PARTNER

Overview

Mark Nielsen is an experienced intellectual property litigator and partner at Scheef & Stone.  His practice focuses on all aspects of intellectual property, particularly litigating patents, trademarks, and copyrights. Mark is a tenacious, but practical litigator who seeks to serve and advance the interests of his clients first and foremost.  Mark’s law and motion and advocacy skills have resulted in many good outcomes for his clients over the years. HIs litigation experience also supports his counseling of clients seeking to protect their inventions with patents, branding with trademarks, and creative works with copyrights.

Experience

Mark’s intellectual property litigation practice has covered a wide variety of technologies and subject matter, including photographs of Marilyn Monroe (copyright), flip-top calculators (patent), automotive radiator flushers (patent), internet software related to previewing images of hyperlinks in search results (patent), blender attachments (patent), highly ornamented furniture (design patent and copyright), Asian hot sauce bottle designs (trademark and trade dress), dog chew toys (patent), search engine optimized text descriptions (copyright), security services industry (trademark), spa parts (patent), and sea container loading technology (patent) to name a few.

Mark has litigated cases in federal courts throughout the United States, including in California, Texas, Florida, Virginia, Michigan, Minnesota, Illinois, New Jersey, New York, Delaware, Colorado, Washington and elsewhere.  Mark has also appeared before the United States Court of Appeals for the Federal Circuit in appeals of patent cases.

Mark also has substantial experience prosecuting patents, trademarks, and copyrights before the United States Patent and Trademark Office and United States Copyright Office. His litigation experience informs his prosecution work, which better serves his clients. Mark works with his clients to build value in their companies through intellectual property counseling and procurement.

Mark also extensive experience in pre-litigation enforcement of his clients’ intellectual property rights, as well as experience in a responsive posture should his clients receive demand or cease and desist letters.

Call Mark When

  • You have intellectual property rights (patents, trademarks, copyrights) that you believe you need to enforce against a potential infringer;
  • You receive a cease and desist letter or lawsuit accusing you of infringing another’s intellectual property rights;
  • You want to file a patent, trademark, or copyright application to protect your inventions, brand names, or artistic works;
  • You want to clear your right to use certain technology, a brand name, or other artistic matter to make sure you are not infringing another’s intellectual property rights;
  • You want to determine the strength of your intellectual property rights in connection with a sale or merger of your company;
  • You want to determine if a new technology, brand name, or artistic matter can be patented, trademarked, or copyrighted.

Representation

Advanced Steel Recovery, LLC v. X-Body Equipment et al.

Advanced Steel Recovery, LLC (“ASR”) successfully moved to dismiss, without leave to amend, a number of the defendants’ business tort and related counterclaims asserted in response to ASR’s patent infringement claim. (2022 U.S. Dist. LEXIS 23752 (E.D. Cal. Feb. 9, 2022)).

Frontier Astronautics, LLC v. Frontier Aerospace Corp.

Frontier Aerospace Corp. successfully moved to dismiss a trademark infringement case brought in the District of Colorado for lack of personal jurisdiction, including based on the unreasonableness of haling Frontier Aerospace, a California entity, into court in Colorado. (Case No. 19-cv-02186-RM-MEH (D. Colo. 2020))

Advanced Steel Recovery, LLC v. X-Body Equipment, Inc. et al.

Advanced Steel Recovery, LLC (“ASR”) sued the defendants for patent infringement alleging that certain technology to load scrap or other materials into sea containers infringed ASR’s patent.  Defendants moved to dismiss ASR’s first amended complaint and/or moved for summary judgment, arguing that the asserted patent claims were not supported by a prior parent patent application, and that they were invalid because the accused product pre-dated the effective filing date of the application for ASR’s asserted patent.  The Court ruled in ASR’s favor, finding that ASR has sufficiently pled a claim for patent infringement, that genuine disputes of material fact existed to preclude summary judgment, and that sanctions were unwarranted. (271 F. Supp. 3d 1172 (E.D. Cal. 2017))

Amini Innovation Corp. v. McFerran Home Furnishings, Inc. et al.

Successfully opposed Defendants’ motion for summary judgment in a product design trade dress case. (68 F. Supp. 3d 1170 (C.D. Cal. Dec. 12, 2014))

EDCO Plastics, Inc. v. Allynce, Inc. et al.

The court awarded co-defendant client the full amount of its attorneys’ fees and costs after successful dismissal of all claims for lack of subject matter jurisdiction; court also stated counsel’s hourly rates were reasonable. (2013 U.S. Dist. LEXIS 117259 (C.D. Cal. July 11, 2013)

EDCO Plastics, Inc. v. Allynce, Inc. et al.

Claim against client for fraud in connection with sales of patent and other assets dismissed for lack of subject matter jurisdiction; breach of contract claim against client previously dismissed for failure to state a claim. (2013 U.S. Dist. LEXIS 57541 (C.D. Cal. Mar. 18, 2013))

Surefire, Inc. v. Casual Home Worldwide, Inc. et al

Represented Defendants in a patent infringement case involving a U.S. distributor and Chinese manufacturer as defendants, court quashed service on Chinese manufacturer for failure to serve authorized representative of Chinese manufacturer with summons and complaint. (2012 U.S. Dist. LEXIS 88372 (S.D. Cal. June 26, 2012))

Prototype Productions, Inc. v. Reset, Inc.

Representing Reset where Magistrate Judge found personal jurisdiction lacking and recommended that the court transfer the case to the Central District of California where Reset is located; District Judge overruled Plaintiff’s objections to Magistrate Judge’s recommendations and ordered the transfer, 844 F. Supp. 2d 691 (E.D. Va. 2012)). (2011 U.S. Dist. LEXIS 150666 (E.D. Va. Oct. 14, 2011))

SDS Korea Co., Ltd. v. SDS USA, Inc. et al.

Represented Defendants in case including patent and trademark infringement claims, court granted Defendants’ motion to dismiss for lack of personal jurisdiction and improper venue, and denied Plaintiff’s request for jurisdictional discovery. (732 F. Supp. 2d 1062 (S.D. Cal. 2010))

Girafa.com, Inc. v. IAC Search & Media, Inc. et al.

Represented Snap Technologies with court granted summary judgment in favor of Snap as to numerous asserted patent claims. (2009 U.S. Dist. LEXIS 88796 (D. Del. Sept. 25, 2009))

Girafa.com, Inc. v. Amazon.com, Inc. et al.

Represented Snap Technologies in computer software patent case, court denied Plaintiff’s motion for preliminary injunction. (2008 U.S. Dist. LEXIS 99196 (D. Del. Dec. 9, 2008))

Alan Lee Distributors, Inc. dba ADI Pet, Inc. and Christopher Weinberg v. Van Brown

Represented ADI Pet – The Federal Circuit Court of Appeals affirmed the district court’s grant of summary judgment in favor of ADI, finding that the asserted claims of the patent-in-suit covering meat-filled rawhide chew toys for dogs were invalid for obviousness. (2007 U.S. App. LEXIS 12460 (Fed. Cir. May 18, 2007))

Amini Innovation Corp. v. Anthony California, Inc. et al.

Federal Circuit reversed the district court’s grant of summary judgment of non-infringement of six copyrights and a design patent because the district court erred in applying the extrinsic and intrinsic tests for substantial similarity in copyright infringement, and in conducting an element-by-element test for design patent infringement.  Later in 2006, Mark was part of the trial team that won and collected on a jury verdict of willful infringement on the design patent and several copyrights. (439 F.3d 1365 (Fed. Cir. 2006))

Wolf Designs, Inc. v. Donald McEvoy Ltd., Inc.

Representing plaintiff, a motion for reconsideration of the denial of a motion to transfer venue pursuant to 28 U.S.C.S. § 1404(a) was denied based on Defendants’ failure to show that the cases could have been brought in the transferee forum. (2005 U.S. Dist. LEXIS 5853 (N.D. Tex. Apr. 6, 2005))

Wolf Designs, Inc. v. Donald McEvoy Ltd., Inc.

Representing plaintiff, motion to transfer venue denied where competitors who sought transfer of lawsuits alleging trade dress and patent infringement failed to prove that, absent their consent, they would have been subject to personal jurisdiction in Georgia when patent holder filed instant suits in Texas. (355 F. Supp. 2d 848 (N.D. Tex. 2005))

Wolf Designs, Inc. v. Donald McEvoy Ltd., Inc.

Representing plaintiff, successfully moved to stay its own patent infringement action in the Northern District of Texas pending resolution of a California action because the issues in the cases were substantially similar, the witnesses overlapped, and the California action was the first-filed action. (341 F. Supp. 2d 639 (N.D. Tex. 2004))

Publications

  • Mark has given talks on various aspects of IP law to bar associations, law school classes, and undergraduate classes
  • Improving the Compact Prosecution Model through a Count Deduction System, Berkeley Tech L.J. online, March 12, 2016
  • Real World Molecular Biology Conflicts with the Supreme Court’s Recent Decision on Patentable cDNA, Los Angeles Daily Journal, June 25, 2013
  • Cohiba: Not Just Another Name, Not Just Another Stogie: Does General Cigar Own a Valid Trademark for the Name Cohiba in the United States, 21 Loyola L.A. Int’l & Comp. L.J. 633 (1999) (cited in, Empresa Cubana del Tabaco v. Culbro Corp., 213 F. Supp. 2d 247, 275 n.42 (S.D.N.Y. 2002))
  • Regulation and Immunohistochemical Localization of beta/gamma-stimulated adenylyl cyclases in mouse hippocampus.  J. Neuroscience 19: 180-192, et al , 1998
  • Stimulation of Type I and Type VIII Ca2+/calmodulin-sensitive Adenylyl Cyclases by the Gs-coupled 5-hydroxytryptamine subtype 5-HT7A Receptor. J. Biological Chemistry 273: 17469-17476, et al (1998)
  • Differential Regulation of Type I and Type VIII Ca2+-stimulated Adenylyl Cyclases by Gi-coupled Receptors in vivo.  J. Biological Chemistry 271: 33308-33316, 1996
  • Developmentally Expressed Ca2+-sensitive Adenylyl Cyclase Activity is Disrupted in the Brains of Type I Adenylyl Cyclase Mutant Mice.  J. Biological Chemistry 270: 14352-14357, 1995
  • Phosphorylation of the Human Leukemia Inhibitory Factor (LIF) Receptor by Mitogen-activated Protein Kinase and the Regulation of LIF Receptor Function by Heterologous Receptor Activation.  Proc. Nat’l. Acad. Sci. 92: 5361-5365, 1995
  • Oxidation of Critical Cysteine Residues of Type I Adenylyl Cyclase by o-iodosobenzoate or Nitric Oxide Reversibly Inhibits Stimulation by Calcium and Calmodulin.  J. Biological Chemistry 269: 7290-7296, 1994

Admissions

  • State Bar of Texas, 2008
  • State Bar of California, 2000
  • U.S. Patent and Trademark Office, 2003
  • U.S. Court of Appeals for the Federal Circuit
  • U.S. Court of Appeals for the Ninth Circuit
  • Central District of California
  • Eastern District of California
  • Northern District of California
  • Eastern District of California
  • Eastern District of Texas
  • Northern District of Texas
  • Southern District of Texas
  • Eastern District of Michigan
  • District of Colorado

Education

  • Loyola Law School, J.D., 2000
  • University of Washington, Ph.D., Pharmacology, 1997
  • University of Southern California, B.S., cum laude, Biological Sciences, 1992

Associations

  • Member, Provisors
  • State Bar of Texas, Intellectual Property Section
  • California Lawyers Association, Intellectual Property Section

Practice Areas

  • Patent Litigation
  • Patent Preparation & Prosecution
  • Trademark Litigation
  • Trademark Preparation & Prosecution
  • Copyright litigation
  • Copyright Preparation & Prosecution