IP & Technology Team Joins Sheppard Mullin
Sheppard, Mullin, Richter & Hampton LLP has added three partners to the firm's growing Intellectual Property practice group: James G. Gatto, D. Benjamin Esplin and Bradford C. Blaise. Gatto and Blaise join Sheppard Mullin’s Washington D.C. office and Esplin joins the firm’s Del Mar office.
"As extremely well-regarded IP specialists, they are sought out coast-to-coast by technology and game companies for patent portfolio strategy and business model advice. We are delighted to welcome Jim, Ben and Brad to the firm. They are first-rate attorneys that significantly add depth and breadth to our existing IP and technology capabilities, especially in the games, social media, internet, open source, mHealth and FinTech industries," said Guy Halgren, chairman of Sheppard Mullin.
"We are thrilled to join Sheppard Mullin. We have found the attorneys here to be talented, entrepreneurial and tech-savvy. We are impressed with the firm's successful strategic growth, particularly in its top-tier IP practice and its digital media and games practices,” Gatto commented. “The firm’s presence and profile in California, coupled with its commitment to expand its IP capabilities on the East Coast and social media and games practice firm wide, were critical factors in our decision to join Sheppard Mullin. Sheppard Mullin offers us a dynamic and exciting platform to expand our practices, especially with high profile litigation and transactional matters.”
“Our clients are facing increasingly complex IP challenges in a dynamic and evolving technical and legal landscape,” said Daniel Yannuzzi, chair of the Intellectual Property practice group at Sheppard Mullin. “Jim, Ben and Brad will enhance our ability to serve our clients’ needs in this rapidly-developing environment. They share our focus and will help us to continue to build a premier intellectual property practice to serve our clients’ diverse needs.”
Gatto leverages his unique combination of over 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. 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, mobile and social games, esports, fantasy sports and online gambling (gamblification), virtual goods and currencies (including bitcoin), social networks, virtual worlds, augmented reality, virtual reality, cyber security, open source, user-generated content, mHealth and FinTech Apps, location-based services and gamification.
Gatto has been in the intellectual property field since 1984, when he started as a patent examiner while attending Georgetown University Law School at night. His practice encompasses a full range of IP and technology issues, including: patent, trademark, copyright, open source and trade secret litigation; counseling and technology transactions; developing and implementing IP strategies to protect and to monetize IP assets; creating and implementing IP programs; conducting IP audits; conducting complex patent prosecution, including patent appeals, interferences, Inter Partes Review (IPRs), reissues and reexaminations; handling patent enforcement issues, including licensing and litigation; 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; handling IP aspects of government contracts; negotiating and drafting technology agreements; negotiating and drafting development, licensing, publishing and partnership agreements; advising clients on legal issues associated with open source software including open source audits and remediation, open source patent issues, open source licenses, open source compatibility issues, indemnity issues, open source license compliance, open source contributions, and developing and implementing corporate policies on use and approval of open source software; advising clients on the legality of cutting edge Internet business methods and technology, such as gambling/contests/sweepstakes-related issues, eSports, Fantasy Sports and real money skilled-based contests; preparing terms of service, end user license agreements and privacy policies; and advising clients on computer law issues such as screen scraping, computer fraud and abuse and SPAM-related issues; and many issues related to social media, including IP ownership in social media accounts, content and followers, employee-related aspects of social media, including the role of social media in non-solicitation and trade secret matters, conducting social media audits and developing corporate social media policies.
Esplin's practice covers a broad range of intellectual property matters including the development and monetization of intellectual property. He has experience in developing patent filing strategies, patent preparation and prosecution, patent portfolio sales and licensing, transactional due diligence, and advising clients with respect to the validity, infringement and potential avoidance of third party patent rights. Esplin’s experience with patent prosecution extends to successfully representing clients in post-grant proceedings such as reissue, reexamination (ex parte and inter partes), and patent interference. He also has experience with other intellectual property and legal matters pertaining to video games and social media.
Esplin’s areas of technical focus include social media, video games, social networks, virtual worlds, augmented reality, media, computer software, computer graphics processing, mechanical devices, control systems, network infrastructure, security and maintenance, sound recording/reproduction, wireless communication and business methods.
Esplin previously served as a patent examiner at the U.S. Patent and Trademark Office, where he examined patent applications pertaining to optical systems including film photography cameras, photolithographic apparatuses, projectors, photocopiers and printers.
Blaise’s practice focuses on patent prosecution and client counseling in a variety of fields including computer software, business methods, e-commerce, financial services, video games, virtual worlds, social media, social networks, and mHealth and medical devices, among others. In addition to preparing and prosecuting patent applications, he has significant experience with advanced prosecution matters including reissue applications and ex parte and inter partes reexamination proceedings, and has successfully argued before the U.S. Patent and Trademark Office's Board of Patent Appeals and Interferences.
Blaise's client counseling experience includes developing and implementing IP strategies to protect and to monetize IP assets; creating and implementing IP programs; conducting IP audits; conducting complex patent prosecution, including patent appeals, interferences, Inter Partes Review (IPRs), reissues and reexaminations, as well as advising clients on issues concerning patent infringement and validity, and the avoidance of third party patent rights. He has extensive experience with IP audits, patent sales, and transactional due diligence, and has also assisted in patent infringement litigation strategy.
Blaise is a former patent examiner with the U.S. Patent and Trademark Office, where he examined patent applications pertaining to surgical endoscopes and electro-surgical instruments. Prior to attending law school, he worked at the Assistive Technology Research Center (ATRC) at the National Rehabilitation Hospital, on a grant from the Department of Defense to examine the feasibility of transferring existing military technology to the field of rehabilitation and assistive technology to improve the lives of individuals with disabilities.
Gatto received a J.D. from Georgetown University Law Center in 1988 and a B.E. in Electrical Engineering from Manhattan College in 1984. Esplin received a J.D. from George Washington University Law School in 2007 and a B.S. in Engineering Physics from Colorado School of Mines in 2001. Blaise received a J.D. from Catholic University of America, Columbus School of Law in 2002 and a Bachelor of Biomedical Engineering from Catholic University of America in 1996.
Sheppard Mullin has 60 attorneys based in its Washington D.C. and 110 attorneys in its Intellectual Property practice group firmwide. The arrival of Gatto, Esplin and Blaise at Sheppard Mullin continues the expansion of the firm’s Chambers-ranked Intellectual Property practice group and follows the addition last month of IP partner William Lambert, who joined the firm in Palo Alto.