Mark A. Chapman
Mark focuses his practice on representing domestic and foreign high-technology and medical device clients in patent infringement and related litigation, 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 and several appeals to the Federal Circuit. He also has experience with contentious proceedings in the patent office, including inter partes review 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 clients, including Airbus, Bosch, Boston Scientific, Medinol, Olympus, Sony and Toyota, as well as many smaller technology companies.
Mark’s technical background is in engineering physics and his experience has involved a wide variety of technologies, including various automotive systems (GPS systems, acceleration sensors, airbag systems, blind-spot monitoring systems, collision-warning systems, window pinch systems), optical cameras, Blu-ray and DVD players, coronary stents, endodontic instruments, high-throughput experimentation equipment, check imaging systems, industrial combustion burners, interactive lottery systems, online poker systems, mass spectrometers, optical fiber, video surveillance systems, and wrist-watch designs.
Early in his career, Mark practiced transactional corporate and securities law. 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 Toyota in patent litigations regarding automotive airbag systems and blind-spot monitoring systems, as well as related inter partes review proceedings.
- Represents an Airbus subsidiary in patent litigation regarding electrical connector systems in aircraft.
- Represents an alliance of inventor groups pro bono in a recent Supreme Court amicus curiae brief regarding laches in patent cases.
- Represented Sony in a patent litigation regarding interactive video technology. Secured the rejection of hundreds of patent claims in patent office reexaminations, as well as two favorable Markman decisions for two distinct patent families, which led to a favorable settlement.
- Represented Sony in an ITC case and related Federal Circuit appeal of IPR proceedings against HumanEyes Technologies regarding 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 Markman decision 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.
- Supreme Court Agrees to Hear Important Patent Venue Appeal (December 21, 2016)
- "The RAND Modified Hypothetical Negotiation," Intellectual Property Strategist (June 2013)
- "Microsoft v. AT&T," Intellectual Property Strategist (July 2007)
- “Keurig Perks Up the Topic: Canadian and U.S. Perspectives on Patent Exhaustion,” 2014 Intellectual Property Institute of Canada Annual Meeting, Halifax, Nova Scotia (October 2014)
- Aerospace, Aviation and Defense
- Technology and Emerging Companies
- Aviation Litigation
- Intellectual Property and Technology
- IP Counseling and Licensing
- Patent Litigation
- Trade Secret/Trade Dress Litigation
- Trade Secrets/Trade Dress
- LLB and BCL, 1995, with Great Distinction, McGill University Faculty of Law, Senior Editor, McGill Law Journal
- BS, 1991, Engineering Physics, First Class Honours, Queen's University
- New York
- US District Court for the Eastern District of New York
- US District Court for the Southern District of New York
- US District Court for the Eastern District of Texas
- US Court of Appeals for the Federal Circuit
- US Supreme Court
- Law Society of Upper Canada (Ontario Bar) (non-practicing)
- New York Intellectual Property Law Association, Amicus Curiae Committee