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MarkHenschke

Partner

"What gets me energized are those challenging matters where the quality of the lawyering can be outcome-determinative to helping clients achieve their business goals."

Overview

Biography

As a patent trial attorney with extensive first-chair experience in jury trials and Markman claim construction hearings, Marc has litigated infringement cases relating to a wide variety of products and technologies, including wireless modules and systems for IOT applications, network switches and routers, computer hardware and software, medical lasers, high-speed data cables, e-commerce applications, business methods, surgical screws, LCD displays, LANs and VLANs, laptops, cell phones, , digital cameras, video cameras, PDA devices, and radar detectors.

Marc is well-versed in strategies for coordinating the interplay between patent litigations and inter partes review proceedings (IPRs) filed with the Patent Trial and Appeal Board.

In addition, Marc has litigated numerous commercial litigation cases involving antitrust violations, trademark and copyright infringement, business torts, commercial contracts, trade secrets, non-competes, defamation, insurance coverage, technology licensing, professional malpractice, personal injury, and securities fraud.

Marc also has an extensive background in evaluating, structuring, and implementing alternative-fee arrangements for commercial and IP litigation cases.

Bar Associations

  • American Bar Association
  • Boston Bar Association, Former IP Litigation Committee Co-Chair
  • Federal Circuit Bar Association

Selected Memberships & Affiliations

  • American Intellectual Property Law Association
  • Boston Patent Law Association
Experience

Representative Experience

Patent Infringement Cases

  • Served as lead trial counsel for a patent owner in eight cases asserting a seminal “Internet of Things” patent family in the wireless space. Coordinated the client's defense against related IPR proceedings (M2M Solutions v. Sierra Wireless, et al)(D. Del.).
  • Represented one of the world’s largest retailers in multiple consolidated cases involving over 30 defendants and 10 patents directed to digital camera technologies. Won an initial stay and an ultimate dismissal for the client. (Flashpoint Technology Digital Camera Cases)(D. Del.).
  • Secured a summary judgment of infringement and a jury trial verdict of validity for several Belden patents directed to high-speed data communications cables technologies (Belden v. Superior Essex)(D. Del.).
  • Served as a member of the defense team that secured a jury verdict of non-infringement and invalidity on behalf of client Palomar on all asserted patent claims directed to aesthetic medical laser products (Candela Corp. v. Palomar Medical Technologies, Inc.)(E.D. Tex.).
  • Represented Honeywell in litigation asserting a liquid-crystal display (LCD)-related patent against a wide variety of consumer electronics products. Resulted in industry-wide licensing. (Honeywell Inc. v. Apple Computer, et al.)(D. Del.).
  • Served as a member of the trial team that secured a $49.5 million settlement on behalf of client Tulip after one week of jury trial against Dell on a patent involving computer motherboard technology (Tulip Computers Int’l v. Dell Computer Corp.)(D. Del.).
  • Briefed and argued a summary judgment motion that resulted in the dismissal of a $220 million patent infringement claim against clients Whistler and Acterna (Cincinnati Microwave, Inc. v. Whistler Corp. and Acterna Corp.)(S.D. Ohio).
  • Represented the named inventor on antiviral scanning software patents in a case involving licensing and trade secret disputes with an industry market leader. Resulted in a confidential settlement on the eve of trial (Cozza v. McAfee, Inc.)(D. Mass.).

Securities Fraud and Financial Cases

  • Served as first-chair trial counsel in defending the former CFO of Applix, Inc. in an SEC civil enforcement action alleging premature revenue recognition on two software licensing transactions in violation of GAAP. Prevailed on all scienter-based securities fraud claims via summary judgment and through a five-week jury trial (Securities and Exchange Commission v. Alan C. Goldsworthy, et al.)(D. Mass.).
  • Served as lead trial counsel for client Falotti in arguing a $90 million stock options claim before the Ninth Circuit. The matter involved a confidential settlement (Falotti v. Oracle Corp.)(N.D. Cal.).

Antitrust and Other Commercial Cases

  • Served as a member on the trial team that won a bench trial dismissal of a $60 million antitrust claim relating to computer operating systems and security software. Drafted the First Circuit briefing that resulted in upholding the dismissal on appeal (Addamax Corp. v. Open Software Foundation, Inc.)(D. Mass.).
  • Represented television actors from Cheers against a hotel chain and movie studio in a celebrity identity rights case relating to the unauthorized use of robotic likenesses. Resulted in a confidential settlement (George Wendt v. Host International Inc.)(C.D. Cal.).
  • Drafted summary judgment motions resulting in a non-infringement ruling for client Medtronic with respect to over $75 million in accused surgical-screw products (Acromed Corp. v. Medtronic, Inc.).
  • Obtained a summary-judgment motion that resulted in the dismissal of an approximately $100 million antitrust action against client Southern Natural relating to natural-gas transportation and distribution. Drafted an 11th Circuit briefing that resulted in upholding the dismissal on appeal (Gas Utilities Co. of Alabama v. Southern Natural Gas Co.).

Prior Experience

  • Foley & Lardner LLP
  • Robins, Kaplan, Miller & Ciresi, LLP
  • WilmerHale
  • Skadden, Arps, Slate, Meagher & Flom

Selected Community Activities

  • Concord-Carlisle Youth Soccer, Coach

Selected Honors

  • Selected to Super Lawyers Massachusetts: Intellectual Property Litigation
Knowledge

Selected Speaking Engagements

  • Martindale-Hubbell Counsel to Counsel Forum, “What Lies Beneath: Maximizing Transaction Value When Intellectual Property Value Drives the Deal”
  • Foley Executive Briefing Series, “IP Cases – A Year in Review: Converging Forces That Will Impact Your Business in 2010 and Beyond,” Moderator and Presenter
  • Foley Executive Briefing Series, “What Now for Patent Eligibility? In Bilski v. Kappos, the Supreme Court Rejects Machine-or-Transformation as the Sole Test,” Moderator and Presenter
  • Foley Executive Briefing Series, “Willful Patent Infringement: Will Seagate Impact Strategies for Bringing and Defending Claims?,” Moderator and Presenter

Selected Publications & Media

  • New England In-House, “Deciding on Filing a Patent Infringement Claim Requires a Thorough Up-Front Analysis”

Featured Media

Alerts

Massachusetts Paid Family Medical Leave Law: Employer Notification Obligations

Alerts

Sweeping Amendments Impact Medicaid Fraud Control Units After 40 Years

Alerts

NYS Appellate Court Holds That Whether Provision in Construction Contract Required Additional Insured Coverage Presented Question of Fact

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