Mark J. Abate

Mark Abate is a senior partner of the firm and leads the technology Intellectual Property Litigation practice in New York. He is widely recognized as one of the nation’s leading IP lawyers. U.S. News-Best Lawyers twice recognized Mark as its New York City patent litigation “Lawyer of the Year.” Chambers USA refers to Mark as “a zealous advocate and excellent litigator with a warm disposition” and “an accomplished and respected patent litigator” and notes he “is respected by judges,” “sought after for his lengthy experience before the ITC” and “has superb judgment, is a strategic thinker and a master in technical matters.” Chambers USA further describes Mark’s background in patent law and litigation as “impeccable."  IAM Patent Litigation 1000 – The World’s Leading Patent Professionals refers to Mark as “a most sought-after trial lawyer,” “a discerning choice for hard-fought battles,” and notes “he consistently secures favorable results.”

Mark concentrates his practice on trials and appeals of patent infringement cases, and has experience in matters involving electronics, computers, software, consumer products, material science, financial systems and electrical, mechanical and medical devices. He has successfully tried cases in the U.S. district courts and the U.S. International Trade Commission and has argued before the U.S. Court of Appeals for the Federal Circuit.

Mark’s recent trial win for Pass & Seymour, securing a rare jury verdict of patent invalidation due to obviousness, was profiled in a Law360 article titled “How They Won It — Goodwin Flips Script To Turn Contract Row Into Patent Win.” The victory also earned him a spot on The American Lawyer’s Litigators of the Week list. In addition, Mark’s successful representation of IBM in Williamson v. Citrix Online, where the Federal Circuit made new law concerning means-plus-function claims, was hailed as a “milestone case” by Managing IP, was ranked fourth among the decade's "blockbuster decisions that have shaped patent law" by Law360, and resulted in Goodwin's recognition as IP Group of the Year by Law360. Mark also helped secure the Patent Trial and Appeal Board’s first precedential decision in SecureBuy v. CardinalCommerce, a ruling described as a “first under the America Invents Act” in the Law360 article “PTAB Issues First Precedential Designation for AIA Rulings.” A recent appeal resulting in an award of attorneys' fees to Mark’s client IBM was profiled in the Law360 article “Fed. Cir. Says ‘Scandalous’ Conduct Calls For Atty Fees."

Mark is a past-President of both the New York Intellectual Property Law Association and the New Jersey Intellectual Property Law Association and is a board member of the Federal Circuit Historical Society. He served as a law clerk for Chief Judge Howard T. Markey of the Federal Circuit, an experience described in the Law.com article "Circle of Friends | Corporate Counsel" as providing a “level of comfort” and “home court advantage” when appearing before the Federal Circuit.

Mark’s experience includes:

• Secured a defense jury verdict of patent invalidity due to obviousness, an exceedingly rare outcome, in Leviton Mfg. v. Pass & Seymour in the Eastern District of New York
• Successfully represented Gillette in Gillette v. Dollar Shave Club in the District of Delaware and a related IPR, arbitration and Third Circuit appeal
• Successfully represented IBM in Williamson v. Citrix in which the Federal Circuit sat en banc and made new law concerning means-plus-function claims. This decision provides grounds to challenge functional claims in software patents and was recognized as one of the most important patent law decisions of the decade
• Successfully represented IBM in obtaining a summary judgment that it owned patents obtained by a former employee in Picture Patents v. Aeropostale, Inc. in the Southern District of New York. Mark successfully defended this decision on appeal and in the U.S. Supreme Court
• Successfully opposed institution of three petitions for Covered Business Method review in the U.S. Patent and Trademark Office in SecureBuy v. CardinalCommerce. That case made new law and resulted in the first precedential decision of the Patent Trial And Appeal Board
• Successfully tried Certain Ground Fault Circuit Interrupters at the ITC. The administrative law judge ruled in favor of Mark’s client and against China-based manufacturers of GFCIs and their U.S. distributors finding all six asserted patents valid, enforceable and infringed. Mark also successfully tried Certain Light Emitting Dioxides where the ALJ judge held the asserted patent valid, enforceable and infringed
• Successfully argued on behalf of IBM, in what was then a case of first impression, that a district court ruling on claim construction was entitled to collateral estoppel. Authored amicus briefs that have been cited by the Federal Circuit and followed by the U.S. Supreme Court. Mark also made new law regarding patent infringement damages in two Federal Circuit appeals

Mark is a past-President of the NYIPLA, a past-President of the NJIPLA, a former member of the Federal Circuit Bar Association Board of Directors, a member of the Federal Circuit Historical Society Board of Trustees, a Fellow of the American Bar Foundation, a former member of the NYU Engelberg Center on Innovation Law and Policy Advisory Board, and a former member of the U.S. Court of Federal Claims Advisory Council.

Mark has been recognized by The Legal 500 US for his work in Intellectual Property and Patents: Litigation since 2016. He has been recognized by The Best Lawyers in America since 2005 for his work in Intellectual Property Litigation, Patent Litigation, and Patent Law; The Best Lawyers in America also twice named him “Lawyer of the Year” in New York City for Litigation - Patent, a distinguished recognition based on a survey of legal peers in his community and practice area. Mark has been selected for inclusion in Chambers USA since 2006, as well as Who’s Who in American Law. He was voted by his peers as one of the world’s leading patent lawyers in the Guide to the World’s Leading Patent Law Experts (Managing Intellectual Property) since 2015, in the Guide to the World’s Leading Patent Law Practitioners, in IAM Patent Litigation 250 – World’s Leading Patent Litigators, and in IAM Patent 1000–The World’s Leading Patent Professionals since 2014. He holds Martindale-Hubbell's highest rating of “AV®-Preeminent™” and was selected by the New York Law Journal as a Top Rated Lawyer in Intellectual Property. While attending law school, Mark was a member of the George Washington Law Review.

• Speaker, “Functional Claiming,” Federal Circuit Bar Association Bench & Bar® Conference, 2023
• Co-Author, "The All Substantial Rights Doctrine: A Second Look," Fordham Intellectual Property, Media and Entertainment Law Journal, 2020
• Speaker, “Virtual Litigation in a COVID World,” Engelberg Center Live, 2020
• Speaker, “ITC Webinar Series 2019: Part I – Your ITC Primer,” Goodwin Webinar, 2019
• Co-Author, “Standing with a Bundle of Sticks: The All Substantial Rights Doctrine in Action,” Fordham Intellectual Property, Media and Entertainment Law Journal, 2018
• Co-Author, “How to win your case when you win it and when you lose it: Strategies to avoid the impact of ITC exclusion orders,” AIPLA Quarterly Journal, 2016
• Speaker, “NJIPLA Patent Litigation Seminar,” New Jersey Intellectual Property Law Association, 2016
• Speaker, “The Latest on Means-Plus-Function Claims: One Year After Williamson v. Citrix,” Intellectual Property Owners Association, 2016
• Speaker, “Section 112 and Functional Claiming,” Federal Circuit Bar Association, 2016
• Speaker, “The New World Order: Current Developments in Challenging and Defending Patents in the PTAB,” New York Intellectual Property Law Association and New Jersey Intellectual Property Law Association, 2015
• Speaker, “NJIPLA's 2015 Electronics, Telecommunications & Software Patent Practice Update Event,” New Jersey Intellectual Property Law Association, 2015
• Speaker, “The PTAB - Understanding the Odds and How to Maximize Them,” Intellectual Property Owners Association, 2015
• Speaker, “Intellectual Property Protection in China from A-Z,” New York Intellectual Property Law Association and the New Jersey Intellectual Property Law Association, 2015
• Speaker, “Practical Strategies for European Companies in U.S. Patent Litigation,” Goodwin Event, 2014
• Speaker, “NJIPLA Patent Litigation Seminar,” New Jersey Intellectual Property Law Association, 2014
• Speaker, “Focusing and Resolving Disputes: Pretrial Practice and The Role of Mediation,” New York Intellectual Property Law Association and The Federal Circuit Bar Association, 2014