Mark A. Pals, P.C. - Of Counsel

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Mark A. Pals, P.C.

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Chicago
Phone: +1 312-862-2450
Fax: +1 312-862-2200
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Professional Profile

Mark Pals is a senior member of Kirkland's pharmaceutical and biotech patent litigation practice and of the Firm's Intellectual Property Practice Group. Mark has tried cases before juries and judges across the country, and has secured verdicts and settlements in cases with billions of dollars at stake. He has a Ph.D. in biophysics and focuses his practice on life sciences and chemical patent litigation, but represents clients across a broad range of industries. His cases have involved pharmaceuticals, medical devices, gene expression, protein synthesis, DNA cloning and sequencing, DNA array technology, chemical processes, semiconductor manufacturing, fuel and oil filters, and other technologies. In addition, Mark has represented his clients in a wide variety of trademark and unfair competition cases.

Mark's trial successes and litigation skills have been repeatedly recognized by industry publications and reports. In selecting him for its "IAM Patent 250," Intellectual Asset Management (IAM) magazine states that he is an "incredibly smart biotech and pharmaceutical patent litigator." As Chambers USA reports in America's Leading Lawyers for Business 2011: Life Sciences, "He's a skillful attorney in front of the judge and jury." Legal 500 praises him as a recommended attorney for his "excellent legal instincts" and his thoughtfulness on client issues. Mark was distinguished as one of The Best Lawyers in America for 2013 and 2014 in the field of Litigation - Patent. The American Lawyer featured Mark's work in their 2008 article selecting Kirkland's IP practice as a finalist in their "IP Litigation Department of the Year" survey. The article quotes one client as stating, "I'd say, without hyperbole, there is not a smarter IP litigator than Mark Pals." In addition, IP Law & Business profiled his jury trial wins for Third Wave Technologies in their article entitled "The DNA of a Patent Case."

His appellate practice primarily concentrates on appeals in the Federal Circuit. Representative matters include the affirmances by the Federal Circuit of non-infringement judgments he obtained for his clients Amgen (see 2009 WL 1528551) and Third Wave Technologies (see 2009 WL 886301) in separate cases.

Mark is active in pro bono matters, and has represented individuals and charitable institutions in a variety of litigations. He has also served as a member of Kirkland's Finance Committee, as Vice-Chair of the Associate Review Committee in Kirkland's Chicago office and as a member of the IP Operations Committee.


Representative Matters

Aker BioMarine AS and Affiliates

Neptune Technologies & Bioresources Inc. v. Aker BioMarine AS et al. (D. Del.); Neptune Technologies & Bioresources Inc. et al. v. Aker Biomarine ASA et al. (D. Mass.): Defend patent infringement claims and pursue reexaminations and Inter Partes Review of technologies relating to marine oil extraction and the resulting phospholipid compositions of the extracts.

Amgen, Inc.

Amgen, Inc. et al. v. Ariad Pharmaceuticals Inc. (D. Del.): Represent Amgen in this declaratory judgment action seeking rulings of noninfringement and invalidity of Ariad's patent relating to a gene transcription factor. Prevailed on disputed claim construction issues and secured summary judgment of noninfringement. (577 F.Supp.2d 695; 577 F.Supp.2d 724) The Federal Circuit affirmed the District Court's claim constructions and judgment of noninfringement. (2009 WL 1528551)

Baldwin Filters, Inc. and CLARCOR Inc.

Parker-Hannifin Corp. et al. v. Baldwin Filters, Inc. et al. (N.D. Ohio): Defend patent infringement claims relating to filter technology.

Donaldson Co., Inc. v. Baldwin Filters, Inc. (D. Minn.): Defend patent infringement claims by Donaldson relating to air filter technology.

Baltimore Aircoil Company

Baltimore Aircoil Company v. Evapco, Inc. (D. Md): Represent Baltimore Aircoil to enforce its patents relating to heat exchange technology.

Boehringer Ingelheim Vetmedica Inc.

Intervet Inc. et al. v. Boehringer Ingelheim Vetmedica Inc. (D. Del.): Defend patent infringement claims relating to client's vaccine for porcine proliferative enteritis.

Oxford Gene Technology, Ltd.

Lead U.S. trial counsel for OGT, the Oxford, England company founded by Sir Edwin Southern. Representations include the following litigations and licensing matters:

Affymetrix, Inc. v. Oxford Gene Technology, Ltd., ICC Arbitration: Following the close of evidence in this arbitration, Affymetrix agreed to a settlement in which it paid OGT $62.5 million for a paid-up license to certain OGT patents relating to DNA arrays.

Oxford Gene Technology Ltd. v. Mergen Ltd. et al. (D. Del.): Won summary judgment that Mergen infringed OGT's patent and summary judgment of no anticipation of the asserted claims. On the eve of trial, Mergen consented to entry of judgment against it on its remaining validity defenses. (See 345 F. Supp.2d 431; 345 F. Supp. 2d 444)

Oxford Gene Technology Ltd. v. Affymetrix, Inc. (D. Del.): Won jury verdict of infringement by Affymetrix.

Pylon Manufacturing Corp.

Bosch LLC v. Pylon Manufacturing Corp. (D. Del.; Fed. Cir.): Represent Pylon in appeal and follow-on trial court proceedings in patent action alleging infringement of automobile windshield wiper blades.

Certain Wiper Blades, ITC Investigation No. 337-TA-816: Represent Pylon in ITC action. Secured summary determination of non-infringement.

Spectrum Brands, Inc.

Represent Spectrum Brands and its predecessors Rayovac and Remington Products in intellectual property matters, including:

Certain Zero-Mercury-Added Alkaline Batteries, Parts Thereof, and Products Containing Same, Inv. No. 337-TA-493 (ITC): Represent Spectrum Brands subsidiary in this ITC action, in which asserted claims of patent were ruled invalid.

Braun GmbH v. Rayovac Corp. (D. Mass.): Defended patent infringement claims relating to the electric shaver cleaning system in Rayovac's Titanium Series System products.

Eveready Battery Company Inc. v. Rayovac Corp. (N.D. Ohio): Represented Rayovac in defending Eveready's allegations that Rayovac's mercury free alkaline batteries infringe Eveready's patent rights.

Norelco Consumer Products Co. v. Remington Products Co. (S.D.N.Y.): Defend Rayovac's then-subsidiary in action alleging unfair competition and false advertising.

Schering Corporation

Schering Corporation v. Three Rivers Pharmaceuticals, LLC (W.D. Pa.): Represented Schering in ANDA litigation relating to Schering's Rebetol® product.

Schering Corporation v. Geneva Pharmaceuticals Technology Corp. (D. N.J.); Schering Corporation v. Teva Pharmaceuticals USA, Inc. (D. N.J.): Represented Schering in ANDA litigation relating to Schering's Rebetol® product.

Schering Corporation v. Geneva Pharmaceuticals, Inc. (D.N.J.): Represented Schering in multi-defendant ANDA litigation relating to Schering's Claritin® product.

Third Wave Technologies, Inc.

Trial counsel in enforcing Third Wave's patents relating to its genetic diagnostic assays and defending patent infringement and other claims. Representations include the following litigations:

Third Wave Technologies, Inc. v. Stratagene, Inc. (W.D. Wis.): Won jury trials for Third Wave in patent infringement action asserting infringement by Stratagene's Full Velocity products and methods. The jury found that Stratagene willfully infringed every asserted claim of both Third Wave patents and entered a multi-million dollar damages award. The Court then awarded treble damages and attorneys' fees. (405 F.Supp.2d 991)

Digene, Inc. v. Third Wave Technologies, Inc. (W.D. Wis.): Won judgment for Third Wave in patent infringement action by Digene asserting a patent relating to the human papillomavirus. After we prevailed on the constructions of all disputed claim terms, Digene conceded it could not prove infringement and consented to entry of judgment against it. (2007 WL 5425947; 2007 WL 5614110) The Federal Circuit affirmed the District Court's claim constructions and the judgment of noninfringement. (2009 WL 886301)

Third Wave Technologies, Inc. v. EraGen Biosciences, Inc. (W.D. Wis.): Represented Third Wave in its action asserting infringement of Third Wave's patents relating to the detection and characterization of nucleic acid sequences. (See 2003 WL 23100277)

Ventana Medical Systems, Inc.

Cytologix, Inc. v. Ventana Medical Systems, Inc. (D. Mass.): Won jury trial for Ventana in action seeking damages for patent infringement, and alleging antitrust violations, unfair competition and other claims.

Zimmer Technology Inc. and Zimmer, Inc.

Zimmer Technology Inc et al. v. Howmedica Osteonics, Cause No. 3:02cv425 AS (N.D. Ind.): Represent Zimmer in this action to enforce its patent relating to a modular prosthesis for use in joint replacements.

Other clients and matters:

Neptune Technologies & Bioressources, Inc. et al. v. Aker BioMarine ASA et al. (D. Mass.):  Represent Aker BioMarine in this patent infringement suit relating to a chemical process for extracting krill oil.

Biogen, Inc., Genzyme Corp., and Abbott Bioresearch Center, Inc. v. Columbia University (D. Mass.): Represented Abbott Bioresearch Center in this declaratory judgment action seeking to invalidate a Columbia University patent. (332 F.Supp.2d 286)

Emory University v. Glaxo Wellcome Inc. and BioChem Pharma Inc. (N.D. Ga.): Represented BioChem Pharma in patent infringement suit by Emory relating to the anti-HIV drug Epivir®, which is marketed by Glaxo Wellcome under license from our client. We secured the cancellation of all of Emory's patent claims in an interference proceeding in the USPTO involving a pending BioChem patent application and the patent-in-suit, and then mediated a favorable settlement.

Centrix, Inc. v. Minnesota Mining & Manufacturing Corporation (D. Conn.): Defended 3M  against a patent infringement claim and mediated a favorable settlement.

WebMD Corp. v. DNA Sciences, Inc. (Am. Arbitration Ass'n): Represented DNA Sciences in defending demand and prosecuting counterdemand in arbitration proceeding.

Nanogen, Inc. v. Motorola, Inc. et al. (S.D. Cal.): Represented Motorola in this declaratory judgment action in which Motorola alleged that Nanogen infringed a patent relating to DNA arrays.

International Nutrition Co. v. Horphag et al. (D. Conn., Fed. Cir.): Represented Nutraceutical Corp. in defense of action for patent infringement and secured summary judgment that plaintiff lacked standing to maintain suit. (56 U.S.P.Q.2d 1732) The Federal Circuit affirmed.

Avery Dennison Corp. v. ACCO Brands, Inc. et al. (C.D. Cal.): Defended ACCO against false advertising, trademark and unfair competition claims by Avery, and prosecuted antitrust and unfair competition counterclaims. We defeated seven of Avery's nine claims on summary judgment and secured a favorable settlement on the eve of trial. (1999 U.S. Dist. LEXIS 21464; 2000 U.S. Dist. LEXIS 3938)

Thomas Jefferson University and Kimeragen Inc. v. Perkin-Elmer Corp. (E.D. Pa.): Brought suit against Perkin-Elmer seeking a declaratory judgment that inventorship was correct on TJU patent on gene repair technology licensed to Kimeragen, and that no Perkin-Elmer employee was an inventor of the patented technology. We negotiated an alternative dispute resolution procedure that resulted in a determination that the inventorship was correct on the patent as issued.

Certain Semiconductor Memory Devices, Inv. No. 337-TA-414 (ITC): Represented semiconductor memory device manufacturer and obtained a discovery order authorizing the inspection of a manufacturing facility located overseas that was owned by a 3rd party to the underlying proceeding.

Cistron Biotechnology Inc. v. Immunex Corp. (W.D. Wash.): Represented Cistron Biotechnology in litigation asserting misappropriation by Immunex of a trade secret DNA sequence. On the eve of trial, we secured a settlement of $21 million on behalf of our client.

Henkel Corp. v. Allco Chemical Corp. (D. Del.): Defended Allco Chemical in a patent infringement action relating to chemical technology for the solvent extraction of copper. The case settled on favorable terms after the pretrial conference.

Mobil Oil Corp. v. Amoco Chemical Co. (D. Del.): Successfully defended Amoco Chemical in the damages trial following finding of liability in action handled by another firm.

Transactions and counseling: Provide intellectual property support and counseling in connection with ongoing business and with proposed transactions and public offerings.  Negotiate agreements relating to the transfer or licensing of intellectual property rights.


Memberships & Affiliations

American Bar Association, Litigation and Intellectual Property Sections

American Intellectual Property Law Association

Illinois State Bar Association

Intellectual Property Owners Association


Publications

Mark initiated Kirkland's BioTech Update newsletter, which he and the Intellectual Property group publish.  The newsletter includes articles that address subjects ranging from patent infringement litigation to licensing, but in most instances focusing on biotechnology, pharmaceuticals and the life sciences. Click to read the Winter 2002Spring 2002Autumn 2002, Summer 2003Summer 2004, Spring 2005, Summer 2005, and Spring 2009 issues.


Seminars

Mark speaks regularly at seminars and conferences on topics relating to patent infringement litigation and life sciences issues, in particular.  He has spoken on:

"The Future of Biotechnology and Pharmaceutical Patents" at Northwestern University School of Law in 2008;

"The Emerging Challenges in Biotechnology Law" at Northwestern University School of Law in 2007;

"Patent Litigation and its Affect on Technology Commercialization" at Northwestern University School of Law in January 2005;

"Infringement:  Remedies and Damages" at the American Conference Institute's October 2005 and April 2004 Freedom to Operate seminars in San Francisco;

"Collaborating Effectively:  Working With Others While Preserving Your Intellectual Property" at the Law Education Institute seminar in January 2004;

"Protecting and Defending Your IP in the US" at Moving to the Major League:  Growth Strategies for Life Science Companies seminar at Oxford University in Oxford, England in 2004;

"Bioinformatics:  Evolving IP Issues" at the Pharmaceutical International Lawyers Legal Seminar in May 2003;

"Science In The Everyday World" at Knox College in October 2002;

"Intellectual Property and Antitrust Issues" at the Chicago Bar Association's Antitrust Section lecture series in October 2002;

"Multi-jurisdictional Concerns When Litigating in the US and Europe" at the American Conference Institute's February and March 2002 seminars on Litigating Patent Disputes

"The Exemption for Infringement under 35 U.S.C. § 271(e)(1)" at the November 2001 Eurolegal seminar in London on Patent Protection for the Pharmaceutical and Biotechnology Industries;

"Life After Festo:  Claim Drafting Strategies" at the Genomics, Proteomics and Complex Biotech seminar sponsored by the American Conference Institute in New York City on November 5 and 6, 2001;

Panel Chair of "A View from the Bench…" at the American Conference Institute's seminar on The Legal and Regulatory Forum for Patenting Genomics and Proteomics at the Next Frontier held in New York and San Francisco in February and June 2001; and

"The convergence of Biotechology and computer technology:  Genomics, Proteomics and Bioinformatics" at Kirkland's annual Technology and the Law Seminar.


Prior Experience

GENDERM CORPORATION – 1994 – 1995
General Counsel

Advised officers and the board of directors on all legal matters confronting the company.  Specific responsibilities included the management and control of all outside litigation;  coordination of patent prosecution activities; interaction with the Food and Drug Administration on legal issues; and negotiation and drafting of strategic alliance and other agreements.


Courts

Northern District of Illinois, Trial Bar

Western District of Wisconsin

U.S. Court of Appeals for the First Circuit

U.S. Court of Appeals for the Fourth Circuit

U.S. Court of Appeals for the Seventh Circuit

U.S. Court of Appeals for the Federal Circuit

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