Ninth Circuit Upholds Landmark FRAND Decision and Jury Verdict
Mark Davies is a partner in Orrick’s “marquee” Supreme Court and Appellate practice.
The author of the “user manual” for Federal Circuit appeals, Patent Appeals: The Elements of Effective Advocacy in the Federal Circuit (Oxford University Press, February 2008), Mark brings nearly twenty years’ of experience in intellectual property appeals, both in private practice and government. He has led multiple high-stakes appeals for high-technology companies including Apple, Bosch, Corning, Dow AgroSciences, and NVIDIA. He also regularly assists clients in high-stakes district court actions consider appellate strategies, and assists clients who seek to shape the views of the U.S. Supreme Court through amicus filings.
Mark was recognized in a 2014 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 nine years of Supreme Court cases and from 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.
Mark regularly writes and lectures on patent appellate issues for publications such as Intellectual Property Magazine, and for organizations including the Federal Circuit Bar Association and the Washington Legal Foundation.
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).