Mark led appellate teams in the following recent or pending
- Apple Inc. Represented at trial by another firm, Apple had prevailed
on non-infringement but the judge had ruled the patent valid. On appeal, Orrick
was able not only to get the non-infringement verdict affirmed but persuaded the
appellate court to invalidate the patent. Wi-LAN, Inc. v. Apple Inc.,
No. 14-1437, 14-1485 (Federal Circuit)
- 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
- 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 AgroSciences. 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 AgroSciences. Mark led the winning 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
- 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) Article: Apple’s ITC Case
Against Motorola Revived By Fed. Circ.
- Apple Inc. Mark co-led 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-led 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 led the winning 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
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
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); Honeywell 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).