Mark J. Abate

Mark J. Abate

Partner
Mark J. Abate
New York
+1 212 459 7031

Mark Abate is a senior partner of the firm and leads the technology IP litigation practice in New York. He is widely recognized as one of the nation’s leading IP lawyers. U.S. News-Best Lawyers recognized Mark as its New York City patent litigation “Lawyer of the Year” for 2015 and 2017. Chambers USA refers to Mark as “a zealous advocate and excellent litigator with a warm disposition” 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 superb judgment, is a strategic thinker and a master in technical matters.” Chambers USA further describes Mark’s background in patent law and litigation as “impeccable."  IAM Patent Litigation 1000 – The World’s Leading Patent Professionals refers to Mark as “a most sought-after trial lawyer,” “a discerning choice for hard-fought battles,” and notes “he consistently secures favorable results.”

Mark concentrates his practice on trials and appeals of patent infringement cases, and has experience in matters involving electronics, computers, software, consumer products, material science, financial systems and electrical, mechanical and medical devices. He has successfully tried cases in the U.S. district courts and the U.S. International Trade Commission and has argued before the U.S. Court of Appeals for the Federal Circuit.

Mark’s recent trial win for Pass & Seymour, securing a rare jury verdict of patent invalidation due to obviousness, was profiled in a Law360 article titled “How They Won It — Goodwin Flips Script To Turn Contract Row Into Patent Win.” The victory also earned him a spot on The American Lawyer’s Litigators of the Week list. In addition, Mark’s successful representation of IBM in Williamson v. Citrix Online, where the Federal Circuit made new law concerning means-plus-function claims, was hailed as a “milestone case” by Managing IP, was ranked fourth among the decade's "blockbuster decisions that have shaped patent law" by Law360, and resulted in Goodwin's recognition as 2015 IP Group of the Year by Law360. Mark also helped secure the Patent Trial and Appeal Board’s first precedential decision in SecureBuy v. CardinalCommerce, a ruling described as a “first under the America Invents Act” in the Law360 article “PTAB Issues First Precedential Designation for AIA Rulings.” A recent appeal resulting in an award of attorneys' fees to Mark’s client IBM was profiled in the Law360 article “Fed. Cir. Says ‘Scandalous’ Conduct Calls For Atty Fees."

Mark 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, an experience described in the Law.com article "Circle of Friends | Corporate Counsel" as providing a “level of comfort” and “home court advantage” when appearing before the Federal Circuit.

Experience

Mark’s recent experience includes:

  • Secured a defense jury verdict of patent invalidity due to obviousness, an exceedingly rare outcome, in Leviton Mfg. v. Pass & Seymour in the Eastern District of New York
  • Successfully represented Gillette in Gillette v. Dollar Shave Club in the District of Delaware and a related IPR, arbitration and Third Circuit appeal
  • 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 was recognized as one of the most important patent law decisions of the decade
  • Successfully represented IBM in obtaining a summary judgment that it owned patents obtained by a former employee in Picture Patents v. Aeropostale, Inc. in the Southern District of New York. Mark 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. That 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 Mark’s client and against China-based manufacturers of GFCIs and their U.S. distributors finding all six asserted patents valid, enforceable and infringed. Mark also successfully tried Certain Light Emitting Dioxides where the ALJ judge held 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 that have been cited by the Federal Circuit and followed by the U.S. Supreme Court. Mark also made new law regarding patent infringement damages in two Federal Circuit appeals

Representative Matters

  • American Axle & Mfg. v. Neapco Holdings (Fed. Cir.) and Athena Diagnostics v. Mayo Collaborative Servs. (S.Ct.), authored amicus briefs of IPO concerning patent subject matter eligibility
  • 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 relating to divided infringement, permanent injuctions in patent cases, and patent subject matter eligibility
  • 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 relating to doctrine of equivalents, which were cited by the Federal Circuit and followed by the U.S. Supreme Court

  • Siemens Gamesa Renewable Energy v. U.S. I.T.C. (Fed. Cir.), represented intervenor General Electric in appeal of the ITC decision
  • Arunachalam v. IBM, 989 F.3d 988 (Fed. Cir.), represented IBM, affirming an award of attorney fees to IBM
  • 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 affirmance of 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
  • Dollar Shave Club v. Gillette (3d Cir.), defended Gillette in interlocutory appeal of denial of motion to stay
  • General Protecht Group v. U.S. I.T.C., 619 F.3d 1303 (Fed. Cir.), represented patentee in asserting patents against China-based manufacturers of GFCIs and their U.S. distributors. All six asserted patents were held valid, enforceable and infringed after trial, and 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. Secured $72 million in damages, increased damages and attorney fees after trial, and created new law regarding patent damages
  • Braun v. Dynamics Corp., 975 F.2d 815 (Fed. Cir.), represented appellant 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, and 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. The case settled after trial for $120 million

  • General Electric v. Siemens Gamesa Renewable Energy (D. Mass.), represented GE in asserting patents involving wind turbine generator control systems and software
  • Corning v. Shenzhen Xinhao Photoelectric Technology and Dongguan Jingbo Optoelectronics (N.D.N.Y.), represented accused infringers in suits involving patent infringement, trade secret misappropriation and breach of contract allegations concerning flat screen glass manufacturing technology
  • Leviton Mfg. v. Pass & Seymour (E.D.N.Y.), defended Pass & Seymour in suit filed by its principal competitor involving patents on electrical devices. Obtained summary judgment of noninfringement as to one of the asserted patents. Validity of another patent was tried to a jury. The jury returned a verdict that all asserted claims were invalid because they would have been obvious
  • Gillette v. Dollar Shave Club (D. Del.), represented Gillette in a suit involving patents on razor blade edge coatings, obtained favorable claim constructions and defeated summary judgment and Daubert motions. The case settled favorably for Gillette on the eve of trial
  • Gillette v. Edgewell (ITC & D. Conn.), represented Gillette in suits involving a patent on a razor cartridge connector
  • Dorco v. Gillette (D. Del.), represented Gillette in a suit involving a patent on a razor cartridge connector
  • SecureBuy v. CardinalCommerce (D. Del.) and SecureBuy v. CardinalCommerce (D. Miss.), represented patentee in suits involving patents on systems for facilitating credit card authentication during Internet transactions
  • 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 China-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

  • Certain Variable Speed Wind Turbine Generators, Inv. No. 337-TA-1218 (ITC), represented General Electric in post-decision proceedings in the ITC
  • 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 was 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 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 China-based GFCI manufacturers and their U.S. distributors. All six asserted patents were held valid, enforceable and infringed after trial
  • 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 the International Trade 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 of domestic industry. Case settled after trial

  • CellCast v. United States (Ct. Fed. Cl.), defended IBM in a patent infringement suit involving system for providing public warnings over the cellular telephone network
  • Arunachalam v. IBM (D. Del. & N.D. Cal.), defending IBM in patent infringement suits involving patents concerning Internet commerce
  • 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 and 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. Successfully argued at Markman hearing 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, and summary judgment of non-infringement was granted as to the remaining 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

  • Representing Gillette in IPR on patents relating to shaving systems
  • Representing General Electric in IPRs relating to wind turbine generators control systems and software
  • Represented Gillette in successfully opposing institution of IPR on patent on razor blade edge coatings
  • Represented CardinalCommerce in successfully opposing institution of three petitions for Covered Business Method review. This case made new law and resulted in the first precedential decision of the Patent Trial and Appeal Board
  • Represented Gillette in an IPR challenging patent relating to shaving system
  • Represented IBM in IPRs challenging patents relating to a system for providing public warning over the cellular telephone network

Professional Activities

Mark is a past-President of the NYIPLA, a past-President of the NJIPLA, a former member of the Federal Circuit Bar Association Board of Directors, a member of the Federal Circuit Historical Society Board of Trustees, a Fellow of the American Bar Foundation, a former member of the NYU Engelberg Center on Innovation Law and Policy Advisory Board, and a former member of the U.S. Court of Federal Claims Advisory Council.

Credentials

Education

JD1990

The George Washington University

(high honors, Order of the Coif)

BSCivil Engineering1986

Rutgers University

(highest honors, Tau Beta Pi)

Clerkships

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

Admissions

Bars

  • 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. Court of Appeals for the Second Circuit
  • U.S. Court of Appeals for the Third 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

Recognition & Awards

Mark is recognized by The Legal 500 2022 for his work in Intellectual Property and Patents: Litigation. Mark has been recognized by The Best Lawyers in America since 2005 for his work in Intellectual Property Litigation, Patent Litigation, and Patent Law. He was a 2021 recommended lawyer for Patent litigation. Mark 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 and 2017 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, and in IAM Patent 1000–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 an “IP Star” by Managing Intellectual Property. While attending law school, Mark was a member of the George Washington Law Review.

Publications

  • Speaker, “Functional Claiming,” Federal Circuit Bar Association Bench & Bar® Conference, 2023
  • Co-Author, "The All Substantial Rights Doctrine: A Second Look," Fordham Intellectual Property, Media and Entertainment Law Journal, 2020
  • Speaker, “Virtual Litigation in a COVID World,” Engelberg Center Live, 2020
  • Speaker, “ITC Webinar Series 2019: Part I – Your ITC Primer,” Goodwin Webinar, 2019
  • Co-Author, “Standing with a Bundle of Sticks: The All Substantial Rights Doctrine in Action,” Fordham Intellectual Property, Media and Entertainment Law Journal, 2018
  • Co-Author, “How to win your case when you win it and when you lose it: Strategies to avoid the impact of ITC exclusion orders,” AIPLA Quarterly Journal, 2016
  • Speaker, “NJIPLA Patent Litigation Seminar,” New Jersey Intellectual Property Law Association, 2016
  • Speaker, “The Latest on Means-Plus-Function Claims: One Year After Williamson v. Citrix,” Intellectual Property Owners Association, 2016
  • Speaker, “Section 112 and Functional Claiming,” Federal Circuit Bar Association, 2016
  • Speaker, “The New World Order: Current Developments in Challenging and Defending Patents in the PTAB,” New York Intellectual Property Law Association and New Jersey Intellectual Property Law Association, 2015
  • Speaker, “NJIPLA's 2015 Electronics, Telecommunications & Software Patent Practice Update Event,” New Jersey Intellectual Property Law Association, 2015
  • Speaker, “The PTAB - Understanding the Odds and How to Maximize Them,” Intellectual Property Owners Association, 2015
  • Speaker, “Intellectual Property Protection in China from A-Z,” New York Intellectual Property Law Association and the New Jersey Intellectual Property Law Association, 2015
  • Speaker, “Practical Strategies for European Companies in U.S. Patent Litigation,” Goodwin Event, 2014
  • Speaker, “NJIPLA Patent Litigation Seminar,” New Jersey Intellectual Property Law Association, 2014
  • Speaker, “Focusing and Resolving Disputes: Pretrial Practice and The Role of Mediation,” New York Intellectual Property Law Association and The Federal Circuit Bar Association, 2014