Overview

Mark is a registered patent attorney and senior counsel in the firm's Intellectual Property practice group. Until 2007 Mark had been the practice group leader for the Intellectual Property practice group.

He focuses in the management, prosecution and enforcement of all aspects of intellectual property, including technology transfer licensing and joint venture agreements; patent and trademark validity and infringement opinions; intellectual property audits; patent application preparation; intellectual property litigation; foreign patents; and trade secrets. Mark has negotiated numerous pharmaceutical development and license agreements and participated in several significant and successful patent litigations.

Mark is an investing member of the Ohio Tech Angels Fund (OTAF III) and the Dayton Development Coalition's Entrepreneur Signature Program.

Technical Experience
Polymers, adhesives, pharmaceuticals, immunoassays, papermaking, photographic and dye chemistry, food machinery, alloys, metallurgy, and materials processing.

Experience
  • Participated in the sale of YSI, Inc. to ITT. The transaction exceeded $100 million.
  • Participated in the representation of Eurand, Inc. in a breach of contract and misappropriation of trade secrets action against UCB that resulted in a settlement in excess of $10 million.
  • Represented Shell Oil Company in a major patent infringement case that went to trial in the U.S. District Court for the Northern District of Ohio. The University of Akron sued Shell for patent infringement over a star polymer motor oil additive. At the close of the University's case, the court ruled in Shell's favor.
  • With a Miami trial lawyer, successfully defended Zapata Industries at the district court and before the Court of Appeals for the Federal Circuit in an infringement dispute with W.R. Grace over oxygen scavenger chemicals used in bottle cap liners.
  • Assembled a patent portfolio including in excess of 200 patents for protecting an instant photographic product that was developed by The Mead Corporation with an investment in excess of $250 million. Represented Mead's successor in the eventual sale of that business to Kodak.
  • Represented Eurand, Inc. in negotiations with GlaxoSmithKline regarding the development of an rapidly disintegrating tablet dosage of a GSK proprietary active that includes milestones totaling in excess of forty million dollars.
  • Negotiated a development and license agreement between Eurand and ECR regarding formulations of Amrix and obtained patent protection for the formulation. ECR sold its rights in the product to Cephalon who launched the product and successfully litigated the patent.
  • Negotiated a development and license agreement between Eurand and Axcan for a pancrelipase preparation.
  • With trial counsel, defended MeadWestvaco in a patent infringement action in which Thompson Hine successfully moved on behalf of MeadWestvaco to have the case dismissed for lack of standing. This decision was affirmed by the Federal Circuit. The decision is reported at 134 F.3d 1481.
  • With trial counsel, represented Pro-Mold Tool & Die Co. in an action for patent infringement against Great Lakes Plastics. On summary judgment, the U.S. District Court for the Northern District of Ohio held the patent invalid. On appeal that was judgment reversed by the Federal Circuit, which held that the district court had failed to consider Pro-Mold's commercial success. This decision is reported at 75 F.3d 1568.
  • With trial counsel, defended Intertape Polymer in an unfair competition litigation regarding blue premium painter's masking tape.
  • Representing UDRI in bringing two inter partes re-examinations regarding nanofiber reinforced composites.
Publications
  • "An Analysis of the On Sale Bar and Its Impact on the Structure and Negotiation of Development Agreements," University of Dayton Law Review, IP & Technology Issue 2004, Volume 30, Number 2
Presentations
  • "Impact of Recent Supreme Court Decisions on Licensing Negotiations," Licensing Executives Society, Vancouver B.C., October 2007
  • "Analysis of KSR and the Recent Supreme Court Patent Decisions," Ohio State Bar Association Annual Meeting, May 2007
  • "Pfaff and Its Impact on Development Agreements," National Inventor's Hall of Fame Conference, 2001
  • "Basics of Patent Licensing," University of Dayton Licensing Program, 2002
  • "Recent Trends in Licensing Intellectual Property," University of Dayton Licensing Program, 2001
  • "Negotiating Patent Licenses," University of Dayton Licensing Program, 2000
  • "The Impact of Post-Issue Prior Art on the Doctrine of Equivalents," National Council of Intellectual Property Law Association's National Inventors Hall of Fame Conference, 2000
  • "Patent Licensing Pitfalls," University of Dayton School of Law Licensing Program, 1999
  • "The Best Mode Requirement," Cincinnati Intellectual Property Law Association and Dayton Intellectual Property Law Association
  • "It is Mutiny – The Teenage Federal Circuit," National Council of Intellectual Property Law Association's National Inventors Hall of Fame Conference, 1999
  • "Japanese Patent Flooding," Technology Transfer Society
  • "Provisional Patent Application Practice," Dayton Intellectual Property Law Association
  • "Officer and Director Liability for Patent Infringement," Cincinnati Intellectual Property Law Association, Dayton Intellectual Property Law Association and Dayton Bar Association, Corporate Law Section
Distinctions
  • AV® Preeminent Rated by Martindale-Hubbell
  • Chambers USA: America's Leading Lawyers for Business, 2006 to 2017, Intellectual Property, Ohio
  • Listed in The Best Lawyers in America and recognized for more than 10 years
  • Recognized by Best Lawyers for Litigation, Patent and Patent Law "Lawyer of the Year," 2013
  • Recognized in Euromoney’s Managing Intellectual Property’s IP Stars Handbook, 2013 to 2015
  • Selected for inclusion in Super Lawyers by Ohio Super Lawyers magazine, 2005 to 2012, 2014 to 2018
  • Dayton Business Journal's Best of the Bar
Professional and Civic

Professional Associations

  • Dayton Intellectual Property Law Association

Professional Activities

  • Edison Materials Technology Center (EMTEC), Executive Committee and board member, 2011 to 2012
  • University of Dayton Law School, adjunct professor of law, 2000 to 2004
  • Dayton Intellectual Property Law Association, president, 1997 to 1999
  • University of Dayton Law School, Law and Technology Program, technical adviser, 1991 to 1992
  • Engineering and Science Foundation, board member, 2002 to present
  • Engineering and Science Hall of Fame, president, 1993
  • National Council of Intellectual Property Law Association, delegate, 1998 to 1999

Community Activities

  • Alzheimer's Association Miami Valley Chapter, board member
News