Mark Abate is consistently recognized as one of the nation’s foremost IP lawyers. U.S. News-Best Lawyers recognized Mr. Abate as its New York City patent litigation “Lawyer of the Year” for 2015. Chambers USA refers to Mr. Abate as “a true gentleman and a fantastic trial lawyer” and “an accomplished and respected patent litigator” and notes he “is respected by judges,” “sought after for his lengthy experience before the ITC” and has a “winning combination of legal and technical expertise.” IAM Patent Litigation 1000 The World’s Leading Patent Professionals refers to Mr. Abate as “a most sought-after trial lawyer,” "deeply professional," "tactically smart" and notes “he consistently secures favorable results.”

Mr. Abate concentrates his practice on trials and appeals of patent infringement cases, and has particular expertise in matters involving electronics, computers, software, financial systems and electrical, mechanical and medical devices. He has tried cases to successful conclusions in U.S. district courts and the U.S. International Trade Commission and has argued appeals before the U.S. Court of Appeals for the Federal Circuit. He is a past-President of both the New York Intellectual Property Law Association and the New Jersey Intellectual Property Law Association and is a board member of the Federal Circuit Historical Society. He served as a law clerk for Chief Judge Howard T. Markey of the Federal Circuit.

Experience

Erfahrung

工作经历

Mr. Abate’s recent experience includes:

  • Successfully represented IBM in Williamson v. Citrix in which the Federal Circuit sat en banc and made new law concerning means-plus-function claims. This decision provides grounds to challenge functional claims in software patents and has been recognized as one of the most important patent law decisions of 2015.
  • Successfully represented IBM in obtaining a summary judgment that it owned patents obtained by a former employee in Picture Patents v. Aeropostale, Inc. Mr. Abate successfully defended this decision on appeal and in the U.S. Supreme Court.
  • Successfully opposed institution of three petitions for Covered Business Method review in the U.S. Patent and Trademark Office in SecureBuy v. CardinalCommerce. This case made new law and resulted in the first precedential decision of the Patent Trial And Appeal Board.
  • Successfully tried Certain Ground Fault Circuit Interrupters at the ITC. The administrative law judge ruled in favor of Mr. Abate’s client and against Chinese-based manufacturers of GFCIs and their U.S. distributors finding all six asserted patents valid, enforceable and infringed. Mr. Abate also successfully tried Certain Light Emitting Dioxides. There the ALJ judge ruled in favor of Mr. Abate’s client holding the asserted patent valid, enforceable and infringed.
  • Successfully argued on behalf of IBM, in what was then a case of first impression, that a district court ruling on claim construction was entitled to collateral estoppel. Authored amicus briefs of IBM, Ford and Kodak that were cited by the Federal Circuit and followed by the U.S. Supreme Court in Festo v. Shoketsu. Mr. Abate also made new law regarding patent infringement damages in two other Federal Circuit appeals.

Representative Matters

Repräsentative Angelegenheiten

代表事项

Appeals
  • Williamson v. Citrix, 792 F.3d 1339 (Fed. Cir.) (en banc), represented IBM, made new law concerning presumptions applicable to means-plus-function claims.  Obtained summary judgment of patent invalidity because the claims were computer implemented means-plus-function claims without a supporting disclosure of an algorithm.
  • Picture Patents v. Aeropostale, 788 F.Supp.2d 127 (S.D.N.Y.), aff’d, 469 Fed. Appx. 912 (Fed. Cir.), cert. denied 133 S. Ct. 652, represented IBM, obtained summary judgment of ownership of patents obtained by a former employee after leaving IBM. The court determined that the IBM employee agreement “clearly applies to” the invention and rejected arguments that the work of the former employee was excluded from the agreement. The court also determined that the statute of limitations did not prevent IBM from asserting its ownership and rejected defenses of laches, equitable estoppel, waiver and modification. The decision was affirmed by the Federal Circuit and the U.S. Supreme Court denied cert.
  • Certain Ground Fault Circuit Interrupters, Inv. No. 337-TA-615, 2009 WL 962585 (ITC), aff’d-in-part, 619 F.3d 1303 (Fed. Cir.), represented patentee in asserting patents against Chinese-based manufacturers of GFCIs and their U.S. distributors, all six asserted patents held valid, enforceable and infringed after trial. The decision was affirmed-in-part resulting in the exclusion of 15 of 16 respondents from the market.
  • Stryker v. Intermedics Orthopedics, 96 F.3d 1409 (Fed. Cir.), represented patentee in asserting patent relating to hip implants, awarded $72 million in damages, increased damages and attorney fees after trial; created new law regarding patent damages.
  • Braun v. Dynamics Corp., 975 F.2d 815 (Fed. Cir.), represented DCA on appeal in a design patent and trade dress infringement case relating to hand-held blenders, obtained reversal of jury verdict of willful infringement, trade dress infringement and unfair competition; created new law regarding patent damages.
  • North American Vaccine, Inc. v. American Cyanamid Co., 7 F.3d 1571 (Fed. Cir.), represented patentee in case involving human infant vaccine.
  • Mobil Oil v. Amoco Chemical, 779 F. Supp. 1429 (D. Del.), aff’d without opinion, 980 F.2d 742 (Fed. Cir.), represented patentee in case involving zeolite catalysts, case settled after trial for $120 million.
Litigation Against Non-Practicing Entities
  • Disaster Warning Network v. United States (Ct. Fed. Cl.), defended IBM in patent infringement suit involving computer systems for providing disaster warnings.
  • Globalprivateequity.com v. Debt Exchange (S.D.N.Y.), defended accused infringer in patent infringement suit involving online electronic trading platforms and evaluation tools.
  • Williamson v. Citrix (C.D. Cal.), defended IBM, obtained summary judgment of patent invalidity under 35 U.S.C. § 101 because the claims were directed to an abstract idea.
  • Fenner Investments v. Dell (E.D. Tx), defended Hewlett-Packard against allegation that its media access controllers infringed patents.
  • Compuware v. IBM (E.D. Mich), defended IBM against claims of trade secret theft, copyright infringement and antitrust violations and in asserting counterclaims of infringement of six patents relating to graphical user interfaces.
  • Digital Development v. IBM (S.D.N.Y.), defended IBM against claims of infringement of patents relating to computer virus detection.
  • TM Patents et al. v. IBM, 72 F. Supp. 2d 370 (S.D.N.Y.), 121 F. Supp. 2d 349 (S.D.N.Y.), 136 F. Supp. 2d 209 (S.D.N.Y.), defended IBM against claim of infringement of four patents relating to RAID storage, memory control and data routing; at Markman hearing, successfully argued, in what was then a case of first impression, that a prior district court ruling on claim construction was entitled to collateral estoppel; after discovery and claim construction ruling, patentee withdrew two patents, summary judgment of non-infringement granted as to other two patents.
  • MPR Assocs. v. General Electric (E.D. Va.), defended GE in “rocket docket” against claim of infringement of patent relating to repair of nuclear reactors; defeated motion for preliminary injunction.
ITC Investigations
  • Certain Dimmable Compact Fluorescent Lamps, Inv. No. 337-TA-830 (ITC), defended General Electric against allegations of infringement of patents on compact fluorescent lamp ballast circuitry.
  • Certain Light-Emitting Diodes, Inv. No. 337-TA-784 (ITC), represented patentee in asserting patents involving LED light conversion and packaging technology; patent held valid, enforceable and infringed after trial.
  • Certain Ground Fault Circuit Interrupters, Inv. No. 337-TA-739 (ITC), represented a respondent distributor accused of violating a Cease and Desist Order and its manufacturer intervener in enforcement and advisory actions. This investigation raised issues of first impression as to whether a manufacturer could intervene in an enforcement action against its distributor and initiate an advisory action.
  • Certain Display Devices Including Digital Televisions And Monitors, Inv. No. 337-TA-713 (ITC), represented world’s largest manufacturer of digital televisions and flat screen monitors defending against allegation of infringement of 10 patents.
  • Certain Hard Disk Drives, Inv. No. 337-TA-616 (ITC), defended Hewlett-Packard against allegation of infringement of patents relating to disk drive manufacturing.
  • Certain Wireless Communication Devices, Inv. No. 337-TA-583 (ITC) and Certain Wireless Communication Equipment, Inv. No. 337-TA-577 (ITC), represented Ericsson in asserting patents and defending against claims of patent infringement relating to cellular telephones.
  • Certain Male Prophylactic Devices, Inv. No. 337-TA-546 (ITC), represented patentee on appeal to Commission; overturned ALJ holding of no domestic industry.
  • Certain Personal Watercraft, Inv. No. 337-TA-452 (ITC), represented Bombardier in action alleging infringement of 11 patents. Successfully obtained dismissal of six patents before trial through motions for summary determination of non-infringement, invalidity or lack domestic industry. Case settled after trial.
Competitor Litigation
  • Gillette v. Dollar Shave Club (D. Del.), representing Gillette in a suit involving patents on razor blades having coatings.
  • SecureBuy v. CardinalCommerce (D. Del.) and SecureBuy v. CardinalCommerce (D. Miss.), represented patentee in suits involving patents on systems for facilitating credit cards authentication during Internet transactions.
  • Leviton Mfg. v. Pass & Seymour (E.D.N.Y.), represented accused infringer in suit involving three patents on electrical devices.
  • Augme Techs. v. Tacoda (S.D.N.Y.), represented patentee in case involving software for delivery of targeted advertising over the Internet.
  • Pass & Seymour v. Hubbell, 2011 WL 32433, 2009 WL 7296903 (N.D.N.Y.), obtained claim construction rulings favorable to patentee on 10 patents relating to ground fault circuit interrupters.
  • Pass & Seymour v. General Protecht Group (N.D.N.Y.), represented patentee in alleging infringement of six patents by Chinese-based manufacturers of GFCIs and their U.S. distributors.
  • Edisync Systems v. Genesys Conferencing (D. Col.), defended Genesys against claims of infringement of a patent relating to computer systems for collaborative editing and video conferencing.
  • ISCO v. Conductus (D. Del.), represented patentee in patent infringement case relating to cellular telecommunications.
  • Data General v. IBM, 93 F. Supp. 2d 89 (D. Mass.), defended IBM against claim of infringement of 11 complex computer patents and in asserting counterclaims of infringement involving seven patents relating to RAID storage, computer manufacturing and graphical user interfaces.
  • Smith Nephew-Richards v. Stryker (E.D. Tenn.), represented patentee in declaratory judgment action on hip implant patent.
  • Advanced Cardiovascular Systems v. C.R. Bard, (N.D. Cal.), defended Bard against claim of infringement of a patent relating to balloon dilation catheters; obtained summary judgment of noninfringement.
Nutriceuticals
  • Martek Biosciences Corp. v. Nutrinova Inc. Ltd. (D. Del.), defended Ideasphere Inc. against claim of infringement of patents relating to compositions for the treatment of heart disease.
  • Novogen Research Pty Ltd. v. Natural Alternatives, Inc. (S.D.N.Y.), defended NAI against claim of infringement of a patent relating to compositions for the treatment of symptoms associated with menopause.
  • Harcol Research v. Dymatize (E.D. Tex.) and Thermolife v. Dymatize (S.D. Cal. & C.D. Cal.), defended Dymatize in suits relating to compositions containing AKG and Nitric Oxide to improve vascular function.
Patent Trial And Appeal Board
  • SecureBuy v. CardinalCommerce, CBM 2014-00035, successfully opposed institution of three petitions for Covered Business Method review in the United States Patent and Trademark Office. This case made new law and resulted in the first precedential decision of the Patent Trial And Appeal Board.
  • Gillette v. Shavelogic, IPR 2016-00699, representing Gillette, challenging patent relating to shaving system.
Amicus Briefs
  • Limelight Networks v. Akamai Techs., 134 S. Ct. 2111, eBay v. MercExchange, 126 S. Ct. 1837 and Lab Corp. v. Metabolite Labs, 126 S. Ct. 2976, authored amicus briefs of IBM.
  • Hyatt v. Kappos, 625 F.3d 1320 (Fed. Cir.), authored amicus brief of NYIPLA, which was adopted by the Federal Circuit and affirmed by the U.S. Supreme Court.
  • Festo Corp. v. Shoketsu, 234 F.3d 558 (Fed. Cir.) and 535 U.S. 722, authored amicus briefs of IBM, Ford and Kodak, which were cited by the Federal Circuit and followed by the U.S. Supreme Court.
Professional Activities
Mr. Abate is a past-President of the NYIPLA, a past-President of the NJIPLA, a former board member of the Federal Circuit Bar Association, a board member of the Federal Circuit Historical Society and a Fellow of the American Bar Foundation.

Recognition

Mr. Abate has been selected for inclusion in Chambers USA since 2006, as well as Who’s Who in American Law and U.S. News-Best Lawyers, which named him “Lawyer of the Year” for 2015 New York City Litigation - Patent, a distinguished recognition based on a survey of legal peers in his community and practice area. He was voted by his peers as one of the world’s leading patent lawyers in the Guide to the World’s Leading Patent Law Experts (Managing Intellectual Property), in the Guide to the World’s Leading Patent Law Practitioners, in IAM Patent Litigation 250 – World’s Leading Patent Litigators 2011 and in IAM Patent 1000 2014 – The World’s Leading Patent Professionals. He holds Martindale-Hubbell‘s highest rating of "AV®-Preeminent™" and was selected by the New York Law Journal as a Top Rated Lawyer in Intellectual Property, and as a “IP Star” and for inclusion on the 2015 North America Awards Shortlist by Managing Intellectual Property. While attending law school, Mr. Abate was a member of the George Washington Law Review.

In The News

In den Nachrichten

在新闻中

Credentials

Anmeldeinformationen

专业资格

Education

J.D., 1988
The George Washington University

(high honors, Order of the Coif)

B.S., Civil Engineering, 1984
Rutgers University

(highest honors, Tau Beta Pi)

Clerkships

1988-1990 U.S. Court of Appeals for the Federal Circuit, Chief Judge Howard T. Markey

Admissions

Bar

New York
New Jersey
U.S. Patent and Trademark Office (USPTO)

Courts

U.S. Supreme Court
U.S. Court of Appeals for the Federal Circuit
U.S. District Court for the Eastern District of New York
U.S. District Court for the Northern District of New York
U.S. District Court for the Southern District of New York
U.S. Court of Federal Claims
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