Mark Abate

Given Mark’s consistent track record, he is widely recognized as one of the nation’s leading intellectual property litigators. U.S. News–Best Lawyers has twice named him New York City’s “Lawyer of the Year” for Patent Litigation. Chambers USA describes him as “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 further calls his background in patent law and litigation “impeccable.” IAM Patent 1000 refers to Mark as “a most sought-after trial lawyer,” “a discerning choice for hard-fought battles,” and notes that he is “renowned for his consistent favourable results in US courts, is a trusted IP lawyer specialising in high-stakes patent infringement cases.”

Mark is a past-president of the New York Intellectual Property Law Association (NYIPLA) and the New Jersey Intellectual Property Law Association (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.

He began his legal career as a law clerk to 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.

• Appeals
  • Represented intervenor General Electric in appeal of the ITC decision. Siemens Gamesa Renewable Energy v. U.S. I.T.C. (Fed. Cir.).
  • Defended IBM, affirming an award of attorney fees to IBM. Arunachalam v. IBM, 989 F.3d 988 (Fed. Cir.).
  • Defended 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. Williamson v. Citrix, 792 F.3d 1339 (Fed. Cir.) (en banc).
  • 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. Picture Patents v. Aeropostale, 788 F.Supp.2d 127 (S.D.N.Y.), aff’d, 469 Fed. Appx. 912 (Fed. Cir.), denied, 133 S. Ct. 652.
  • Defended Gillette in interlocutory appeal of denial of motion to stay. Dollar Shave Club v. Gillette (3d 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. General Protecht Group v. U.S. I.T.C., 619 F.3d 1303 (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 a new law regarding patent damages. Stryker v. Intermedics Orthopedics, 96 F.3d 1409 (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. Braun v. Dynamics Corp., 975 F.2d 815 (Fed. Cir.).
  • Represented patentee in case involving human infant vaccine. North American Vaccine, Inc. v. American Cyanamid Co., 7 F.3d 1571 (Fed. Cir.).
  • Represented patentee in case involving zeolite catalysts. The case was settled after a trial for $120 million. Mobil Oil v. Amoco Chemical, 779 F. Supp. 1429 (D. Del.), aff’d without opinion, 980 F.2d 742 (Fed. Cir.).
• Competitor Litigation
  • Represented GE in asserting patents involving wind turbine generator control systems and software. General Electric v. Siemens Gamesa Renewable Energy (D. Mass.).
  • 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 which returned a verdict that all asserted claims were invalid as obvious. Leviton Mfg. v. Pass & Seymour (E.D.N.Y.).
  • Represented Gillette in asserting a patent 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. Dollar Shave Club (D. Del.).
  • Represented Gillette in suits asserting a patent on a razor cartridge connector. Gillette v. Edgewell (ITC & D. Conn.).
  • Represented Gillette in discovery proceeding relating to a razor blade development. Gillette v. Pace Shave (N.D. Cal.).
  • Defended Gillette in a suit involving a patent on a razor cartridge connector. Dorco v. Gillette (D. Del.).
  • Represented patentee in suits involving systems for facilitating credit card authentication during Internet transactions. SecureBuy v. CardinalCommerce (D. Del.) and SecureBuy v. CardinalCommerce (D. Miss.).
  • Represented PLI in asserting patents concerning in-situ repair of underground pipes. Perma-Liner Indus. v. Nuflow Techs. (D. Del.).
  • Represented accused infringers in suits involving patent infringement, trade secret misappropriation and breach of contract allegations concerning flat screen glass manufacturing technology. Corning v. Shenzhen Xinhao Photoelectric Technology and Dongguan Jingbo Optoelectronics (N.D.N.Y.).
  • Represented patentee in case involving software for delivery of targeted advertising over the internet. Augme Techs. v. Tacoda (S.D.N.Y.).
  • Obtained claim construction rulings favorable to patentee on 10 patents relating to ground fault circuit interrupters. Pass & Seymour v. Hubbell, 2011 WL 32433, 2009 WL 7296903 (N.D.N.Y.).
  • Represented patentee in alleging infringement of six patents by China-based manufacturers of GFCIs and their U.S. distributors. Pass & Seymour v. General Protecht Group (N.D.N.Y.).
  • Defended Genesys against claims of infringement of a patent relating to computer systems for collaborative editing and video conferencing. Edisync Systems v. Genesys Conferencing (D. Col.).
  • Represented patentee in case relating to cellular telecommunications. ISCO v. Conductus (D. Del.).
  • 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. Data General v. IBM, 93 F. Supp. 2d 89 (D. Mass.).
  • Represented patentee in declaratory judgment action on hip implant patent. Smith Nephew-Richards v. Stryker (E.D. Tenn.).
  • Defended Bard against claim of infringement of a patent relating to balloon dilation catheters; obtained summary judgment of noninfringement. Advanced Cardiovascular Systems v. C.R. Bard, (N.D. Cal.).
• ITC Investigations
  • Represented General Electric in post-decision proceedings in the ITC. Certain Variable Speed Wind Turbine Generators, Inv. No. 337-TA-1218 (ITC).
  • Represented Gillette in asserting patent relating to handle-cartridge connectors. Certain Shaving Cartridges, Inv. No. 337-TA-1079 (ITC).
  • Defended General Electric against allegations of infringement of patents on compact fluorescent lamp ballast circuitry. Certain Dimmable Compact Fluorescent Lamps, Inv. No. 337-TA-830 (ITC).
  • Represented patentee in asserting patents involving LED light conversion and packaging technology; patent was held valid, enforceable and infringed after trial. Certain Light-Emitting Diodes, Inv. No. 337-TA-784 (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 Ground Fault Circuit Interrupters, Inv. No. 337-TA-739 (ITC).
  • Represented world’s largest manufacturer of digital televisions and flat screen monitors defending against allegation of infringement of 10 patents. Certain Display Devices Including Digital Televisions And Monitors, Inv. No. 337-TA-713 (ITC).
  • Defended Hewlett-Packard against allegation of infringement of patents relating to disk drive manufacturing. Certain Hard Disk Drives, Inv. No. 337-TA-616 (ITC).
  • 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 Ground Fault Circuit Interrupters, Inv. No. 337-TA-615, 2009 WL 962585 (ITC), aff’d-in-part, 619 F.3d 1303 (Fed. Cir.).
  • Represented Ericsson in asserting patents and defending against claims of patent infringement relating to cellular telephones. Certain Wireless Communication Devices, Inv. No. 337-TA-583 (ITC) and Certain Wireless Communication Equipment, Inv. No. 337-TA-577 (ITC).
  • Represented patentee on appeal to the International Trade Commission; overturned ALJ holding of no domestic industry. Certain Male Prophylactic Devices, Inv. No. 337-TA-546 (ITC).
  • Defended 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. Certain Personal Watercraft, Inv. No. 337-TA-452 (ITC).
• Litigation Against Non-Practicing Entites
  • Defended Gillette in a patent infringement suit involving a razor cartridge connector. Sphere Inc. v. Gillette (D. Del.).
  • Defended IBM in a patent infringement suit involving system for providing public warnings over the cellular telephone network. CellCast v. United States (Ct. Fed. Cl.).
  • Defended IBM in patent infringement suits involving patents concerning internet commerce. Arunachalam v. IBM (D. Del. & N.D. Cal.).
  • Defended IBM in patent infringement suit involving computer systems for providing disaster warnings. Disaster Warning Network v. United States (Ct. Fed. Cl.).
  • Defended accused infringer in patent infringement suit involving online electronic trading platforms and evaluation tools. com v. Debt Exchange (S.D.N.Y.).
  • Defended IBM and obtained summary judgment of patent invalidity under 35 U.S.C. § 101 because the claims were directed to an abstract idea. Williamson v. Citrix (C.D. Cal.).
  • Defended Hewlett-Packard against allegation that its media access controllers infringed patents. Fenner Investments v. Dell (E.D. Tex).
  • Defended IBM and obtained an early dismissal of a patent infringement suit. Coding Tech v. IBM (E.D. Tex).
  • 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. Compuware v. IBM (E.D. Mich.).
  • Defended IBM against claims of infringement of patents relating to computer virus detection. Digital Development v. IBM (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. 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 GE in “rocket docket” against claim of infringement of patent relating to repair of nuclear reactors; defeated motion for preliminary injunction. MPR Assocs. v. General Electric (E.D. Va.).
• Patent Trial And Appeal Board
  • Represented Gillette in a PGR and ex parte reexaminations on patents relating to shaving systems.
  • Represented 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.
• Amicus Briefs
  • Authored amicus briefs of IPO concerning patent subject matter eligibility. American Axle & Mfg. v. Neapco Holdings (Fed. Cir.) and Athena Diagnostics v. Mayo Collaborative Servs.(S.Ct.).
  • Authored amicus briefs of IBM relating to divided infringement, permanent injuctions in patent cases, and 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 brief of NYIPLA, which was adopted by the Federal Circuit and affirmed by the U.S. Supreme Court. Hyatt v. Kappos, 625 F.3d 1320 (Fed. Cir.).
  • 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. Festo Corp. v. Shoketsu, 234 F.3d 558 (Fed. Cir.) and 535 U.S. 722.

• Recognized by The Legal 500 US for his work in Intellectual Property and Patents: Litigation since 2016.
• Recognized by The Best Lawyers in America since 2005 for Intellectual Property Litigation, Patent Litigation, and Patent Law; twice named “Lawyer of the Year” in New York City for Litigation – Patent, a distinction based on peer-review surveys.
• Recognized in IAM Patent Litigation 250 – World’s Leading Patent Litigators.
• Recognized by the New York Law Journal as a Top-Rated Lawyer in Intellectual Property.
• Featured in Who’s Who in American Law.
• Holds Martindale-Hubbell's highest rating, “AV®-Preeminent™,” for professional excellence and ethical standards.
• Served as a member of the George Washington Law Review during law school.
• Publications
  • “The All Substantial Rights Doctrine: A Second Look,” Fordham Intellectual Property, Media and Entertainment Law Journal, 2020. 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. Co-Author.
• Speaking Engagements
  • “Functional Claiming,” Federal Circuit Bar Association Bench & Bar Conference, 2023.
  • “Virtual Litigation in a COVID World,” Engelberg Center Live, 2020.
  • “ITC Webinar Series 2019: Part I – Your ITC Primer,” law firm webinar, 2019.
  • “NJIPLA Patent Litigation Seminar,” New Jersey Intellectual Property Law Association, 2016.
  • “The Latest on Means-Plus-Function Claims: One Year After Williamson v. Citrix,” Intellectual Property Owners Association, 2016.
  • “Section 112 and Functional Claiming,” Federal Circuit Bar Association, 2016
  • “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.
  • “NJIPLA's 2015 Electronics, Telecommunications & Software Patent Practice Update Event,” New Jersey Intellectual Property Law Association, 2015.
  • “The PTAB - Understanding the Odds and How to Maximize Them,” Intellectual Property Owners Association, 2015.
  • “Intellectual Property Protection in China from A-Z,” New York Intellectual Property Law Association and the New Jersey Intellectual Property Law Association, 2015.
  • “Practical Strategies for European Companies in U.S. Patent Litigation,” law firm event, 2014.
  • “NJIPLA Patent Litigation Seminar,” New Jersey Intellectual Property Law Association, 2014.
  • “Focusing and Resolving Disputes: Pretrial Practice and The Role of Mediation,” New York Intellectual Property Law Association and The Federal Circuit Bar Association, 2014.