Mark Liang focuses his legal practice on patent and technology- related litigation. He has experience in all stages of patent cases, including claim construction, fact and expert discovery, dispositive motions, trial, post-trial, and appeal. He represents clients in federal courts, the International Trade Commission, and United States Patent and Trademark Office, including reexaminations and inter partes review (IPR). He has litigated over eighty patent matters in district courts, five ITC investigations, and over fifty IPRs and reexamination proceedings. He has been on several successful trial teams, including in the Eastern District of Texas, Western District of Texas, District of Delaware, and the International Trade Commission, and has also served as lead counsel for clients in IPR proceedings. He has argued at dozens of hearings on claim construction and dispositive motions, and also taken/defended several dozen depositions, including of expert witnesses, inventors, and corporate fact witnesses. He has also briefed and argued appeals at the Federal Circuit.
Mark has a background in electrical engineering, and he leverages his expertise to assist clients across a number of technical fields, including telecommunications, signal processing, multimedia, computer graphics, virtual and augmented reality, computer hardware, electronics, internet technologies, display technologies, machine learning, neural networks, artificial intelligence, and semiconductor/chip structures and fabrication. He focuses his practice on the most contentious patent litigation matters, particularly the most technically challenging cases. He also handles trade secret matters and advises on software copyright and technology standards matters, including F/RAND damages and obligations to standards setting organizations. He has received industry recognition, including being identified as a Rising Star by Managing IP, a noted and recommended patent litigation practitioner by The Legal 500, and Under 40 Rising Star by Benchmark Litigation. Mark also publishes and speaks regularly on issues relating to patent law and litigation, artificial intelligence, and emerging technologies. He is a faculty member for Practising Law Institute (PLI) and Strafford, and regular contributor to the firm’s artificial intelligence hub and client alerts.
Get to Know Mark
I represent large technology companies across the computer, electronics, semiconductor, telecommunications, Internet, and software industries. Many of the clients I work for are headquartered or have a major presence here in Silicon Valley and the San Francisco Bay Area.
My favorite part of the job is getting to learn about new technologies and related industries—and then presenting it to a Court or jury in a manner that is both understandable and favorable to my client’s case. The job doesn’t get boring because I’m always learning new things. I’ve gotten to work closely with early innovators to learn about prior art, key engineers at the client to learn about their products or services, and leading experts or academics to help put it altogether into a winning case. As part of any case, it’s fascinating the learn about the history, key players and companies, commercial and competitive relationships, and people that make up an industry.
Three things. First, they need someone with technical background and facility to understand the complex technologies that often arise in their cases, particularly in the consumer and mobile electronics, semiconductor, and telecommunications spaces. Second, they need someone who can efficiently manage their matters from start to finish, come up with and competently execute a case strategy, and make sure nothing falls through the cracks. Third, in some instances, they need someone who can help lead a matter through trial and post-trial—the later phases of the case that many patent litigators have not been through, but which I’ve been through several times in the most common venues for patent disputes, like E.D. Tex., W.D. Tex., Delaware, and the ITC.
For some clients, it’s the degree to which inaction or lethargy at the early stages of a case can have adverse repercussions later on, causing a winnable case to morph into a difficult (or impossible) to win trial or settlement position. Patent cases are often scheduled to start slowly and then suddenly pick up. It’s a mistake to go with the flow of the case schedule and not think ahead or give due attention to early case activities—i.e., vetting the right witnesses/experts; pursuing options for Rule 12 dismissal or another venue; moving quickly on any IPRs or other U.S. Patent Office challenges; figuring out the key case themes, claim construction disputes, and evidence; or getting or producing important discovery. Being decisive and acting sooner, faster avoids difficult positions later and can secure early victories that totally change the complexion of a case.
Highlights
- Defending Internet companies and consumer electronics company in eight related district court cases, an International Trade Commission action, and related IPRs and reexaminations involving six patents directed to navigation and location technologies. (E.D. Tex.; N.D. Cal.; USPTO; Fed. Cir., ITC) Secured stay pending reexaminations, invalidity of one patent, dismissal of second patent, and transfer of all three cases from E.D. Tex. to N.D. Cal., and a voluntary dismissal of the ITC action.
- Defending consumer electronics company in lawsuit relating to facial and gesture recognition features. (E.D. Tex.; Fed. Cir.) Obtained case-dispositive claim construction leading to stipulated judgment of invalidity. Matter is now on appeal to the Federal Circuit.
- Defending as trial, post-trial, and appellate counsel an Internet software company in a patent case relating to web browsers, computer, and Internet security software. (E.D. Tex.; Fed. Cir.) Managed case through trial, post-trial and appeal. In post-trial, prepared motion for new trial that was granted by the Court, vacating an unfavorable jury verdict. On appeal, the Federal Circuit reversed the unfavorable jury verdict and district court judgment, finding all asserted patent claims invalid under the reissue statue.
- Defended consumer electronics companies and display manufacturer in multiple lawsuits, including in the ITC, and related IPRs relating to OLED display technologies. (USITC; W.D. Tex.; E.D. Tex.; USPTO.) Litigated the ITC matter through an evidentiary hearing before resolving favorably on the eve of the initial determination.
- Advised chip designer and manufacturer concerning ICC arbitration, licensing, and potential trade secret, contract, and copyright claims relating to 5G telecommunications technology.
- Defended consumer electronics company in case relating to digital assistant and smart display devices. (W.D. Tex.) Took over as pretrial and trial counsel five months before trial, where the client prevailed on non-infringement and invalidity after an hour of deliberation.
- Defended a consumer electronics company across seven actions and IPR proceedings covering twenty-three patents relating primarily to semiconductor fabrication. (E.D. Tex.; D. Del; D.N.J.; USITC; USPTO.) Secured summary determination victory in the ITC and transfer of two E.D. Tex. cases to D. Del., after which, the matters settled favorably.
- Defended Internet software company in a patent case relating to mapping software and technologies. (D. Del.; Fed. Cir.) Took over as pretrial and trial counsel six months before trial, where we prevailed on behalf of our client against claims for an nine-figure judgment. The jury reached findings of non- infringement and invalidity based on two separate grounds after 30 minutes of deliberation. Led on post-trial and appeal briefing, where the jury verdict was upheld.
- Defended an Internet and television provider against a patent monetization fund in a 19-patent case relating to digital subscriber line (DSL) technology. (W.D. Tex.) Secured case-dispositive victories at claim construction stage, including findings of indefiniteness, resulting in a favorable settlement.
Other Experience
- Defending consumer electronics company in lawsuit relating to radio frequency antennas and receivers (W.D. Tex.)
- Defending consumer electronics company in lawsuit relating to multimedia messaging and videoconferencing (E.D. Tex.; USPTO)
- Defending consumer electronics company in lawsuit relating to GPS and location determination technologies (E.D. Tex.; USPTO)
- Defending consumer electronics company in lawsuit relating to virtuality reality viewers. (N.D. Tex.)
- Defending consumer electronics company in multiple lawsuits and related IPRs involving voice and digital assistant software and services. (W.D. Tex.; USPTO.)
- Defended consumer electronics company in lawsuit relating to APIs for geo-location, taking over from prior counsel as pretrial and trial counsel three months before trial. (E.D. Tex.) Matter settled favorably following key victories on summary judgment and Daubert motions.
- Defended consumer electronics company in lawsuit relating to RF circuits and power amplifiers. (W.D. Tex.; USPTO)
- Defended an Internet software company in a patent case relating to APIs for navigation software. (S.D. Cal.; W.D. Tex.)
- Defended consumer electronics company in lawsuits relating to flash memory, electronics, and circuits. (W.D. Tex.; USPTO.)
- Defended consumer electronics company in multiple lawsuits and related IPRs relating to smartphone hardware components, including flash memory, RF receivers/modems, and processors. (E.D. Tex.; W.D. Tex.; N.D. Cal.; USPTO.)
- Defended consumer electronics and software company in a ten-patent case spanning multiple technologies, including navigation. (E.D. Tex.)
- Defended Internet company in patent case and related IPRs relating to image and facial recognition software. (E.D. Tex.; USPTO.)
- Advised consumer electronics company on trade secret issues and clean room development procedures for future chip designs.
- Defended Internet company in eleven-patent case and related IPRs relating to video and audio streaming platforms (N.D. Cal.; USPTO.)
- Defended a consumer electronics company in a nine-patent case relating to computer hardware and graphics processor technologies used in mobile devices. (E.D. Tex.)
- Defended a consumer electronics company in a three-patent case relating to memory chips, inter-chip communication protocols, mixed signal circuits, and related technology standards (E.D. Tex.)
- Defended an Internet software company in a five-patent case relating to image processing and navigation technologies (D. Del.)
- Defended an Internet software company in an eleven-patent case relating to user interfaces and web applications for deploying multimedia (N.D. Cal.)
- Defended an Internet software company in a three-patent case, IPR proceedings, and Federal Circuit appeal relating to mapping and graphics technologies. (N.D. Tex.; USPTO; Fed. Cir.)
- Advised an Internet software company on software copyright and patent issues relating to application programming interface definitions and programming expressions.
- Advised electronics equipment and component designer on trade secret matter.
- Defended an Internet software company in a patent case relating to navigation software. (S.D. Cal.; N.D. Cal.)
- Defended an Internet software company in a six-patent case relating to mapping, navigation, and wearable computing technologies. (D. Nev.)
- Defended a mobile phone company in a four-patent ITC investigation involving graphics and display technologies. (USITC.)
- Defended a consumer electronics company in a patent case and IPR proceeding relating to mapping and navigation technologies. (N.D. Cal.; USPTO.)
- Defended an Internet software company in a three-patent case and IPR proceedings relating to mapping and navigation technologies. (M.D. Fla.; USPTO.)
- Defended an Internet software company in a four-patent case, reexaminations, and two rounds of appeals to the Federal Circuit relating to mapping and navigation technologies. (C.D. Cal.; USPTO; Fed. Cir.)
- Defended a telecommunications chip company in a five-patent case relating to cable transmission systems and signal processing. (C.D. Cal.; Fed. Cir.)
- Acted as counsel to a consumer electronics company in a mediation relating to semiconductor fabrication technologies.
- Defended streaming video company in a patent case relating to video distribution and playback technology. (C.D. Cal.)
- Defended an electronics company against a patent licensing fund in a three-patent case relating to integrated circuits and programmable logic devices. (D. Del.)
- Defended a mobile phone and personal computer company in a four-patent case relating to user interfaces for operating systems and apps. (W.D. Wash.)
- Defended a mobile phone company in a three-patent ITC investigation involving graphics and display technologies. (USITC.)
- Asserted infringement of two patents in connection with network intrusion detection products and related services against a network security company. (D. Del.)
- Defended travel website companies in a three-patent case involving e-commerce technology and affiliate marketing. (E.D. Tex.)
- Defended software companies in a patent case relating to compilers. (W.D. Wash.)
Admissions
Bar Admissions
- California
Court Admissions
- US District Court, Northern, Central, and Southern Districts of California
- US Federal Circuit Court of Appeal
Registered to Practice
- US Patent and Trademark Office
Education
- University of Chicago, J.D.: with honors; John M. Olin Fellowship in Law and Economics; Executive Editor, The Chicago Journal of International Law
- University of Toronto, B.A.Sc., Electrical Engineering: with high distinction
Honors & Awards
- Name to the 40 & Under List in Intellectual Property by Benchmark Litigation (2024)
- Recommended by The Legal 500 US for Patents: Litigation
- Recognized in Managing IP as a Managing Intellectual Property Rising Star
- Recognized in California Super Lawyers, Intellectual Property
Professional Activities
Clerkship
- Seventh Circuit Court of Appeals
Member
- Bar Association of San Francisco
- American Intellectual Property Law Association (AIPLA), Editorial Board member, AIPLA Quarterly Journal
- Asian American Bar Association Bay Area (AABABA)
Author
- “Navigating the Customer-Suit Exception in Texas Courts,” IPWatchdog, August 7, 2023 (co-authored with Nate Legum)
- “US AI Regulatory Policy Update: White House Secures More Voluntary Commitments; Congress Holds Hearings and Continues to Mull Legislative Framework; Agencies Provide Guidance on Competition, Financial Markets, and Intellectual Property Issues,” O’Melveny Client Alert, August 1, 2023 (co-authored with Ron Klain et al.)
- “3 Ways Courts Approach Patent Eligibility At Trial And After,” Law360, July 19, 2023 (co-authored with Sorin Zaharia)
- “Recent Trends in Federal Circuit Mandamus Addressing Transfer Motions Denied by Texas District Courts,” The Recorder, April 25, 2023 (co-authored with Danny Silverman)
- “Post-Arctic Cat Lawsuits Reveal Patent Marking Pitfalls,” Law360 (August 9, 2022)
- “Fee Shifting in Patent Litigation,” (co-author Brian Berliner), Virginia Journal of Law & Technology, Vol.18, No.01 (Fall 2013)
- “Chinese Patent Quality: Running the Numbers and Possible Remedies,” 11 J. Marshall Rev. Intell. Prop. L. 478 (2012)
- “The Aftermath of TS Tech: The End of Forum Shopping in Patent Litigation and Implications for Non-Practicing,” 19 Texas Intell. Prop. L. J. 29 (2010)
- “Stopping Intellectual Property Infringement in China: A Three-Pronged Approach,” 11 Chi. J. Int’l. L.
285 (2010) - “Green Taxes and the WTO: Creating Certainty for the Future,” 10 Chi. J. Int’l. L. 359 (2009)
Speaker
- “Patent Eligibility at Trial and Post-Trial: District Court Approaches and Implications for Litigation,” Strafford CLE Webinar, November 9, 2023 (co-presented with Sorin Zaharia)
- “Recent Trends in Federal Circuit Mandamus Addressing Transfer Motions,” Practicing Law Institute CLE Webinar, June 23, 2023 (co-presented with Danny Silverman)
- “Quality of Chinese Patents,” Review of Intellectual Property Law Symposium (Chicago, April 2012)
- “Popular Districts for Patent Cases,” Berkeley Law Series (Berkeley, February 2012)