Ninth Circuit Upholds Landmark FRAND Decision and Jury Verdict
Mark leads a team with spectacular credentials, deep expertise in intellectual property law, and that shares his belief in the client’s case. In the past few years, Mark has led Dow AgroSciences, EMC, NVIDIA, and Nintendo among others to victories that live out the Constitutional vision of a sound intellectual property regime. Mark feels lucky to have a legal practice he enjoys so much, one that combines his admiration for technological advances with enjoyment of the art of legal persuasion.
The author of the “user manual” for Federal Circuit appeals, Patent Appeals: The Elements of Effective Advocacy in the Federal Circuit (LexisNexis® Intellectual Property Law and Strategy Series, November 2017), Mark brings nearly twenty years’ of experience in intellectual property appeals, both in private practice and government. He was recognized in a Reuters special report as a member of the “elite cadre” of lawyers that are “the most influential members of one of the most powerful specialties in America: the business of practicing before the Supreme Court.” Reuters researched a field of 17,000 practitioners, identified a group of 75 who “have stood out – most for their success at getting cases before the high court,” and who “giv[e] their clients a disproportionate chance to influence the law of the land.”
As a member of the Appellate Staff of the Civil Division at the U.S. Department of Justice, Mark represented the U.S. Patent and Trademark Office, the Copyright Office, the International Trade Commission and other federal agencies before the Federal Circuit, other U.S. Courts of Appeals, and the U.S. Supreme Court.
Sample Wins in the Last Five Years
Mark led appellate teams in the following recent or pending matters:
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); 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).
March.22.2018 - March.23.2018