Cases
Experience: Representative Matters: Prepared
prosecuted four patent applications for Finjan, Inc., a provider of cybersecurity solutions (hardware
software) to the enterprise. The U.S. Court of Appeals for the Federal Circuit decided on January 10, 2018 that Blue Coat Systems, Inc., is liable for infringement of three of the four patents including the primary patent involved, the '844 patent, that Marc prosecuted through issuance
owned by Finjan
the court awarded approximately $39.5 million in royalty damages
Prepared
prosecuted patent applications involving data synchronization software on behalf of a software company that is currently managing a successful enforcement program. The enforcement program has earned the company close to a billion dollars. In fact, the company asserted a patent infringement litigation based on patents he drafted that achieved a $267.5 million jury award
Prepared
prosecuted patent applications involving network security software on behalf of a venture-backed provider of secure network gateway solutions. The company recently asserted a patent infringement claim based on patents he drafted that achieved a multimillion-dollar jury award
increased revenue
Prepared
prosecuted patent applications involving wireless technology (IEEE 802.11a, b, g
e) on behalf of a multinational company
Prepared
prosecuted patent applications involving search engines
document classification technology on behalf of a multinational internet company
Prepared
prosecuted patent applications involving behavior monitoring
targeted advertisements on behalf of an internet startup company
H
led several Examiner interviews
patent office appeals on behalf of companies having difficulty obtaining business method patents
Developed
managed a patent capitalization program (including invitations to license
direct negotiations) on behalf of a data
network security company
Defended a group of multinational companies at both district court level
appellate level for patent infringement involving Intel chipsets
Microsoft NetMeeting (the case has recently been publicized for its influence on the rules for patent exhaustion, Quanta v. LG Electronics, 453 F.3d 1364, 79 USPQ.2d (BNA) 1443 (Fed. Cir. 2006), rev'd, 553 U.S. 617 (2008)
Defended a startup company in patent infringement litigation for using arrival notification systems
Defended a multinational company in patent infringement litigation for semiconductor fabrication
Defended a multinational company in settlement negotiations based on a claim of patent infringement of Gilbert Hyatt patents for manufacturing
selling disk drives
Conducted a freedom-to-operate analysis of a system involving GPS technology on behalf of a multinational company
Conducted US
foreign IP due diligence reviews for a multinational company in a multinational joint development project involving GPS technology
Conducted US
foreign IP due diligence reviews for investors
VCs considering investment in startup companies
Testified as technical expert on GBICs in a federal district court trial.