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Mark H. Krietzman

Mark Krietzman is a technology lawyer and is registered with the USPTO. He is a strategist who works closely with clients to develop IP portfolios and manage IP litigation. Mark was recognized as one of the “Top 25 Intellectual Property Portfolio Managers in California” by the San Francisco Daily Journal and Los Angeles Daily Journal (2010).

Mark works with national and foreign private and publicly traded companies. He has been a leader in developing new strategies in patent prosecution which utilize global changes in the interactions between sovereign patent offices to benefit patent prosecution at the USPTO.

Mark has counseled national and international governmentally-sponsored entities. He currently sits as the foreign advisor to Dr. Chi-Huey Wong, the President of Academia Sinica in Taiwan. Mark has experience and background in diverse technologies, including chemical, pharmaceutical, nutraceutical, electrochemistry (fuel cell), hydrogen generation, advanced battery technology, distributed power generation, software, plasmonics and medical devices.

Mark has also worked with many early- and mid-stage companies to audit, prune and grow their intellectual property portfolios to achieve defensible and/or exploitable intellectual property which supports both fund raising and enforcement. He has also been involved in many high profile patent litigations in the Federal District Court in the United States and in the United Kingdom Patent Court and United Kingdom Court of Appeals.

RECENT WORK/REPRESENTATIVE MATTERS

Transactional

• Develop portfolios of energy patents related to hydrogen generation and distribution technology.
• Patent strategist and counselor to Gradient Technologies regarding their worldwide medical device patent portfolio.
• Patent portfolio management and strategist for Academia Sinica revitalizing their patent disclosure procedures, and evaluating licensing of their technologies.
• Patent portfolio development for Perfect Point EDM hand held disintegration patent portfolio.
• Patent portfolio development for ECA Medical.
• Diligence and FTO for major US biodiagnostic company.

Patent & Trademark Litigation and USPTO Proceedings

• Intelligent Energy Ltd. v. Penton Business Media—Successful Opposition (91195436) Media agreed to abandoned its pending mark.
• SmugMug v. VPS—Representing SmugMug in its Declaratory Judgment action against VPS LLC related to photosharing technology.
• Mag Instruments v. JS Products—Represented JS Products in a successful patent and trademark litigation against Mag. A favorable confidential settlement was resolved with no admission of infringement.
• LG Philips LCD v. Tatung—Representation of Tatung UK in a patent infringement action. Patents were held invalid.
• LG Philips LCD v. Tatung—Representation of Tatung UK in an appeal from the Patent County Court judgment. LG Philips’ patents were held invalid.
• Safer Display v. Jean Company—Representation of Jean Co. in patent infringement litigation involving on screen displays. Parties entered into a favorable confidential settlement.
• Safer Display v. Tatung Company—Representation of Tatung in patent infringement litigation involving on screen displays. Resolved by a favorable confidential settlement.
• Genera v. OBX—Representation of Genera Corp. in a trademark infringement action against OBX regarding headlamps. Judgment entered against OBX.
• Yokohama v. South China Tires—Representation of South China in patent infringement litigation involving tire tread design. Parties entered into a favorable confidential settlement.
• LG Philips v. Tatung Company—Representation of Tatung in a U.S. patent infringement action. LG Philips’ “side mount” patents found unenforceable.
• LG Philips v. Tatung Company—Representation of Tatung in a U.S. patent infringement action in the District Court of Delaware. Case involved LG Philips’ “rear mount” patents. Tatung received a favorable settlement after a Markman ruling.

PUBLICATIONS & PRESENTATIONS

• Author: “The Art of Patent War,” Law360 (February 2, 2010).
• White Paper: “If Ad Speak Can Be Prior Art—Is Internet Speak Next?” (January 2010)
• Co-Author (with Peter Gluck): “Losing Con-Troll,” Daily Journal (August 12, 2009)
• Co-Author (with Peter Gluck): “Without New Regulations, Foreign Patent Trolls Will Proliferate,” Los Angeles Daily Journal (July 15, 2009)
• Author: “In the Trenches—Real IP Strategy,” Orange County Business Journal (July 13, 2009)
• Speaker: “A proactive approach to IP protection,” presentation at the Daily Transcript, with web broadcast, San Diego, California (December 2009).
• Speaker: “The Nature of the Approval Process for Drugs and Biologics: What Every Life Sciences Patent Attorney Should Know,” Pharma/Biotech Patent Boot Camp, The American Conference Institute, San Francisco, California (September 2007).
• Speaker, “Lundgren’s Island,” insights into the Hatch-Waxman Act, HUGO-AP 2006, Taipei, Taiwan (March 2006).
• Speaker, “Creating High Value IPR,” The Genomics Research Center at Academia Sinica, Taiwan (March 2005).