litigation. We have abandoned the traditional (and frequently inefficient) billable-hour approach in favour of fee arrangements more closely tailored to clients’ interests. For clients that want predictability, our fee structures will accommodate a flat fee negotiated at the outset. For those interested in a shared-risk approach, we are open to contingent fee arrangements and hybrid fee structures tailored to meet the needs of our clients and the case.

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