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OVERVIEW

Mark C. Nelson
Partner

Dallas

2121 N. Pearl Street
Suite 700
Dallas, TX 75201

P (214) 258-4140

F 214-258-4199

OVERVIEW

Mark C. Nelson
Partner

Dallas

2121 N. Pearl Street
Suite 700
Dallas, TX 75201

P (214) 258-4140

F 214-258-4199

In his third decade of practice, Mark Nelson has appeared in more than 100 patent cases nationwide, serving as lead trial counsel in more than 50 patent cases. He has tried jury cases, bench trials (both in the district court and in the ITC), argued inter partes reviews, and argued appeals before the Federal Circuit. Clients value his judgment, skill in problem-solving, and practical approach to resolving litigation.

OVERVIEW

In his third decade of practice, Mark Nelson has appeared in more than 100 patent cases nationwide, serving as lead trial counsel in more than 50 patent cases. He has tried jury cases, bench trials (both in the district court and in the ITC), argued inter partes reviews, and argued appeals before the Federal Circuit. Clients value his judgment, skill in problem-solving, and practical approach to resolving litigation.

Mark’s patent litigation practice covers numerous diverse electronic technologies, including semiconductor products and processes; telecommunications/wireless and networking; LED technology; computer systems and software; machine learning and personalized advertising; and direct/indirect pointing systems. He has also litigated cases involving financial services, such as payment systems, mobile payment systems, check processing, ATM functionality and software, QR codes, hardware and related infrastructure, internet business methods and sales, and cryptography.

In addition, Mark has experience in biotech, medical device, and manufacturing technologies. He has represented individual and business clients involved in genetically modified plants and seeds, pharmaceutical compounds and drug delivery devices, nonwoven materials and their manufacture, explosives used in automobile airbags, and other automotive technology. He is well-versed in soft drink bottling technology, electric motor technology, cosmetics and the chemical compositions used in cosmetics, and asynchronous assembly techniques.

Mark also litigates copyright, trademark, trade secret and other technology-related cases, and has experience with litigation funding. In addition to his litigation experience, Mark drafts and negotiates IP license agreements, provides counsel on creating and maintaining IP capture programs, performs corporate IP due diligence and provides opinions of counsel.

Prior to attending law school, Mark was the director of a genetics laboratory for a hospital in the Kingdom of Saudi Arabia. He is a frequent speaker and author on intellectual property topics.

Professional and Community Involvement

Former president, Dallas-Fort Worth Intellectual Property Law Association

Member, American Intellectual Property Law Association

Member, American Bar Association

Honors

Texas Super Lawyers, 2012-2013; Rising Star, 2004-2005

Intellectual Asset Management Patent 1000

Experience

Ligation Experience Summary

Selected Electronics-related patent cases, including financial services cases (clients in bold)

  • Tait Radio. Techno Licensing LLC v. Tait North America, Inc. (E.D. Texas 2018) — Lead counsel for Tait in a case accusing UnifyVoice protocol. RFJ Licensing, LLC v. Tait Radio, Inc., (N.D. Texas [Dallas Division] 2016) — Lead counsel for Tait in patent case involving radio communications over the Internet. Plaintiff-take-nothing dismissal with prejudice.
  • NetFortris Corp. Mozly Tech LLC v. Netfortris Corp. (E.D. Texas 2018) — Lead counsel for Netfortris in a case relating to relating to wireless communication features. Case settled shortly after filing.
  • Ipreo Holdings. Grant Street Group, Inc. v. Ipreo Holdings LLC (W.D. Pennsylvania [Pittsburgh] 2014) ― Lead counsel for Ipreo in round two of the Muniauction v. Thompson dispute. Plaintiff filed the lawsuit and a Motion for Preliminary Injunction in its home venue. Ipreo opposed that motion filed summary judgment of invalidity. The case was dismissed with prejudice after argument on summary judgment and claim construction on the patent claims asserted in the PI.
  • American Express. Phoenix Licensing, LLC et al v. American Express et al (E.D. Texas [Tyler Div.] 2014) — Lead counsel for American Express in a seven patent case involving business methods used for personalized communication. The case settled after claim construction. Purple Leaf, LLC v. American Express Co., et al (E.D. Texas [Tyler Div.] 2011) — Lead counsel representing Citigroup, Inc. in patent case involving payment using the Internet. Plaintiff-take-nothing dismissal with prejudice.
  • AT&T. Callwave Communications, LLC v. AT&T Mobility, LLC, et al (Delaware [Wilmington Div.] 2012) ― Lead counsel for AT&T Mobility in a case involving location tracking technology. Case settled after IPR filed by third party were instituted.
  • T-Mobile. Brandywine Comm. Tech., LLC v. Apple, Inc., et al (M.D. Fla. 2011) — Defended T-Mobile in patent infringement suit involving voice/data modem technology. Case settled prior to claim construction. SmartPhone Tech., LLC v. HTC Corp., et al (E.D. Texas [Tyler Div.] 2011) — Defended T-Mobile in multi-patent infringement action involving wireless handset technology. Case dismissed with Plaintiff taking nothing. On The Go, LLC v. AT&T Mobility, LLC, et al. (N.D. Illinois [Eastern Division] 2009) — Defending T-Mobile U.S.A., Inc. in a patent infringement action brought by plaintiff against multiple defendants. Plaintiff-take-nothing dismissal with prejudice. Joao Bock Transaction Systems of Texas, LLC v. AT&T Mobility, LLC, et al. (E.D. Tex. [Tyler Division] 2009) — Defended T-Mobile U.S.A., Inc. in a patent infringement action brought by plaintiff against multiple defendants. Case settled at the beginning of claim construction.
  • Citigroup. N5 Technologies LLC, v. Citigroup Inc. and Citibank, National Association (E.D. VA [Norfolk Div.] 2014); Pi-Net International, Inc. v. Citigroup Inc., Citicorp and Citibank, N.A. (Delaware [Wilmington Div.] 2014); Card Verification Solutions, LLC v. Citigroup Inc. (N.D. Illinois 2013) Pollin Patent Licensing, LLC, et al v. Citibank, N.A. and Citicorp Credit Serv., Inc. (USA) (N.D. Ill. 2011) RPost Holdings, Inc. et al. v. EXACTTARGET, INC. et al (E.D. Texas [Marshall Div.] 2012) — Lead counsel for Citigroup in multiple venues against multiple patent plaintiffs.
  • Jiawei Technology et al. Simon Nicholas Richmond v. Jiawei Technology (HK) Ltd. et al (3:13-cv-01953 (D.N.J 2013.) ― Lead counsel for eighteen (18) defendant manufacturers and retailers in an multiple patent dispute relating to solar-powered, outdoor lighting products, the circuitry used in same, and certain packaging features relating to same. The case remains pending. The actions are consolidated under 3:13-cv-01944. Certain Defendants filed IPRs on some of the asserted patents. The cases remain stayed after final IPR decisions found all instituted claims invalid.
  • No Magic. Uniloc USA, Inc. and Uniloc (Singapore) Private Ltd. v. ABBYY USA Software House, Inc. et al. (E.D. Tex. [Tyler Div.] 2009) — Lead counsel defending No Magic, Inc. in a patent infringement action brought by plaintiff against multiple defendants relating to software security. Case settled with a Plaintiff-take-nothing dismissal with prejudice at the beginning of claim construction.
  • Sears and Ace. Internet Media Interactive Corporation v. ACE Hardware Corp., (N.D. Illinois 2015); BSG Tech LLC v. Sears Holdings Management Co., (E.D. Texas [Marshall Division] 2015); Oberalis, LLC v. Sears Holdings Management Co., (E.D. Texas [Marshall Division] 2015; Internet Media Interactive Corporation v. Sears, Roebuck and Co. (N.D. Illinois [Chicago] 2014) - Lead counsel for Sears and Ace in multiple venues against multiple patent plaintiffs. Cases settled shortly after they were filed.
    Personalized User Model. Personalized User Model, LLP v. Google, Inc. (D. Del. 2009) — Represented plaintiff in a three-patent action against Google involving personalized search and advertising technology. The case was tried in 2014 and Google prevailed. On appeal, the ownership issue was reversed in favor of PUM.
  • Motorola/Freescale. Motorola, Inc. and Freescale Semiconductor, Inc. v. STMicroelectronics, N.V. and STMicroelectronics, Inc., (E.D. Tex. 2003) — Represented Motorola and Freescale in a multi-patent dispute relating to semiconductor manufacturing processes and circuitry. The case settled before trial.
  • Dell. MicroUnity, Inc. v. Intel Corp. and Dell, Inc. (E.D. Tex. 2005); Intergraph Hardware Technologies Co. v. Dell Inc., et al., (E.D. Tex. 2002) — Represented Dell in two multi-patent disputes relating to microprocessors. The case settled before trial.
  • Nokia. MLR, Inc. v. Nokia, Inc. (N.D. Ill. 2002); DigCom, Inc. v. Nokia, Inc. (N.D. Tex. 2000) — Represented Nokia in two multi-patent lawsuits relating to modulation/signal processing. Prevented MDL consolidation. The cases settled before trial.
  • Mathworks. National Instruments, Inc. v. Mathworks, (E.D. Tex. [Marshall Division] 2001) — Part of a team that defended Mathworks in a multi-patent suit relating to graphical interface/simulation technology. The case was tried and a jury found one patent infringed and three not infringed. The Federal Circuit upheld the verdict.
  • DirecTV et al. In the matter of Digital Satellite System (DSS) Receivers and Components Thereof, Inv. No. 337-TA-392 (U.S.I.T.C.) (1997) — Part of a team that represented Hughes Network Systems, DIRECTV, United States Satellite Broadcasting Co. and Hitachi Home Electronics (America), Inc. in an International Trade Commission (ITC) investigation seeking exclusion of certain products and activities that allegedly infringed a patent held by Complainant Personalized Media Communications, L.L.C. (PMC). The ALJ found all asserted claims to be invalid, not infringed or both. After an appeal to the Federal Circuit, the case was dismissed by PMC.

Selected Biotech, medical device, semiconductor, and other patent cases

  • Jiawei. Lighting Science Group Corp. v. Shenzhen Jiawei Photovoltaic Lighting Co., Ltd. (N.D. Cal. 2017) — Lead counsel defending Jiawei in multi-patent lawsuit involving LED lighting. Case is stayed pending IPR.
  • University of Florida. University of Florida Board of Trustees, An Agency of the State of Florida, and Florida Foundation Seed Producers, Inc., a Not-For-Profit Corporation Chartered by the State of Florida v Hartmann’s Plant Company, (N.D. Florida [Gainesville Division] 2016) —Lead counsel for Univ. of Florida and Florida Foundation is six patent case involving blueberry plants. Obtained a consent judgment of a permanent injunction, willful infringement and enhanced damages on behalf the University.
  • Ace Hardware and Wayfair. Bluestone Innovations LLC v. ACE Hardware Corporation, (N.D. California [San Francisco Division] 2016); Bluestone Innovations LLC v.Wayfair, LLC, (N.D. California [San Francisco Division] 2016) — Lead counsel defending Ace and Wayfair against a patent relating to LED fabrication. Cases settled favorably.
  • Gaming manufacturer and numerous large retailers (e.g. Best Buy, Target, Wal-Mart, Gamestop) — Lead counsel for large gaming hardware manufacturer and 10+ big box retailers in case against manufacturer’s hardware and games. Obtained sever and stay of retailers after successful mandamus on misjoinder, transfer from the Eastern District of Texas to the Western District of Washington, summary judgment of non-infringement from Washington court, and attorney fees. Non-infringement ruling and attorney’s fees affirmed on appeal.
  • Dermalogica and Vivant Pharmaceuticals. Reshare Commerce, LLC v. The Antioch Co. d/b/a Creative Memories, et al (D. Minn. 2011) Tristrata Technology, Inc. v. Vivant Pharmaceuticals, LLC and BetterHealthySkin.com LLC (D. Del. 2009); Tristrata Technology, Inc. v. Jeunique International, Inc., et al., (D. Del. 2007) — Took over as lead counsel in May 2009 from another firm for Defendant Dermalogica, Inc. to defend it in a five-patent action involving the use of alpha hydroxy acids to combat various signs of aging. The case settled during mediation after an intensive four-month effort led by our team. Lead counsel defending Vivant Pharmaceuticals on the same patents.
  • Best Buy. Innovative Display Technologies LLC, v. Best Buy Co., Inc. et al. (E.D. Texas [Marshall Div.] 2014) — Lead counsel for Best Buy entities on multi patent case involving LED fabrication technology. The case settled shortly after filing as part of a larger, global settlement involving the patents.
  • Brooks Instruments. Brooks Instrument, LLC and BI Products, LLC v. MKS Instruments, Inc. (E.D. Texas [Tyler Div.] 2010); Brooks Instrument, LLC and BI Products, LLS v. MKS Instruments, Inc. (D. Mass. 2010) — Lead counsel representing Brooks Instrument and BI Products in multiple-district, multiple-patent dispute involving mass flow meter and other technologies. Case settled before claim construction.
  • Servpro Industries. Thermapure, Inc. v. Temp-Air, Inc., et al. (N.D. Ill. 2010)— Representing Servpro Industries, Inc. - Lead counsel for Servpro Industries., Inc. in patent dispute relating to using heat technology to rid structures of insects and other pests. Obtained a consent judgment of non-infringement.
  • Micro Chemical. Micro Chemical, Inc. v. Lextron, Inc. (D. Col. 1997) — Part of a team that was hired after Micro Chemical's (MCI) patent relating to a computerized feedlot system was invalidated during a trial. The Federal Circuit reversed the invalidity finding and the district court heard the argument on infringement.
  • TRW, Inc. OEA, Inc. v. TRW Inc. (D. Col. 2000) — Defended TRW in a patent infringement suit involving the explosives used in automotive air bag inflation systems and the overall design of such systems. The case settled before trial.
  • PepsiCo. Micro-Blend, Inc. v. PepsiCo, Inc. (S.D. Tex. 1998) — Defended PepsiCo against a patent infringement suit brought by Micro-Blend. The case settled on the eve of trial.
  • Texas Instruments. Texas Instruments Incorporated v. Hyundai Electronics Indus. Co., Ltd., Hyundai Electronics America, Inc., and Hyundai Semiconductor America, Inc. (E.D. Tex. [Marshall Division] 1998) — Part of a team that represented Texas Instruments (TI) in a total of thirteen (13) patent infringement suits throughout the world. In the first of the cases to be tried, the jury awarded TI damages, plus willfulness damages. TI then moved for an injunction. The case settled before the judge ruled on the injunction issue, with Hyundai taking a nonexclusive license and committing to royalty payments. In the Matter of Certain Electronic Products, Including Semiconductor Products, Manufactured by Certain Processes, 337-TA-381 (U.S.I.T.C. 1996) — Part of a team that represented TI in an ITC investigation seeking the exclusion of various Samsung products made by a process that infringed three TI patents. After extensive discovery, hearings and motion practice before the ALJ, the cases settled, with Samsung taking a nonexclusive license and committing to royalty payments.; Pellegrini v. Texas Instruments Incorporated (D. Mass. 1999) — Lead counsel for Texas Instruments (TI) in an inducement case concerning sensorless control of specific types of electric motors. The case settled on the eve of trial.

Selected Copyright, Trademark/Trade dress, and other non-patent cases

  • Flywheel Sports. Flywheel Fitness, LLC v. Flywheel Sports, Inc. (E.D. Texas [Sherman Div.] 2013) — Lead counsel for Defendant Flywheel Sports. Within two weeks of Plaintiff’s filing, our team removed a state court trademark case to federal court, dissolved a Temporary Restraining Order, and defeated Plaintiff's Motion for Preliminary Injunction in trial. The case settled thereafter.
  • Home Depot and Jiawei. Malibu Stone Manor v. The Home Depot, et al. (C.D. California 2013) ― Lead counsel for Jaiwei Technologies (HK) Ltd. and The Home Depot in copyright case involving mechanical design. Case settled after plaintiff's change of counsel.
  • JM Dealer Services. Dealer Basics, LLC v. American Auto Exchange, Inc. and JM Dealer Services, Inc. (N.D. Tex. [Dallas Division] 2007) — Represented defendants in a multiple count trademark, unfair competition, and tortious interference matter. The case settled after we successfully removed it to federal court and fought off various attempts to return it to state court.
  • Active Release Techniques. Active Release Techniques v. Sessa (E.D. Tex. [Tyler Division] 2006) — Lead counsel for Active Release in a copyright case involving manuals and methods for treating sever muscle pain. Obtained complete relief for our client.
  • Dole. Del Monte, Inc. v. Dole, Inc. (S.D. Fla. 2000) — Defended Dole against claims of unfair competition, deceptive trade practices and Lanham Act violations involving asexually reproduced pineapple varieties. The case settled before trial.

Selected post-grant proceedings and re-examinations

  • Coleman Cable, Jiawei et al. Coleman Cable, LLC, et al, v. Simon Nicholas Richmond (IPRs) — Lead counsel representing petitioners on four IPRs relating to solar-powered lighting. Three of four IPRs instituted and all instituted claims found invalid. Rulings upheld on appeal.
  • Jiawei. Lighting Science Group Corp. v. Shenzhen Jiawei Photovoltaic Lighting Co., Ltd. — Lead counsel on three IPRs relating to LEDs. IPRs pending.
  • Jiawei Technology (HK) LTD., et al, v. Simon Nicholas Richmond, — Lead counsel representing petitioners on two re-examinations on patents relating to solar-powered lighting. All claims currently invalid after final office action. Patent owner has appealed.

Appellate Experience Summary

  • Coleman Cable and Jiawei Technology et al. Simon Nicholas Richmond v. Jiawei Technology (HK) Ltd. et al (Nos. 16-1771, 16-1773) ― Argued Federal Circuit appeal on behalf of petitioner group on patent related to solar-powered lighting. Invalidity finding affirmed. No. 16-1773 being appealed to the Supreme Court.
  • Gaming Hardware Manufacturer. Argued Federal Circuit appeal on behalf of gaming hardware manufacturer relating to an attorney’s fees award obtained by the manufacturer. Award of fees affirmed. Obtained mandamus relief for same manufacturer and group of big-box retailers resulting in the district court finding misjoinder, which led to the retailers being severed and stayed and the manufacturer’s case being transferred from the Eastern District of Texas to the Western District of Washington.

Significant Other Representations

  • Counsel for a large semiconductor tool maker in connection with several patent lawsuits filed against TEL’s customers.
  • Represented pharmaceutical company in evaluating contract and entire course of conduct with larger pharmaceutical company. Made presentation to the Boardrecommending strategy to get out from under the license.
  • Performed 102(e) analysis on behalf of major agribusiness client involving several patents and client's genetically modified products.
  • Completed freedom to operate analysis for a large manufacturer of sound barriers. The analysis entailed reviewing nearly all of the sound barrier patents that had ever been issued.
  • Together with a team of hand-picked experts, performed a "scorched earth" invalidity analysis of the key CDMA patents of a large wireless company in connection with preparing for license negotiations. This work resulted in my client obtaining the most favorable license from this large wireless company to date.

*These matters occurred prior to joining Barnes & Thornburg.


EXPERIENCE
Presentations and Publications

Summary of Selected Presentations and Publications

  • Panelist, "The Great Game: Defending Against Rivals and Operating Companies," The Intellectual Property Defense Seattle May 2017
  • Panelist, "The Great Game: Defending Against Rivals and Operating Companies," The Intellectual Property Defense Summit, Houston, September 22, 2016
  • Moderator, "Determine Best in Class Strategies for Avoiding and Managing Patent Litigation," 11th Annual Patents for Financial Services Summit, New York, NY, July 23–24, 2014
  • Moderator, "Reduce Risk Exposure Resulting From Targeted Attacks by Competitors and NPEs," 10th Annual Patents for Financial Services Summit, New York, NY, July 24–25, 2013
  • Speaker, "Strategies and Best Ways to Deal with Trolls/NonPracticing Entities (NPEs) LIVE Webcast," September 5, 2013
  • Moderator, "Best Practices for Defending Against Trolls," 9th Annual Patents for Financial Services Summit, New York, NY, July 25 – 26, 2012
  • "Patent Law 2010-2011: An Update of Recent Developments Institute on Intellectual Property Law," Houston Intellectual Property Law Association, Galveston, TX, October 7, 2011
  • "Patent Law 2010-2011: An Update of Recent Developments," Intellectual Property - Annual Meeting, State Bar of Texas, San Antonio, TX, June 24, 2011
  • "Patent Reform by Judicial Action" (Venue Transfer and Damages), San Francisco and Silicon Valley, CA, January 2010
  • "Willfulness and Opinions of Counsel: Some Practical Considerations State Bar of Texas," 5th Annual Advance Patent Litigation Course, Chapter 2, Lake Tahoe, July 23 – 24, 2009
  • Texas Lawyer Roundtable Series, "Intellectual Property Law: Protecting Your Company's Ideas," Austin, TX, June 15, 2009
  • Texas Lawyer Roundtable Series, "Intellectual Property Law," Dallas, TX, April 13, 2009
  • Texas Lawyer Roundtable Series, "Intellectual Property [Litigation]," Dallas, TX, April 3, 2008
  • "Attorney Opinions, Waiver, and Willfulness After Seagate: Clear as Crystal or Mud?" State Bar of Texas, 21st Annual Intellectual Property Law Course: The Future of IP, Austin, TX, March 6 – 7, 2008
  • "Intellectual Property Practice: Today and Tomorrow," University of North Dakota, November 5, 2007
  • "Breaking Down the Tape: How e-Discovery Affects the Business of Litigation," State Bar of Texas, 3rd Annual Advance Patent Litigation Course, Chapter 4, Lake Tahoe, July 12 – 13, 2007
  • "Patent Claim Construction 2007: Overview of Claim Construction Post-Phillips, Evidence Hierarchies, and Other Tidbits," State Bar of Texas, 3rd Annual Advance Patent Litigation Course: Patent Claim Construction 2007, Chapter 1, Austin, TX, May 21 – 22, 2007
  • "Opening Statements in Patent Cases: A Few Thoughts," AIPLA Spring Meeting, Boston, MA, May 9 – 11, 2007
  • "Legal Considerations: IP Issues and Startup Documents." Association of University Technology Matters (AUTM), Advanced Topics in Startup Business, St. Louis, MO, October 26 – 28, 2006
  • "Criminal Issues in Civil Cases: Sarbanes-Oxley and Spoliations," 10th Annual Eastern District Bench/Bar Conference, Galveston, TX, October 11 – 12, 2006
  • "Protecting Your Intellectual Property Assets: Monitoring Marketplace and Enforcement Procedures, Including Litigation," Denver, CO, October 5, 2006
  • "How to Draft a Persuasive Markman Brief," State Bar of Texas, 2nd Annual Advance Patent Litigation Course: Fast-Track Litigation, Chapter 9, Lake Tahoe, July 27 – 28, 2006
  • "IP Litigation as a Licensing Tool," World's Best Technology Showcase, Arlington, TX, March 28, 2006
  • Moderator, "Stem Cell Research: Who Will Control the Future of Medicine," ABA Annual Meeting, Chicago, IL, 2005"
  • Negotiation of a Biotechnology License Agreement," Dallas Forum for BioMedical Technology, May 2002
  • "Antitrust Considerations in Acquisition, Standard Setting, Essential Facilities," Intellectual Property Owners Association Annual Meeting, November 2000
  • "Enchromatic Heteromorphisms of 9q and 16p in Normal Individuals," Cytotechnologists Convention in Sante Fe, NM, June 1990

*These occurred prior to joining Barnes & Thornburg.














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