Mark A. Chapman represents high-technology and medical device clients in patent infringement litigation and related patent office proceedings, as well as opinions, licensing and transactions.
Mark has experience with all phases of patent infringement litigation, including bench and jury trials in district courts, International Trade Commission (ITC) cases, and appeals to the Federal Circuit.
He also has experience with contentious proceedings in the patent office, including inter partes review proceedings before the Patent Trial and Appeal Board (PTAB) and inter partes and ex parte reexamination proceedings.
He has also coordinated and supported foreign patent litigation and related patent office proceedings, including trials and appeals, working closely with patent litigation counsel in Canada, the United Kingdom, the Netherlands, Germany, France and Italy.
Over the course of his career, Mark has represented many technology and medical device clients, including Airbus, Bosch, Boston Scientific, Kawasaki, Medinol, Olympus, Sony and Toyota, as well as many smaller technology companies.
Mark’s technical background is in engineering physics and his patent experience has involved a wide variety of technologies, including automotive systems (GPS navigation systems, acceleration sensors, airbag systems, blind-spot monitoring systems, collision-warning systems, window pinch systems), consumer electronic devices (DVRs, Blu-ray/DVD players, gaming consoles, TVs, cameras), aircraft systems (hypoxic fire-prevention systems, aircraft cabin electrical systems), software (interactive video systems, user interfaces, online poker systems, video surveillance systems), medical devices (coronary stents, endodontic instruments), and analytic equipment (mass spectrometers, high-throughput experimentation equipment).
Mark previously was a partner at Kenyon & Kenyon and Andrews Kurth Kenyon. Early in his career, before joining Kenyon, Mark practiced transactional corporate and securities law at Sullivan & Cromwell. Prior to that, he served as a law clerk to the Honourable John C. Major, a Justice of the Supreme Court of Canada in Ottawa.
- Represents Kawasaki Rail Car in two inter partes review proceedings regarding video systems in subway cars, including presenting Kawasaki’s arguments at PTAB oral hearings. The PTAB found all claims of the challenged patent to be unpatentable. Kawasaki Rail Car, Inc. v. Scott Blair, IPR2017-00117 and IPR2017-01036 (P.T.A.B.).
- Represents Toyota in patent litigations regarding side airbag systems.
- Represented KID-Systeme (Airbus subsidiary) in patent and breach of contract litigation regarding aircraft cabin electrical systems.
- Represents Airbus in patent litigation regarding hypoxic fire-prevention systems, as well as related inter partes reexamination proceedings.
- Represents Synvina in a Federal Circuit appeal by DuPont and Archer-Daniels-Midland from the PTAB’s inter partes review decision upholding the validity of Synvina’s patent directed to processes for producing furan dicarboxylic acid.
- Represented Sony in an ITC patent case brought by ARRIS accusing Sony PlayStation gaming consoles, TVs, mobile phones and tablets, and the PlayStation Vue service of infringement, as well as related inter partesreview proceedings.
- Represented Toyota in patent litigation regarding occupant-classification systems and blind-spot monitoring systems, as well as related inter partes review proceedings.
- Represented an alliance of inventor groups pro bono in a Supreme Court amicus curiae brief regarding laches in patent cases.
- Represented Sony in a patent litigation regarding interactive video technology, as well as related inter partes reexamination proceedings. Secured the rejection of hundreds of patent claims in the reexaminations, as well as two favorable Markman decisions in court for two distinct patent families, which led to a favorable settlement.
- Represented Sony in an ITC case and related Federal Circuit appeal of inter partes review proceedings regarding patents related to 3D camera technology. The Federal Circuit affirmed the successful IPR decisions.
- Represented Bosch in a patent litigation regarding video surveillance technology.
- Secured a dismissal for lack of standing that led to a favorable settlement.
- Represented Bosch in patent litigations regarding automotive acceleration and angular sensor systems. Secured a favorable Markmandecision which led to a favorable settlement.
- Represented Deutsche Telekom and foreign T-Mobile mobile carriers in a patent litigation regarding international paging technology. Secured a dismissal for lack of personal jurisdiction, which was affirmed on appeal.
- Represented Medinol in a patent litigation regarding coronary stents and a related Federal Circuit appeal.
- LLB and BCL, McGill University Faculty of Law, with Great Distinction, Senior Editor, McGill Law Journal, 1995
- BS, Engineering Physics, Queen’s University, First Class Honours, 1991
- New York
- US District Court, Eastern District of New York
- US District Court, Southern District of New York
- US District Court, Eastern District of Texas
- US District Court, Eastern District of Michigan
- US Court of Appeals, Federal Circuit
- US Supreme Court
- Supreme Court of Canada
- New York Intellectual Property Law Association, Amicus Curiae Committee
Rate : $$$$