Mark S. Davies

Partner
Supreme Court and Appellate

Mark Davies is a partner in Orrick’s “marquee” Supreme Court and Appellate practice. He is located in the Washington, D.C., office.

Mark handles critical appeals in a wide range of areas, with a particular emphasis on representing high technology and other innovative clients. Legal 500 describes Orrick’s appellate practice as “display[ing] momentum in IP instructions, and is now one of the go-to firms for large corporate entities embroiled in the so-called ‘Smartphone wars’.” Mark’s book, Patent Appeals: The Elements of Effective Advocacy in the Federal Circuit (Oxford University Press, February 2008), has been called “the user manual” for Federal Circuit appeals. Mark also helps represent innovative companies with complex issues in high-stakes district court actions.

Mark led appellate teams in the following recent or pending matters:

  • Apple Inc. Mark successfully defended the ITC’s ruling that Motorola Inc.’s patents related to portable communication devices were not infringed by Apple’s iPhone and iPad. Motorola Mobility, LLC v. ITC, No. 12-1666 (Federal Circuit) (Oral Argument) Mark also leads the team defending the ITC’s ruling that a different Motorola Inc. patent is invalid. Motorola Mobility, LLC v. ITC, No. 13-1417 (Federal Circuit). Briefing is ongoing and a decision is expected later this year.
  • Apple Inc. Mark led the authoring of a merits-stage amicus curiae brief for Apple in the U.S. Supreme Court, detailing the growth and motivations of patent-assertion entities and addressing the standard for fee shifting under the patent law.  Highmark, Inc. v. Allcare Management Systems Inc., 12-1163 (U.S. Supreme Court) and Octane Fitness, LLC v. Icon Health & Fitness, Inc., 12-1184 (U.S. Supreme Court)
  • Dow AgroScience. Mark led the winning appellate team in Bayer CropScience AG v. Dow AgroSciences LLC, No. 13-1002 (Federal Circuit), where in a “tour de force analysis of complex claim construction issues” (Hal Wagner) the Federal Circuit agreed that Dow’s next generation of herbicide-resistant crop seeds do not infringe a competitor’s patent. No. 2013-1002 (Fed. Cir. Sept. 3, 2013) (Oral Argument) Articles: Dow Beats Bayer Herbicide-Resistance IP Suit In Fed. Circ.
  • Dow AgroScience. Mark leads the appellate team in a patent action revolving around Bayer’s allegations of patent infringement from Dow’s next generation of herbicide-resistant crop seeds. Bayer CropScience AG v. Dow AgroSciences LLC, No. 14-1032 (Federal Circuit)
  • EMC Corp. Mark led the winning appellate team that obtained the definitive pre America Invents Act opinion addressing the improper use of joinder in patent cases. In re EMC Corp., Misc. No. 142 (Fed. Cir. Jan. 29, 2013) Articles: Fed. Circ. Order May Lead To Speedier Transfer Rulings; Considerations For Early Transfers In Multidefendant Cases; EMC Says Venue Transfer Denial Treads On MDL Panel’s Power; Tech Giants Back EMC In Fight Over Patent Suit Venue
  • Harman International Industries. Mark leads the appellate team in a patent dispute involving Mobileye’s allegations of infringement of its vision-based automotive alert system by iOnRoad’s augmented reality application for smartphones, which provides forward collision and lane departure warnings to drivers. Mobileye, Inc. v. Picitup, Corp., No. 13-1373 (Federal Circuit)
  • Nintendo Co. Mark led the winning appellate team that successfully defended Nintendo’s most important product—the Wii. Motiva, LLC v. ITC, No. 2012-1252 (Fed. Cir. May 13, 2013) (Oral Argument) Articles: Nintendo Scores Fed. Circ. Win In Wii Controller IP Row; Fed. Circ. Eyes Motiva’s Wii Controller Patent Suit
  • NVIDIA Corp. Mark led the winning appellate team in two high stakes appeals from an adverse International Trade Commission exclusion order. NVIDIA Corp. v. ITC, No. 10-1556 & 10-1557 (Federal Circuit) (Oral Argument) Article: NVIDIA Tells Fed. Circ. Rambus Destroyed Vital IP Docs
  • NVIDIA Corp. Mark led the winning appellate team in an appeal against a patent licensing entity. BIAX Corp. v. NVIDIA Corp., No. 2012-1387 (Fed. Cir. Feb. 8, 2013) (Oral Argument)
  • NVIDIA Corp. BIAX Corp. v. NVIDIA Corp., 13-1649 (Federal Circuit) (attorney fees)
  • YOU Technology. Mark led the winning appellate team for YOU Technology, a company that provides biometric financial and marketing services to the retail sector. Excel Innovations v. You Technology, No. 08-1599 (Federal Circuit) (Oral Argument)

Mark co-led appellate teams in the following recent or pending matters:

  • Apple Inc. Mark co-led the winning appellate team in Apple Inc. v. ITC, which reversed an adverse International Trade Commission ruling on key Apple smartphone patents. No. 2012-1338 (Fed. Cir. Aug. 7, 2013) Articles: Apple’s ITC Case Against Motorola Revived By Fed. Circ.
  • Apple Inc. Mark co-leads the appellate team in cross-appeals arising from Judge Posner’s dismissal of Apple and Motorola’s patent infringement claims against one another’s wireless communication devices, raising significant and novel legal questions regarding damages and injunctive remedies. Apple Inc. v. Motorola Mobility, LLC, Nos. 13-1150 & 13-1182 (Federal Circuit)
  • Apple Inc. Mark co-leads the appellate team in an appeal challenging the dismissal of Apple’s antitrust and breach of contract claims against Motorola, based on Motorola’s deception of standard-setting organizations and abuse of its standard-essential patents. Apple Inc. v. Motorola, Inc., Nos. 12-1548 & 12-1549 (Federal Circuit)
  • Hynix Semiconductor Inc. Mark co-led the winning appellate team in the high-profile semiconductor dispute, Hynix Semiconductor Inc. v. Rambus Inc., 645 F.3d 1336 (Fed. Cir. 2011) Article: Semiconductor Cos. Want Rambus IP Claims Stayed
  • Intel Corp. Mark co-led the winning appellate team for Intel Corporation against Acacia Research Corporation. Fast Memory Erase, LLC v. Intel Corp., No. 10-1302 (Federal Circuit)
  • Morgan Stanley Capital Group. Mark co-led the winning appellate team in convincing the Supreme Court to let stand billions of dollars of long-term energy contracts. Morgan Stanley Capital Group v. Public Utility District No. 1 of Snohomish County, Washington, 128 S. Ct. 2733 (2008)
  • Oracle America, Inc. Mark co-led the briefing team in Oracle’s cutting-edge, multi-billion dollar copyright infringement appeal against Google over the Android operating system. Oracle America, Inc. v. Google Inc., Nos. 13-1021 & 13-1022 (Federal Circuit)
  • VeriFone Systems, Inc. Mark leads the appellate team in VeriFone’s appeal challenging the district court’s claim construction, as well as its determination that the evidence was sufficient under that construction to show infringement. Cardsoft v. VeriFone Systems, Inc. (Federal Circuit)

Mark’s recent district court matters include:

  • eBay. Mark is helping to defend eBay in the massive GeoTag lawsuit in the Eastern District of Texas where more than 450 companies have been sued for patent infringement. GeoTag, Inc. v. Frontier Communications Corp., No. 10-cv-265-JRG (Consolidated) (Eastern District of Texas, Marshall Division)
  • Microsoft Corp. Mark co-led the briefing for Microsoft’s successful motion for summary determination addressing Barnes & Noble, Inc patent misuse claim. Certain Handheld Electronic Computing Devices, Related Software, and Components Thereof, No. 337-TA-769 (ITC)
  • Tekmira. Mark assisted the Tekmira defense team in a trade secret misappropriation case against Tekmira’s former collaborator Alnylam. Alnylam Pharmaceuticals, Inc. v. Tekmira Pharmaceuticals Corp., No. 12-cv-10087-RWZ (District of Massachusetts)

Mark’s pro-bono matters include:

Mark’s U.S. Department of Justice experience includes:

From 1999-2006, Mark was on the Appellate Staff of the Civil Division at the U.S. Department of Justice (DOJ), where he represented the U.S. Patent and Trademark Office, the Librarian of Congress, and various other federal agencies before the U.S. Court of Appeals for the Federal Circuit, other U.S. Courts of Appeals, and the U.S. Supreme Court.

At the DOJ, Mark argued cases in nine different appellate circuits, including several high-profile intellectual property appellate matters: Festo Corp. v. SMC Corp. (en banc) (prosecution history estoppel); Southco v. Kanebridge (en banc) (copyright of short phrases); and Program Suppliers v. Librarian of Congress (distribution of cable royalties). He also briefed other important intellectual property appellate cases, including Enzo v. Gen-Probe (written description); Eli Lilly v. Washington (interference proceeding); and Kay Berry v. Taylor Gifts (copyright registration).

In addition while at DOJ, Mark played a key role in four Supreme Court merits matters that involved intellectual property: Merck KG v. Integra Lifesciences (safe harbor for drug testing); Traffix Devices, Inc. v. Marketing Displays, Inc. (trade dress infringement); Moseley v. V Secret Catalogue (trademark dilution); and Dastar Corp. v. Twentieth Century Fox (Lanham Act). Mark also helped prepare the Solicitor General’s response to six requests for views by the Supreme Court in intellectual property matters: Fin Control v. Surfco (combination patents); Honywell v. Hamilton (doctrine of equivalents); Micrel v. Linear Technology (on-sale bar); Monsanto v. Bayer (bona fide purchaser sublicensee); SmithKline v. Apotex (novelty); and Jazz Photo v. Fuji (representing the International Trade Commission).

Mark Davies
Speeches
  • Moderator, 16th Annual Bench & Bar Conference, The Federal Circuit Bar Association (June 2014)
  • Panelist, “Review of the October 2013 Supreme Court Term,” Washington Legal Foundation (June 2014)
  • Webinar presentation on The American Invents Act for the Federal Circuit Bar Association (October 2011)
  • Moderate a panel on claim construction that included two federal judges at the joint Eastern District of Texas Bar Association and Federal Circuit Bar Association Bench & Bar Conference (September 2011)
Select Publications
  • "Orrick Hires Five Former Supreme Court Clerks," The National Law Journal (September 2014)
  • “Circuit training,” Intellectual Property Magazine (May 2014)
  • “Solving the Confidentiality Designation Problem in Federal Circuit Briefs: A Proposed Amendment to Local Rule 11,” The Federal Circuit Bar Journal, Vol. 21, No. 2 (2011)
  • “Letter to the Editor: Considering Bilski,” The Federal Circuit Bar Journal, Vol. 20, No. 1 (2010)
  • Ashcroft v. Iqbal: The Sleeper 2009 Supreme Court Decision For Patent Litigators?,” Intellectual Property & Technology Law Journal, Vol. 21, No. 12 (December 2009)
  • “Indirect Purchaser Standing in Federal Courts: Take 2,” Competition Law 360 (October 12, 2009)
  • “The Federal Circuit and the Supreme Court (Circa 2009),” 19 The Federal Circuit Bar Journal 1 (The George Washington University Law School, 2009)
  • “An Appealing Provision,” Los Angeles Daily Journal (April 22, 2009)
  • “Designing Around the Supreme Court,” Legal Times (October 2008)
  • “Seeking Supreme Court Review In Patent Cases,” IP Law 360 (April 2008)
  • “Patent Appeals: The Elements of Effective Advocacy in the Federal Circuit,” Oxford University Press (February 2008)
  • “Breakdown on State Street: The Future of Business Method Patents,” ABA Section of Litigation, Intellectual Property Litigation Committee Newsletter (Winter 2008)
  • “The Future of Patent Law: Understanding The Supreme Court’s Renewed Interest in Patent Law,” Intellectual Property Today (June 2007)
Admitted In
  • District of Columbia
Court Admissions
Supreme Court of the United States
    United States Court of Appeals
    • Federal Circuit
    • District of Columbia
    • Second Circuit
    • Fourth Circuit
    • Fifth Circuit
    • Ninth Circuit
    • Tenth Circuit

    Education
    • B.A., cum laude, Ethics, Politics and Economics, Yale University, 1992
    • J.D., with honors, University of Chicago Law School, 1995
    Honors
    • Washington, D.C., Super Lawyers, 2013
    • Federal Circuit Bar Association Committee Individual Leadership Award(2012)
    • Federal Circuit Bar Association Patent and Trademark Committee Award (2012)
    • Federal Circuit Bar Association Committee Individual Leadership Award (2011)
    • Federal Circuit Bar Association Patent and Trademark Committee Award (2011)
    • Articles Editor, University of Chicago Legal Forum
    • Reviewer, Oxford University Press
    Clerkships
    • Clerk, Hon. Karen LeCraft Henderson, U.S. Court of Appeals for the D.C. Circuit
    Memberships
    • Federal Circuit Bar Association
    • Edward Coke Appellate Inn of Court
    • Federal Circuit Bar Association Planning Committee for 2010 Bench & Bar Conference
    • Chair, American Intellectual Property Law Association, Litigation Subcommittee on Ashcroft v. Iqbal
    • Vice-Chair, Federal Circuit Bar Association, Patent and Trademark Office Committee
    • D.C. Court of Appeals, Criminal Justice Act Panel 2011-2015
    Recent Publications

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