Michael Markman joined the firm in 1997 and is a member of the Intellectual Property Litigation Practice Group.
Experience
Mr. Markman practices technology litigation with a focus on patent, copyright and trade secret matters for clients in the software and telecommunications industries. He also represents technology clients in complex commercial litigation and provides strategic intellectual property counseling.
Mr. Markman has an active pro bono practice. He was a member of the San Mateo County Legal Aid Society Board of Directors from 2005 through 2007, and received the firm’s Richard E. Guggenhime Pro Bono Award in 2003.
Mr. Markman teaches a litigation skills course entitled “Pretrial Civil Litigation Practice” at the University of California, Berkeley School of Law (Boalt Hall).
Education
University of California, Berkeley (B.A., Political Science and History, 1994, with distinction); University of California, Hastings College of the Law (J.D., 1997); Editor in Chief, Hastings Communications and Entertainment Law Journal (1996-97).
Admissions & Courts
California. Admitted to practice before the United States Supreme Court, the United States Courts of Appeals for the Ninth Circuit and the Federal Circuit, the Northern and Central Districts of California, and the Eastern District of Texas.
Memberships
State Bar of California; Executive Board, California Democratic Party (2002-04); San Francisco Bay Area Intellectual Property Inn of Court; San Mateo Legal Aid Society (2005-07).
Representative Engagements
Patent Litigation
Defending Palm against NTP in the Eastern District of Virginia in an action concerning patents alleged to cover wireless data systems. The Court granted Palm’s motion to stay pending reexamination of the patents at the USPTO.
Defending Palm in a District of Delaware patent infringement action in which Intermec has asserted patents relating to handheld data systems and devices, and in which Palm has asserted patents relating to power management for handheld devices.
Representing Palm in litigation in the District of Delaware involving seven patents relating to user interfaces for digital cameras.
Representing Palm in litigation in which the patentee asserts infringement based on international text-messaging.
Representing Samsung in litigation in the Eastern District of Texas involving four patents relating to semiconductor technology.
Represented QUALCOMM in a patent infringement and trade secret action involving three patents relating to high-speed data transmission, graphics accelerators, and an integrated circuit for blending graphics and video.
Represented Visa International and Visa USA in a Northern District of California patent infringement action in which the plaintiff accused the “Verified by Visa” service of patent infringement. In 2006, the Federal Circuit affirmed summary judgment of non-infringement.
Represented Palm in a patent infringement action in which the plaintiff alleged infringement by devices and services that permit calls to the “911” emergency number to be tracked using Global Positioning System (GPS) technology. In 2005, Palm and its co-defendants successfully moved to transfer the case from the Eastern District of Texas to the Northern District of California.
Representing CA in a declaratory judgment action in the Eastern District of New York involving three patents allegedly relating to internet portal technology. In March 2006, a Special Master recommended that the Court find the patents not infringed.
Represented SnapTrack and QUALCOMM in a Northern District of California patent trial in which the jury found our clients not liable for infringement of six of the seven claims at issue, and the Court granted judgment as a matter of law of non-infringement as to the final claim.
Copyright and Trade Secret LitigationRepresented SAP AG, SAP Labs, and SAP America in an Eastern District of Pennsylvania case involving trade secret, copyright, and contract claims relating to software used in call centers.
Represented Huawei Technologies in an action relating to router technology, and involved claims for copyright infringement, trade secret misappropriation, infringement of five patents, violations of the Lanham Act and Texas state law, and counterclaims alleging unfair competition.
Represented RSA Security in a copyright action involving public key encryption technology.
Complex Commercial LitigationRepresented Openwave in a case involving claims for indemnification relating to wireless browser technology.
Represented Maxygen, Inc. a case involving “gene shuffling.” An arbitrator issued an injunction against opponent Enchira Biotechnology through 2017. Maxygen was declared to be the exclusive owner of the technology as against Enchira, and was awarded attorneys fees and costs.
- Defended a ruling on appeal to the Ninth Circuit regarding interpretation of the Federal Arbitration Act, obtaining a decision affirming that a district court may dismiss an action rather than compel arbitration regardless of whether a motion to compel arbitration is pending.
Pro Bono Practice
Representing plaintiffs in a landmark case concerning alleged mass electronic surveillance of internet and telephone communications by the NSA. Over the objections of the Department of Justice, plaintiffs successfully persuaded the District Court that the case should not be dismissed on the basis of the State Secret privilege. The firm continues to represent the plaintiffs on the government’s appeal of the District Court’s order.
Represented alleged victims of various mortgage foreclosure specialists in multiple cases. See the article Foreclosure Predator Steals Home But Pays the Price (below) for details regarding one such engagement.
Represented the Santa Clara County Democratic Central Committee and its elected Chairman in its appeal of a First Amendment challenge to the enforcement of a Department of Veterans Affairs regulation being used to selectively bar voter registration by political parties at long term care facilities for veterans.
Publications
- Foreclosure Predator Steals Home But Pays the Price San Francisco Daily Journal 07.11.2001
- Patent Opinions, Privileges, and the Advice of Counsel Defense to Claims of Willful Patent Infringement: Litigation Counsel Caught in the Crossfire 19 Hastings Comm/Ent L.J. 949 1997
