REPRESENTATIVE EXPERIENCE
Patent Litigation:
• Represented a large oil field service provider as plaintiff in a patent infringement dispute with a competitor over a hydraulic fracturing process. Jury awarded our client $98.1 million in damages and the court entered a permanent injunction enjoining the defendant from continued infringement of the improved hydraulic fracturing process. The Court of Appeals for the Federal Circuit affirmed the district court.
• Represented a major pet food manufacturer in a patent infringement dispute with a competitor. The plaintiff requested at least $2.2 million dollars in compensatory damages for the patent infringement, including an up-front payment of at least $1.5 million. The jury found the actual damages to be almost twice that amount, awarding a $3 million up-front payment component, making the total damage award approximately $3.6 million. With prejudgment interest, the final judgment exceeded $4 million.
• Represented a major supplier of cryogenic gas services as plaintiff in a request for correction of inventorship and patent infringement. The case was settled by defendants agreeing to correct the patent to include plaintiff's inventors.
• Represented a major oil company as plaintiff in a patent infringement suit involving an offshore platform design. The case settled with defendants taking a royalty-bearing license.
• Represented an offshore fabricator as plaintiff in a patent infringement dispute involving an offshore tanker mooring system. The parties settled with defendant taking a license for future activities.
• Represented a major cryogenic gas supplier as plaintiff in a trade secret case. The case settled with defendant paying a lump sum amount and taking a royalty-bearing license.
• Represented a robotics manufacturer as a plaintiff in a declaratory judgment patent infringement action. The case settled with agreement that our client was not infringing.
• Represented a trailer manufacturer as a plaintiff in a patent infringement action. The case settled with the defendant paying a lump-sum for alleged past acts of infringement.
Trademark/Trade Dress Litigation:
• Represented a Texas chain of restaurants as plaintiff in a trade dress and trade secret dispute. The trial court awarded damages and injunctive relief that included major changes to the appearance of the restaurants. The U.S. Fifth Circuit Court of Appeals and the U.S. Supreme Court affirmed the decision.
• Represented a national video rental chain as plaintiff in a trade dress and trade secret dispute. Defendants settled by agreeing to change the appearance of their video stores and paying a substantial damage award.
• Represented a national supplier of artisan bread as plaintiff in a trade dress dispute. Following a preliminary injunction hearing, the defendant settled.
• Represented a major cryogenic gas services company as plaintiff in a trademark infringement action involving domain names. Defendants settles transferring domain names to plaintiff.
• Represented a restaurant purveyor as plaintiff in a copyright and trade dress infringement action. Defendant agreed to cease immediately ongoing acts of infringement.
• Represented a number of major apparel manufacturers in a series of counterfeit trademark actions against various foreign defendants for manufacturing and selling counterfeit goods. The cases were settled frequently at, or after, the preliminary injunction hearings with the defendants agreeing to cease from the manufacture and/or sale of the good in question.
• Represented a national fast food chain as plaintiff in a trade dress infringement action. Defendant ceased operating the infringing restaurant.
• Represented a Southwest Texas Restaurant group as plaintiff in a trade dress infringement claim. Defendant settled on the first day of the preliminary injunction hearing, agreeing to change the appearance of his restaurant.
• Defended a national accounting firm against claims of unfair competition, trade secret misappropriation, and copyright and trade dress infringement. Following a brief discovery period, plaintiff released the accounting firm without payment of any monies or other significant consideration.
• Represented a Mexican television network as a complainant in an ICANN domain name dispute. Domain name transferred to our client.
PROFESSIONAL ACTIVITIES AND MEMBERSHIPS
• American Bar Association
• Antitrust Section
• Intellectual Property Law Section
• American Intellectual Property Law Association
• Dallas Bar Association
• Intellectual Property Law Section
• Houston Bar Association
• Houston Intellectual Property Law Association
• International Federation of Industrial Property Counsel
• Intellectual Property Owners Association
• State Bar of Texas
• Intellectual Property Law Section
• Litigation
PUBLICATIONS
• "Quanta Computer, Inc. v. LG Electronics -Supreme Court Limits Patentees' Ability to Sue on Downstream Combinations," Fulbright & Jaworski L.L.P. Intellectual Property Briefing, June 2008
• "Life After Moseley: The Trademark Dilution Revision Act," Texas Intellectual Property Law Journal, Vol.16, No. 1, Fall 2007, pp.125-150
• "New Patent Rules Relating To Patent Prosecution," Fulbright & Jaworski L.L.P. Intellectual Property and Technology Briefing, August 2007
• "Declaratory Judgment Jurisdiction Expanded in Patent Cases," Dallas Bar Association Headnotes Newsletter
• "Pirated and Counterfeit Goods Affect More Than Business Revenue," Houston Business Journal, April 20, 2007
• "Patent Rocket Dockets? - House Approves Bill for Pilot Program to Enhance Patent Expertise in Certain Federal District Courts," Fulbright & Jaworski L.L.P. Intellectual Property Alert, October 2006
• "Tying Claims: Market Power is Not Presumed," Fulbright & Jaworski L.L.P. Intellectual Property and Antitrust Alert, March 2006
• "Arbitrating International Intellectual Property Disputes," Fulbright & Jaworski L.L.P. Arbitration and ADR Alert, October 2002
• "Acquiring and Protecting a Firm's Corporate Jewels," Houston Business Journal, May 31, 2002
SPEECHES
• "Recent U.S. Supreme Court Rulings and Resulting Patent Re-Examination
Strategy," National Paint and Coatings Association Annual Meeting,
Charlotte, North Carolina, June 2008
• "U.S. Supreme Court IP Case Review," SMU IP Symposium, Dallas, Texas, March 2008
• "Trademark Dilution Revision Act," UT IP Conference, Austin, Texas, February 2007
• "Trademark and Trade Secret Protection," Tarrant County Bar Association CLE Program, Fort Worth, Texas, November 2006
• "The Texas SuperBowl Experience: Ex Parte Trademark Seizures For an Event Under State Law," HIPLA Fall Institute, Galveston, Texas, October 2004
EDUCATIONAL BACKGROUND
1978 - J.D., University of Houston
1973 - B.S., summa cum laude, Civil Engineering, Texas A&M University
Marc is licensed to practice in Texas and Colorado. He is also licensed to practice before various federal district courts and courts of appeal, the United States Supreme Court and the United States Patent and Trademark Office.
INTERESTS
Marc enjoys spending time traveling with his wife, golf, reading and playing the saxophone.