Mark C. Nelson, Partner

Mr. Nelson is a partner in Sonnenschein’s Patent Litigation Practice.  He has nearly fifteen years of experience litigating large, multifaceted patent infringement cases in federal district courts and before the International Trade Commission.

Mr. Nelson's experience in patent litigation spans a number of diverse technologies, including biotechnology; semiconductor products and the processes used to make such products; telecommunications and networking; satellite communications; electronic circuitry; Internet business methods and search engines; computer software; explosives used in automobile airbags and other automotive technology; soft drink bottling technology; electric motor technology; stereo speakers; cosmetics; chemical compositions used in cosmetics, asexually reproduced plants, and asynchronous assembly techniques.  In addition, he has experience drafting and negotiating IP license agreements, counseling clients on setting up and maintaining IP licensing and/or IP capture programs, performing corporate IP due diligence, and opinion work.  He also has handled copyright, trademark and trade secret matters, and other technology-related litigation matters.

Prior to law school, Mr. Nelson served as the director of a genetics laboratory for a private hospital in Jeddah, Saudi Arabia, and before that worked as a molecular biologist for several years after college.  Mr. Nelson teaches IP Litigation as an adjunct professor at Southern Methodist University's Dedman School of Law.

Representative Experience

• Wolf Fun Hollow, LLC v. Herring Bank et al. (N.D. Texas [Dallas Div] 2010) – Lead counsel defending several banks in a patent infringement action relating to secured transactions.
   
• 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.
   
• Automated Transactions LLC v. Astoria Financial Corp. and Astoria Federal Savings & Loan Assoc., (S.D.N.Y. 2009) – Lead counsel defending Astoria in a patent infringement action involving ATM software and functionality.
   
• Tristrata Technology, Inc. v. Vivant Pharmaceuticals, LLC and BetterHealthySkin.com LLC (D. Del. 2009) – Lead counsel defending Vivant Pharmaceuticals in a multi-patent action involving the use of alphahydroxy acids in cosmetics.
   
• 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.
   
• Joao Bock Transaction Systems of Texas, LLC v. AT&T Mobility, LLC, et al. (E.D. Tex. [Tyler Division] 2009) – Defending T-Mobile U.S.A.., Inc. in a patent infringement action brought by plaintiff against multiple defendants.
   
• Personalized User Model, LLP v. Google, Inc. (D. Del. 2009) – Representing Plaintiff in a three patent action against Google involving personalized search technology.
   
• The PACid Group, LLC v. Apple, Inc., et al., (E.D. Tex. [Tyler Division] 2009) – Defending Broadcom Corp. in a patent infringement action brought by plaintiff against multiple defendants.
   
• Bedrock Computer Technologies LLC, v. Softlayer Technologies, Inc., et al., (E.D. Tex. [Tyler Division] 2009) – Defending Yahoo! Inc. in a patent infringement action brought by plaintiff against multiple defendants.  Withdrew from this representation in 2010 when Yahoo! relationship partner left firm.
   
• 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 favorably during mediation after an intensive four month effort lead by the Sonnenschein team.
   
• Pylon Mfg. Corp. v. Jamak Fabrication-Tex, Ltd., (D. Del. 2009) – Lead counsel defending Jamak in a patent infringement action brought in Delaware after Jamak filed a declaratory judgment action in N.D. Texas.  The case settled shortly after filing.
   
• Jamak Fabrication-Tex, Ltd. v. Pylon Mfg. Corp. (N.D. Tex. [Ft. Worth Division] 2009) – Lead counsel in a declaratory judgment action against Pylon Manufacturing asserting non-infringement and invalidity of Pylon’s patent.  The case settled shortly after filing.
   
• VoxPath Networks, Inc. v. Verizon Communications, Inc., et al. (E.D. Tex. [Sherman Division] 2008) – Lead counsel for Embarq Communications Corp. in a multi-patent action brought by plaintiff against multiple defendants.  The case settled (with respect to Embarq) during claim construction.
   
• Klausner Technologies, Inc. v. Verizon Wireless, et al. (E.D. Tex. [Tyler Division] 2008) – Lead counsel for Embarq Communications Corp. in a patent infringement action brought by plaintiff against multiple defendants.  The case settled shortly after filing.
   
• Robert Bosch, LLC v. Jamak Fabrication-Tex, Ltd, et al. (D. Del. 2008) –  Lead counsel for Jamak in a patent infringement suit brought by Bosch.  The case settled shortly after filing.
   
• Widevine Technologies, Inc. v. Verimatrix, Inc. (E.D. Tex. [Marshall Division] 2007) – Representing plaintiff Widevine in a two patent case against its competitor Verimatrix. The case settled shortly before trial.
   
• Geomas International Limited, et al. v. Idearc Media Services-West, Inc. (E.D. Tex. [Marshall Division] 2006) – Lead counsel for plaintiff Geomas in patent infringement lawsuit.  The case settled after a favorable claim construction ruling.
   
• Vonage Holdings Corp. v. SBC Internet Services, Inc. et al. (N.D. Tex. 2004) – Retained as lead counsel in 2007 to represent Central Telephone Company of Texas, one of a group of defendants, in a multi-patent dispute pending in the Fort Worth Division of the Northern District of Texas.  The case settled shortly before trial.
   
• Jamak Fabrication-Tex, Ltd. d/b/a Jamak Fabrication, Inc. v. Portage Plastics Corp., et al. (N.D. Tex. 2007) – Lead counsel for Jamak in declaratory judgment action for non-infringement and invalidity and accompanying state court action.  The case settled shortly after filing.
   
• 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 v. Sessa (E.D. Tex. [Tyler Division] 2006) – Lead counsel for Active Release in a copyright case.  Case settled shortly after filing.
   
• Royal Street Communications, LLC v. Leap Wireless International, Inc. and Cricket Communications, Inc., (M.D. Fla. 2006) – Lead counsel for Royal Street Communications in a declaratory judgment action.  The case was transferred to the Eastern District of Texas and proceeded with a previously filed action, MetroPCS Communications Inc. et al. v. Leap Wireless International, Inc., et al. (E.D. Tex. 2006).  Both cases settled before claim construction.
   
• MicroUnity, Inc. v. Intel Corp. and Dell, Inc. (E.D. Tex. 2005) – Represented Dell in a multi-patent dispute relating to microprocessors.  The case settled before trial.
   
• Tantivy Communications, Inc. v. Lucent Technologies, Inc., (E.D. Tex. 2004) – Represented Lucent in a multi-patent dispute relating to data communications.  The case settled shortly before trial.
   
• Vishay Dale Electronics, Inc. v. KOA Corp., et al., (N.D. Tex. 2003) – Defended a client in a patent infringement case involving resistor technology.  The case settled shortly after it was filed.
   
• 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.
   
• Intergraph Hardware Technologies Co. v. Dell Inc., et al., (E.D. Tex. 2002) – Represented Dell in a multi-patent dispute relating to microprocessor technology.  The case settled before trial.
   
• MLR, Inc. v. Nokia, Inc. (N.D. Ill. 2002) – Defended Nokia in a multi-patent suit relating to mobile phone technology.  Prevented MDL consolidation.  The case settled favorably before trial.
   
• Tristrata Technology, Inc. v. Cardinal Health, Inc., et al. (D. Del. 2002) – Defended client in a multi-patent case relating to cosmetics technology.  The case settled before trial.
   
• 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.
   
• NTP, Inc. v. Research in Motion, Inc., (E.D. Va. 2001) – Part of a team that defended RIM in a multi-patent suit relating to RIM’s Blackberry devices.  The judge summarily found some claims infringed and the jury found others were infringed.  Portions of the verdict upheld on appeal.
   
• Dynacore Holdings Corp., et al. v. U.S. Phillips Corp., et al., (E.D.N.Y. 2001) – Obtained a summary judgment of non-infringement in a patent action relating to networking.  The case was upheld on appeal.
   
• DigCom, Inc. v. Nokia, Inc. (N.D. Tex. 2000) – Defended Nokia against patent infringement allegations involving modulation technology and signal processing.  The case settled favorably before trial.
   
• 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 favorably before trial.
   
• Future Beef Operations, LLC, et al. v. Micro Beef Technologies, Inc., et al., (D. Col. 1999) – Successfully defeated declaratory judgment jurisdiction in a multi-patent case relating to micro-ingredient and feedlot technology.  Lack of jurisdiction was upheld on appeal.
   
• Affymetrix, Inc. v. Syneri, Inc. and Incyte Pharmaceuticals, Inc., (N.D. Cal. 1999) – Represented Affymetrix in the appeal of an interference decision.  Dispute settled before argument.
   
• 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 was settled on the eve of trial.
   
• Ziarno v. IBM (N.D. Ill. 1999) – Defended IBM against allegations of inducing the infringement of a patent involving online donation technology.  The case settled before trial.
   
• 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.
   
• 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.
   
• 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.
   
• 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.
   
• Southern Audio v. JBL, Inc. (M.D. La. 1997) – Obtained summary judgment for JBL against claims of infringement of a patent related to speaker design.
   
• 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.
   
• 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.

Significant Non-Litigation Representations·        

• Represented pharmaceutical company in evaluating contract and entire course of conduct with larger pharmaceutical company.  Made presentation to the client’s GC recommending 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 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. 

• Co-Chair of the ABA’s Genetics and Medical Research Committee (2005-2007).
   
• Member of the ABA, American Intellectual Property Law Association (AIPLA), Intellectual Property Section of the Dallas Bar and the DFWIPLA.
   
• Adjunct Professor of Intellectual Property Litigation, Southern Methodist University Dedman School of Law (2002, 2004, 2008).
   
• President of the Dallas-Fort Worth Intellectual Property Law Association (DFWIPLA) (2002).

• Co-author, “Questions Remain in Calculating Post-Verdict Royalties,” Practice Focus piece for In-House Texas (Part of the Texas Lawyer), August 3, 2009.
   
• Author, “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.
   
• Author, “Attorney Opinions, Waiver, and Willfulness After Seagate:  Clear as Crystal or Mud?”  State Bar of Texas, 21^st Annual Intellectual Property Law Course: The Future of IP, Austin, March 6-7, 2008.
   
• Author, “Patent Litigation and Client Counseling.”  Book chapter, Inside the Minds: Patent Litigation and Dispute Resolution.  Aspatore Books, Nov. 2007.
   
• Co-author, “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.
• 
   Author, “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, May 21-22, 2007.
   
• Co-author, “Opening Statements in Patent Cases: A Few Thoughts.” AIPLA Spring Meeting, Boston, MA, May 9-11, 2007.
   
• Author, “How to Draft a Persuasive Markman Brief.”  State Bar of Texas, 2^nd Annual Advance Patent Litigation Course: Fast-Track Litigation, Chapter 9, Lake Tahoe, July 27-28, 2006.
   
• Co-author, "Antitrust Considerations in Acquisition, Standard Setting, Essential Facilities." Intellectual Property Owners Association Annual Meeting, November 2000.
   
• Author, "Enchromatic Heteromorphisms of 9q and 16p in Normal Individuals." Cytotechnologists Convention in Sante Fe, NM, June 1990.
   
• Co-author, "Genotoxicity of the Organophosphorus Insecticide Chlorpyrifos Based on Human Lymphocyte Culture." 55 Cytologia 589, 1990.

• "Patent Reform by Judicial Action" (Venue Transfer and Damages), San Francisco and Silicon Valley, 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,” June 15, 2009 (Austin, Texas).
   
• Texas Lawyer Roundtable Series, “Intellectual Property Law," April 13, 2009 (Dallas, Texas).
   
• Texas Lawyer Roundtable Series, "Intellectual Property [Litigation]," April 3, 2008 (Dallas, Texas).
   
• "Attorney Opinions, Waiver, and Willfulness After Seagate:  Clear as Crystal or Mud?" State Bar of Texas, 21^st Annual Intellectual Property Law Course: The Future of IP, Austin, March 6-7, 2008.
   
• "Intellectual Property Practice: Today and Tomorrow." University of North Dakota presentation, 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, May 21-22, 2007.
   
• "Legal Considerations: IP Issues and Startup Documents." Association of University Technology Matters (AUTM), Advanced Topics in Startup Business in St. Louis, MO, October 26-28, 2006.
   
• "Criminal Issues in Civil Cases: Sarbanes-Oxley and Spoliations." 10th Annual Eastern District Bench/Bar Conference in 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, 2^nd 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, Texas, March 28, 2006.
   
• "Stem Cell Research: Who Will Control the Future of Medicine." Moderator, ABA Annual Meeting in Chicago, IL, 2005.
   
• "Negotiation of a Biotechnology License Agreement" presented to the Dallas Forum for BioMedical Technology, May 2002.