Mark has worked as a patent attorney for over twenty years, specializing in patent litigation, licensing and prosecution. He has experience in a broad range of electrical, mechanical and optical technologies, including computer networking and storage, computer hardware and software, transducers, memory and buses, media and disk drives, and active optical devices. In addition to litigation, licensing and prosecution, Mark has handled patent reexaminations, patent interferences, validity opinions, infringement opinions, international patent prosecution and trademarks. Mark has found that such broad experience benefits individual specialties. For example, experience in litigation helps him to write and obtain allowance of applications that become strong patents. Similarly, he has used his experience with USPTO procedures to undermine patents that his clients were accused of infringing, obtaining favorable settlements. And experience with interferences prepared him for the procedurally similar Inter Partes Review (IPR) proceedings on which he has worked.
Notable litigations for which Mark was the lead attorney include:
Patent Trial and Appeal Board (iControl Networks v. Alarm.com, Interference 106,001) – In a contested case involving mobile device monitoring and control of home and business security and automation systems, the PTAB denied all of Alarm.com’s motions and canceled all involved claims of Alarm.com’s patent. All of client iControl’s involved claims were validated and have issued in U.S. Patent 9,141,276.
Board of Patent Appeals and Interferences, Connery v. Boucher, Interference 105,775 – Obtained judgment for client Alacritech against HP in an interference involving high performance network interfaces, in which all claims of HP’s patent were canceled and Alacritech’s broadest claims were validated.
Alacritech v. Microsoft, U.S. District Court, Northern District of California, C04-03284 JSW (patent infringement) – Obtained (within six months) an injunction prohibiting Microsoft from releasing the next version of Windows (now known as Vista), based on a previously untested claim of a patent written by Mark. Negotiated three-way license with Microsoft and Broadcom Corporation prompted by injunction order, obtaining license fees while allowing Microsoft to proceed with claimed features in Vista, Alacritech to partner with Microsoft, and Alacritech to license others.
Alacritech v. Microsoft, U.S. District Court, Northern District of California, C04-02057 RMW (antitrust, unfair competition) – Obtained favorable settlement on eve of preliminary injunction hearing by turning Microsoft’s attempt to de-certify Alacritech’s products into a risk to the continued viability of Microsoft’s Certification program.
Clients Mark has worked with include Alacritech, Atmel, Censtor, iControl Networks, LG Electronics, Rambus, Read-Rite, SDL, Western Digital and Zylog.
Mark graduated magna cum laude from Thomas Jefferson School of Law, where he earned American Jurisprudence Awards for Contracts and for Corporations, was awarded the Wall Street Journal Outstanding Student Award, and worked as a Judicial Extern for U.S. District Court Judge John S. Rhoades. His undergraduate degree is from UC Davis, where he majored in physics and in economics.
Areas of Practice:
- Patent Prosecution
- Patent Litigation
- Patent Licensing
- Trademark Prosecution
- Trademark Litigation
- Trademark Licensing