Mark J. Abate
Areas of Practice
Mark Abate is a partner in the firm’s Litigation Department and a member of its IP Litigation Practice. He joined Goodwin Procter in 2007.
Work for Clients
Recognized by Chambers USA as one of the nation’s foremost IP lawyers, Mr. Abate concentrates his practice on trials and appeals of patent infringement cases. He has particular expertise in electronics, computers and computer software, financial systems, chemical compositions and processes, and medical devices. Mr. Abate has tried cases to their successful conclusions in U.S. district courts and has handled appeals before the U.S. Court of Appeals for the Federal Circuit and matters before the International Trade Commission. In the case of TM Patents v. IBM, Mr. Abate successfully argued in what was then a case of first impression that a district court ruling on claim construction was entitled to collateral estoppel. He also authored the amicus brief of IBM, Ford and Kodak that was followed and cited by the Federal Circuit in the landmark en banc case of Festo v. Shoketsu. In two other appeals before the Federal Circuit, Mr. Abate’s arguments created new law regarding patent infringement damages. In eBay v. Mercexchange, the Supreme Court echoed the arguments made in an amicus brief written by Mr. Abate. In addition to litigation work, Mr. Abate counsels clients on a wide range of intellectual property matters, including preparing opinions used by clients to defend against allegations of willful infringement. Mr. Abate’s selected reported cases include: - eBay v. MercExchange, LLC, 126 S.Ct. 1837 (2006); authored amicus...more »
Recognized by Chambers USA as one of the nation’s foremost IP lawyers, Mr. Abate concentrates his practice on trials and appeals of patent infringement cases. He has particular expertise in electronics, computers and computer software, financial systems, chemical compositions and processes, and medical devices. Mr. Abate has tried cases to their successful conclusions in U.S. district courts and has handled appeals before the U.S. Court of Appeals for the Federal Circuit and matters before the International Trade Commission. In the case of TM Patents v. IBM, Mr. Abate successfully argued in what was then a case of first impression that a district court ruling on claim construction was entitled to collateral estoppel. He also authored the amicus brief of IBM, Ford and Kodak that was followed and cited by the Federal Circuit in the landmark en banc case of Festo v. Shoketsu. In two other appeals before the Federal Circuit, Mr. Abate’s arguments created new law regarding patent infringement damages. In eBay v. Mercexchange, the Supreme Court echoed the arguments made in an amicus brief written by Mr. Abate. In addition to litigation work, Mr. Abate counsels clients on a wide range of intellectual property matters, including preparing opinions used by clients to defend against allegations of willful infringement. Mr. Abate’s selected reported cases include: - eBay v. MercExchange, LLC, 126 S.Ct. 1837 (2006); authored amicus brief of IBM.
- Lab Corporation of America v. Metabolite Labs Inc., 126 S. Ct. 2976 (2006); authored amicus brief of IBM.
- Festo Corp. v. Shoketsu, 535 U.S. 722 (2002); authored amicus brief of IBM, Ford, Kodak, DuPont, Agere and Financial Services Roundtable.
- Festo Corp. v. Shoketsu, 234 F.3d 558 (Fed. Cir. 2000) (en banc); authored amicus brief of IBM, Ford and Kodak that was followed and cited by the court.
- TM Patents et al. v. IBM, 72 F. Supp. 2d 370 (S.D.N.Y. 1999), 121 F. Supp. 2d 349 (S.D.N.Y. 2000), 136 F. Supp. 2d 209 (S.D.N.Y. 2001); represented IBM against claim of infringement of four patents relating to RAID storage, memory control and data routing; at Markman hearing, successfully argued, 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 Markman ruling, patentee withdrew two patents; summary judgment of non-infringement granted as to other two patents.
- Data General v. IBM, 93 F. Supp. 2d 89 (D. Mass. 2000); represented IBM against claim of infringement of 11 complex computer patents and in asserting counterclaims of infringement involving 7 patents relating to RAID storage, computer manufacturing and graphical user interfaces.
- Stryker Corp. v. Intermedics Orthopedics, Inc., 96 F.3d 1409 (Fed. Cir. 1996); represented patentee on patent relating to hip implants, awarded $72 million in damages, increased damages and attorney fees after trial; created new law regarding patent damages.
- North American Vaccine, Inc. v. American Cyanamid Co., 7 F.3d 1571 (Fed. Cir. 1993); represented patentee on appeal, reversal of holding of patent invalidity.
- Braun Inc. v. Dynamics Corp. of America, 975 F.2d 815 (Fed. Cir. 1992); represented DCA on appeal 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; created new law regarding patent damages.
- Mobil Oil Corp. v. Amoco Chemical Co., 779 F. Supp. 1429 (D. Del. 1991), aff'd without opinion, 980 F.2d 742 (Fed. Cir. 1992); represented patentee in case involving zeolite catalysts, case settled after trial for $120 million.
- Advanced Cardiovascular Systems v. C.R. Bard, Inc., 26 USPQ2d 1304 (N.D. Cal. 1992); defended Bard against claim of infringement of a patent relating to balloon dilation catheters; summary judgment of noninfringement.
Mr. Abate’s selected unreported and pending cases include: - In the Matter of Certain Ground Fault Circuit Interrupters And Products Containing The Same, Investigation No. 337-TA-615 (1TC 2007)
- In the Matter of Certain Wireless Communication Devices, Components Thereof, And Products Containing The Same, Investigation No. 337-TA-583 (ITC 2006)
- In the Matter of Certain Wireless Communication Equipment, Articles Therein, And Products Containing The Same, Investigation No. 337-TA-577 (ITC 2006)
- In the Matter of Certain Male Prophylactic Devices, Investigation No. 337-TA-546 (ITC 2005); represented patentee on appeal to ITC commissioners, successfully overturned ALJ holding of no domestic industry.
- Martek Biosciences Corp. v. Nutrinova Inc. Ltd., (D. Del. 2005); defended Ideasphere Inc. against claim of infringement of patents relating to compositions for the treatment of heart disease.
- Novogen Research Pty Ltd. v. Natural Alternatives, Inc., (S.D.N.Y. 2005); defended NAI against claim of infringement of a patent relating to compositions for the treatment of symptoms associated with menopause.
- Compuware Corp. v. IBM, (E.D. Mich 2004); represented IBM in defending 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 Corp. v. IBM, (S.D.N.Y. 2004); defended IBM against claims of infringement of patents relating to computer virus detection.
- Edisync Systems, Inc. v. Genesys Conferencing, Inc., (D. Col. 2003); defended Genesys against claims of infringement of a patent relating to computer systems for collaborative editing and video conferencing.
- ISCO Int’l v. Conductus, (D. Del. 2003); represented patentee in patent infringement case relating to cellular telecommunications.
- In the Matter of Certain Personal Watercraft and Components Thereof, Investigation No. 337-TA-452 (ITC 2002); represented Bombardier in action brought by Yamaha alleging infringement of 11 patents. Successfully obtained dismissal of 6 of the patents before trial through motions for summary determination of non-infringement, invalidity or lack or jurisdiction (no domestic industry). Case settled after trial on remaining five patents.
- OCPC v. Twin Laboratories, Inc., (D. Del. 2002); defended Twin Lab against claim of infringement of patent relating to compositions for promoting development of lean body mass.
- Fortress Systems L.L.C. v. Twin Laboratories, Inc., (D. Neb. 2000); defended Twin Lab against claims of infringement of patents relating to compositions for promoting development of lean body mass; defeated motion for preliminary injunction.
- Smith Nephew-Richards v. Stryker Corp., (E.D. Tenn. 1995); represented patentee in declaratory judgment action on patent relating to hip implants.
- MPR Associates Inc. v. General Electric Co., (E.D. Va. 1995); defended GE in “rocket docket” against claim of infringement of patent relating to repair of nuclear reactors; defeated motion for preliminary injunction.
- Quick v. Polly, (E.D.N.Y. 1994)
- Spancrete Mach. Corp. v. RH&M Mach. Co., 34 F.3d 1080 (Fed. Cir. 1994) (unpublished); represented patentee on appeal, obtained reversal of jury verdict of noninfringement.
less »
Professional Activities
Mr. Abate has been selected for inclusion in Chambers USA: America’s Leading Lawyers for Business, as well as Who’s Who in American Law. He was voted by his peers as one of the “World’s Leading Patent Law Experts” (Guide to the World’s Leading Patent Law Experts, Managing Intellectual Property, 2005). In addition, Mr. Abate is a Fellow of the American Bar Foundation. Mr. Abate has chaired numerous committees and subcommittees for state, local and national bar associations, including the American Bar Association, American Intellectual Property Law Association, New York Intellectual Property Law Association and Federal Circuit Bar Association. He currently serves as President Elect of the NYIPLA and as a member of the AIPLA Amicus Committee, and formerly was a member of the Board of Governors of the Federal Circuit Bar Association.
Publications/Presentations
Mr. Abate has authored numerous articles for a variety of industry publications, including American Intellectual Property Law Association Quarterly Journal, Federal Circuit Bar Journal, IP Litigator, The Journal of World Intellectual Property, NYSBA Bright Ideas, NYIPLA Bulletin, National Law Journal, Mealey’s Litigation Report Intellectual Property, and Computer Litigation Journal. He has also been a featured speaker at seminars, meetings and conferences sponsored by organizations such as the American Intellectual Property Law Association, New York Intellectual Property Association, American Conference Institute, IQPC, Central New York Patent Association, New Jersey Intellectual Property Law Association, and joint seminars of the NYIPLA, NJIPLA, CPLA and PIPLA.
Professional Experience
Prior to joining Goodwin Procter, Mr. Abate was a partner at Morgan & Finnegan LLP. He also served as a law clerk to Chief Judge Howard T. Markey of the U.S. Court of Appeals for the Federal Circuit from 1988 to 1990. Mr. Abate also worked as a patent examiner at the U.S. Patent and Trademark Office.
Bar and Court Admissions
Mr. Abate is admitted to practice in New York and New Jersey, and before the U.S. Supreme Court, the U.S. Court of Appeals for the Federal Circuit, and the U.S. District Courts for the Southern and Eastern Districts of New York. He is registered to practice before the U.S. Patent and Trademark Office.
Education
J.D., George Washington University Law School, 1988 (high honors, Order of the Coif)
B.S., Rutgers University, 1984 (highest honors, Tau Beta Pi) While attending law school, Mr. Abate was a member of the George Washington Law Review.
|