Photo of James G. Gatto

James G. Gatto

Washington, DC
T: 202.747.1945
F: 202.747.3893


  • J.D., Georgetown University Law Center, 1988
  • B.E., Electrical Engineering (with Physics minor), Manhattan College, 1984
  • Commonwealth of Virginia
  • District of Columbia
  • U.S. Court of Appeals for the Federal Circuit and the Court of Federal Claims
  • U.S. District Court for the District of Columbia
  • U. S. Patent and Trademark Office
Publications & News

Jim Gatto is a partner in the Intellectual Property Practice Group in the firm's Washington, D.C. office. He is also Co-Team Leader of the firm's Digital Media Industry and Social Media and Games Industry Teams, and Team Leader of the firm's Open Source Team.

Areas of Practice

Mr. Gatto 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'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.

  • IP Stars, Managing Intellectual Property, 2013-2014
  • Intellectual Property - Northern Virginia, Chambers USA, 2007-2014
  • Patent Licensing & Transactional and Patent Prosecution, Legal 500, 2007-2015
  • 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 for Author of the Year, Intellectual Property USA, 2010
  • Super Lawyers, 2006-2008, 2010-2014
  • Top IP/IT Attorneys in Virginia, Virginia Business Journal Survey
  • DC Area's Go-To Attorneys, Washington SmartCEO
  • Martindale-Hubbell, AV® Rated
  • Represented Catalina Marketing in their acquisition of Modiv Media. The deal involved an acquisition and strategic integration of Modiv’s mobile and digital technology to supplement Catalina’s bricks and mortar-based targeted marketing infrastructure.
  • Lead IP/tech attorney for the highly publicized, complex strategic alliance between EMC and Lenovo, relating to network servers and storage devices. The deal included M&A and ongoing strategic business agreement components, involving complex licensing, open source and IP aspects. Based on this deal, M&A Advisor named him a winner of the 2012 “Cross-Border Deal of the Year” in its category for this work.
  • Assisted VoiceBox Technologies Corp. by securing dozens of patents to protect its award-winning contextual voice technology. VoiceBox was recently named in the IEEE’s Patent Power 2013 Scorecard, an independent industry evaluation of the best patent portfolios conducted by the research firm 1790 Analytics.
  • 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


"FTC Issues New Guidance for Mobile App Developers that Collect Location Data," JD Supra, February 2, 2015

"Not So Silky Road," JD Supra, February 5, 2015

"FinCEN Addresses Illegal Sports Betting," JD Supra, January 28, 2015

"Court Finds Poker Game Management Patents Valid Under Section 101," JD Supra, November 17, 2014

"Another Court Declares Terms of Service Provisions Unenforceable - Are Yours?," JD Supra, November 6, 2014

"IRS Issues Significant Convertible Virtual Currency Ruling - Bitcoin Community Abuzz," JD Supra, March 28, 2014

"More Fallout From Silk Road," JD Supra, January 28, 2014

"Sacramento Kings Announce They Will Be The First Pro Sports Franchise to Accept Bitcoin," JD Supra, January 20, 2014

"Taxation of Virtual Currencies," JD Supra, January 14, 2014

"Does Bitcoin Violate the Stamp Payments Act?," JD Supra, January 10, 2014

"Healthcare Gamification - Regulation of Wellness Programs," JD Supra, August 28, 2013

"FINCEN Virtual Currency Guidance," JD Supra, July 5, 2013

"Money Laundering Through Virtual Currency Provider Shut Down," JD Supra, May 29, 2013 

"FINRA Levies $9 Million Fine Against Financial Service Company Over Email Failures," JD Supra, May 22, 2013

"Bitcoin Exchange Assets Seized," JD Supra, May 20, 2013

"DMCA Saves YouTube...Again," JD Supra, April 19, 2013

"Mobile Payments Infographic," JD Supra, April 17, 2013

"SEC OKs Social Media Sites for Financial Disclosures," JD Supra, April 3, 2013

"FINCEN Issues Virtual Currency Regulations," JD Supra, March 22, 2013

"Who Wants Money for Mobile App Development?," JD Supra, February 4, 2013

"Social Media Guidance for Financial Institutions," JD Supra, January 30, 2013

"Will Australia Ban Non-Real Money Gambling Apps?," JD Supra, January 15, 2013

"Virtual Goods, Gaming and the Trouble With Secondary Markets," JD Supra, January 2013

"Make Sure Your Virtual Currency Doesn't Enter Illegal Gambling Territory," Paybefore Magazine, Fall 2012

Video Game Law Blog Posts


Speaking Engagements

  • Panelist, "Intellectual Property & Licensing Strategies for Small Businesses WEBINAR," Center for Innovative Technology, September 10, 2015
  • Speaker, "The Critical Difference between eSports and Other Video Games," eSports Conference San Francisco, September 9, 2015
  • Speaker, "Don’t gamble with your Business Model: Cutting edge legal issues and potential regulatory enforcements for social gaming, eSports and fantasy sports," Gaming NOW Summit Las Vegas, September 2, 2015
  • Speaker, “The Interface Evolves – Sensory Gaming Platforms,” NeuroGaming Conference & Expo 2015, May 6, 2015
  • Speaker, “Intellectual Property Strategy for Games,” Pillsbury panel discussion, February 25, 2015
  • Speaker, “Overview of Legal Issues with mHealth,” mHealth Applications Legal Issues, February 10, 2015
  • Speaker, “All About Apps: Designing for Engagement & Compliance,” mHealth Summit, December 10, 2014
  • Speaker, “Gamblification,” Game Business and Legal Affairs 2014, May 19, 2014
  • Speaker, “The Interface Evolves – Sensory Gaming Platforms,” NeuroGaming 2014 Conference & Expo, May 7, 2014
  • “The Real Issues with Virtual Currency,” Pillsbury webinar, April 22, 2014
  • Speaker, “New Ideas in Bitcoin,” Inside Bitcoins, April 7, 2014
  • Speaker, “Gamblification! Interaction between Social Games and Online Gambling,” Social Gambling & Gaming Summit, December 10, 2013
  • "Gamblification: Gaming and Gambling Partnerships," Gamer Technology Law Conference, October 7, 2013
  • Speaker, “Know When to Hold ‘Em,” PLI’s Technology and Entertainment Convergence 2013: Hot Business and Legal Issues in "Technotainment" San Francisco, September 18, 2013 and New York, October 3, 2013
  • "Discussion of Due Diligence," Panel Discussion, The Power of Angel Investing Seminar, Northern Virginia Technology Council; Ashburn, VA, July 11, 2013
  • Speaker, gsummitX - Gamification in Washington, DC, June 5, 2013
  • Moderator, “Gamblification! Interaction between Social Games and Online Gambling,” American Bar Association Forum on the Entertainment & Sports Industries, June 10, 2013
  • Speaker, Social Media & Games Committee meeting and interactive workshop, 2013 World Technology Law Conference & Annual Meeting, May 3, 2013
  • Moderator, “The Next Interface – Sensory Gaming Platforms,” NeuroGaming Conference & Expo, May 1, 2013
  • Speaker, “Clarifying the blurred legal boundaries between various forms of social, virtual currency, prediction, sweeptstakes and other forms of gaming – what you can and can’t do,” Social Casino Summit San Francisco 2013, April 25, 2013
  • Speaker, "Gamblification: Legal Concerns," GSummit San Francisco 2013, April 18, 2013
  • Speaker, "Rigging the Mobile Game Deck," Casino Gaming, February 26, 2013
  • Speaker, “Viva Las Vegas - Monetization 3.0: Opportunities in Online Casinos and Gambling for Games and Media Companies," Games Summit at 2013 International CES, January 10, 2013
  • "Role of Patents in Business and the Impact of the America Invents Act," Practising Law Institute Law Audio Webcast, November 5, 2012
  • “Gamblification! Legal Issues Relating to the use of Gambling Mechanics for Non-Gambling Purposes,” 2012 ITechLaw European Conference, October 11, 2012
  • Moderator, "Can Social Games be Monetised through Gambling," Social Gaming and Virtual Goods World, December 7, 2011
  • "Obeying the Law in a Virtual World," Social Gaming and Virtual Goods World, December 6, 2011
  • "Not Just Fun and Games: The Legal and Privacy Implications of Virtual Currency," Pillsbury webinar, October 24, 2011
  • "Derivative works based on open source," AIPLA Annual Meeting with Joint Committee Meeting ECLC and Diversity in IP Law, October 21, 2011
  • "Mobile and Handheld Device Gaming: Regulatory Update for Location-Based Gaming," LSI Gamer Technology Law Conference, October 3, 2011
  • "Top 10 Social Media Legal Issues: What Every Lawyer Should Know", MCLE Marathon, September 27, 2011
  • "Social Media for Nonprofits & Associations," WMACCA Nonprofit Series, May 26, 2011
  • "Social Media for Nonprofits: Leveraging the Opportunities and Avoiding the Legal Pitfalls," The Kreeger Museum, April 14, 2011
  • Webinar: "Top Social Media Legal Issues," March 22, 2011
  • "Legal Issues in Gamification," Engage! Expo New York, February 15, 2011
  • Webinar: "Social Media & Location-based Services: New Risks," February 2, 2011
  • "Top Legal Issues in Gamification," The Gamification Summit, January 19, 2011
  • "Overview of Legal Issues with Virtual Currencies," Virtual Goods World – Europe, November 16, 2010
  • "Legal Issues with Virtual Worlds, Virtual Goods and Virtual Currencies," Engage! Expo California, September 22, 2010
  • "Legal Issues with Virtual Worlds, Virtual Goods and Virtual Currencies," PLI Technology and Entertainment Convergence 2010: Hot Business and Legal Issues in "Technotainment", San Francisco, September 22, 2010
  • "Legal Issues with Virtual Worlds, Virtual Goods and Virtual Currencies," PLI Technology and Entertainment Convergence 2010: Hot Business and Legal Issues in "Technotainment", New York, September 10, 2010
  • "Virtual Worlds in Government Contracting," Pillsbury's Northern Virginia office, June 8, 2010
  • "ABCs of Social Gaming," Pillsbury's Silicon Valley office, June 1, 2010
  • "Top Legal and Business Issues with Virtual Worlds," Engage Expo New York, February 16, 2010
  • "Top Legal and Business Issues with Virtual Worlds," Engage Expo California, September 23, 2009
  • "Intersecting Interests: Virtual Worlds and the Law," Metanomics stage in Second Life, May 20, 2009
  • "What Actual Companies Need to Know About Virtual Worlds," Pillsbury MCLE Marathon, Houston, May 18, 2009
  • "Virtual Worlds," 2009 ITechLaw Annual Meeting, Seattle, May 14, 2009
  • "Overview of Business and Legal Issues with Virtual Worlds," Pillsbury Northern Virginia, May 12, 2009
  • "What Actual Companies Need to Know About Virtual Worlds," Pillsbury MCLE Marathon, Northern Virginia, April 28, 2009
  • "What Actual Companies Need to Know About Virtual Worlds," Pillsbury MCLE Marathon, New York City, February 19, 2009
  • "Do You Truly Own What You Are Licensing? What Every Licensor and Licensee Needs to Know About Open Source Code," Advanced Forum on Technology Licensing Agreements, ACI, April 29, 2008
  • Presenter, "Business Aspect of Patents: A Primer for the Non-Patent Lawyer," CLE Marathon hosted by Pillsbury; New York, NY, April 10, 2008
  • “Overlooked Intellectual Property Issues: Avoiding Pitfalls that Impact Commercialization,” USIC (United States Industry Coalition); Arlington, VA, March 5, 2008
  • “Significant Recent Events in the Open Source World,” Open Source Seminar; McLean, VA, 10-Jan-2008
  • “Essentials of Patent Law for General Litigators,” CLE event hosted by Pillsbury; New York, NY, November 5, 2007
  • "Navigating The New Patent World And Understanding USPTO Proposed Reforms," Panel Discussion, Patent Strategies Conference: Implementing Successful Approaches to IP Protection While Maximizing Business Value, IQPC; New York, NY, September 26, 2007
  • Presenter, “GPLv3 Has Been Released - Do You Know How the Significant Changes Will Impact You?” IPC Fall Meeting, AIA (Aerospace Industries Association), Arlington, VA, September 25, 2007
  • “GPLv3 Has Been Released – Do You Know How the Significant Changes Will Impact You?” Open Source Seminar hosted by Pillsbury; McLean, VA, July 24, 2007
  • "What Venture Capitalists and Other Investors Look for in IP Portfolios," Technology IP Due Diligence Conference, ACI; San Francisco, CA, June 22, 2007
  • "Digital Media Patents for Profit," The Business & Technology Of Online Video, Streaming Media East 2007 Conference & Exhibition; New York, NY, May 15, 2007
  • Presenter, "Director and Officer Liability for Infringement of Intellectual Property: One More Reason for Effective IP Management," CLE Marathon hosted by Pillsbury; New York, NY, April 11, 2007
  • Moderator, "The Business Case For/Against Using Open Source in Your Portfolio and Your Client’s Processes," Software IP Strategy Summit; ACI; Palo Alto, CA, February 21, 2007
  • Panelist, "Power of Angel Investing," IP Due Diligence; University of Virginia in conjunction with the Virginia Active Angel Network; October 9, 2006
  • “GPLv3 – What You Need to Know About the Coming Changes,” Open Source Seminar hosted by Pillsbury; McLean, VA, September 7, 2006
  • "Patents and Open Source - The Sky is Not Falling," C3 Expo; New York, NY, June 2006
  • “Recent Developments in Open Source,” Open Source Seminar hosted by Pillsbury; McLean, VA, April 6, 2006
  • "Legal Issues in Open Source,"- Open Source Licensing: A Doorway to Heaven or Hell?, CLE Spring Training; ACC (Association of Corporate Counsel); San Francisco, CA, March 23, 2006
  • "Protection in the World of Open Source: Best Practices for Mergers and Acquisitions in an Open World," Open Bar; Silicon Valley, CA, June 2, 2005
  • “Legal Issues and Business Ramifications of Open Source Software,” Breakfast Briefing hosted by Pillsbury Winthrop LLP; McLean, VA, January 6, 2005
  • Moderator & Panelist, "Legal and Regulatory Aspects of Bioinformatics," Infotech Pharma Conference; London, February 12, 2002
  • "Legal Aspects of Applying Bioinformatics to Personalized Medicine," BioFuture Conference; Vancouver, Canada, November 21, 2002
  • "IP Issues for Nanotech Start-ups," International Conference on Computational Nanoscience and Nanotechnology; San Juan, Puerto Rico, April 22, 2002
  • "What Businesses Need to Know About The Value of Patents - a US and Israeli Perspective," Virginia Israel Technology & Trade Summit; Reston, VA, 2001
  • "The Impact of Open Source Software on University IP Revenue," delivered to Board of Directors, Virginia Tech Intellectual Properties, Virginia Polytechnic Institute and State University; Virginia, January 28, 2002
  • "Intellectual Property as Collateral in Secured Transactions," Commercializing Intellectual Property Conference, Law Seminars International; Virginia, May 29, 2003
  • Panelist, "Salvaging Value of IP from Troubled Companies," Business Seminar Co-Hosted By Chevy Chase Bank; Chevy Chase, MD, May 15, 2003
  • American Bar Association—Vice-Chair, Section of Science & Technology Law, Virtual Worlds and Multi-User Online Games; Patent, Trademark and Copyright Committee; Section of Intellectual Property Law—Special Committee on Computer Gaming
  • International Technology Law Association—Chair, Social Media & Games Committee
  • Association of Virtual Worlds—Advisory Board Member; Chair of Legal Committee
  • American Intellectual Property Law Association—Chair, Open Source Subcommittee; Electronic and Computer Law Committee; Patent Law Committee; Emerging Technology Committee
  • District of Columbia Bar—Arts, Entertainment, Media & Sports Law Section
  • Patent Lawyers Club of Washington (Past President)
  • Intellectual Property Owners (IPO)—Open Source Committee
  • He has been a member of the Board of Trustees and Secretary of the Software Patent Institute; served as Chair of the Patent, Trademark & Copyright Section of the Young Lawyers Division of the ABA; was President of the Patent Lawyers Club of Washington; was a member of the Board of Governors of the Patent and Trademark Office Society; served as an adjunct professor for several years teaching a legal strategy course in Johns Hopkins MBA program.