White & Case LLP - Lawyers

Practice Experience

Mark Weinstein, an Intellectual Property partner in White & Case's Silicon Valley office, concentrates on the litigation of patent and technology-related disputes. He has participated in a number of high-stakes litigations throughout the United States involving a variety of technologies including computer software and hardware, Internet applications, electronic transactions, e-commerce, computer networking, entertainment software and medical devices. Mr. Weinstein serves as Executive Partner in charge of the firm's Silicon Valley office.

Mark served as law clerk to the Honorable Thomas J. Whelan, United States District Court for the Southern District of California. Before entering the practice of law, Mark worked for several years as a professional software engineer in the fields of computer networking, telecommunications and data storage.

Mark is a frequent lecturer on all aspects of intellectual property protection and has taught classes at Santa Clara University on IP litigation. Some of Mark's more notable engagements include:

Patents:

Facebook, Inc. In Cross-Atlantic Capital Partners, Inc. v. Facebook, Inc. (E.D. Pa.) and Leader Technologies, Inc. v. Facebook, Inc. (D. Del.), Mark is defending Facebook in two patent infringement suits relating generally to social networking and web technologies.
HTC Corporation and HTC America. In HTC v. Technology Properties Ltd. (N.D. Cal.), Mark represents HTC in a multi-patent case relating to microprocessor technologies. In SP Technologies, Ltd. v. HTC (N.D. Ill.), Mark is defending HTC in a patent case involving user interfaces for touch-screen devices.
Oplink Communications, Inc. In Oplink Communications, Inc. v. O-Net Communications (Shenzhen) Ltd., Mark represented Oplink in a patent infringement, trade secret misappropriation and breach of contract case relating to optical telecommunications networks.
EMC Corporation. In Hewlett-Packard Company et al. v. EMC Corporation, Mark represented EMC in a patent infringement suit involving thirteen patents relating to mass data storage systems, servers and printers. HP initiated the lawsuit by suing EMC for alleged infringement of seven patents. EMC counterclaimed against HP with six of its own patents. Following claim construction proceedings and motion practice, the case settled with HP agreeing to pay EMC more than $325 million, one of the largest patent settlements on record.
In-Three, Inc. In IMAX Corporation v. In-Three, Inc., Mark represents In-Three in a patent dispute involving software for producing three dimensional motion pictures. In-Three defeated a motion for preliminary injunction filed by IMAX that threatened to shut down In-Three's operations.
eBay Inc. In Tumbleweed Communications Corp. v. eBay, Inc. et al., Mark defended eBay and its subsidiary PayPal against allegations of infringement of three software patents related to electronic financial transactions. The case settled on favorable terms during the pendency of a summary judgment motion filed by eBay and PayPal that sought to invalidate Tumbleweed's patents in light of the prior art.
Microsoft Corporation. Mark has represented Microsoft in a variety of patent infringement matters including VMware, Inc. v. Microsoft Corporation et al. (patent suit involving virtual machine technology), Reiffin v. Microsoft (patent suit involving multithreading technology), and InterTrust v. Microsoft (patent suit involving computer security and digital rights management technologies).
Cisco Systems, Inc. Mark represents Cisco in a variety of patent and IP counseling matters.

Trade Secrets:

Cirrus Logic, Inc. In Silvaco Data Systems v. Cirrus Logic, Inc., Mark represents Cirrus Logic in a trade secret lawsuit involving Electronic Design Automation technology. Cirrus Logic recently obtained summary judgment that it did not misappropriate any of the plaintiff's trade secrets.
Alstom ESCA Corporation. In ABB Power T&D Company v. Alstom ESCA Corporation et al., Mark was a member of a team representing Alstom in a six week federal jury trial involving claims for trade secret misappropriation, copyright infringement, breach of contract and a variety of business torts, which resulted in a unanimous verdict exonerating the client from liability. The technologies in the case related to hardware and software systems for the electric power industry.
Advanced Modular Sputtering (AMS). In Sputtered Films, Inc. v. Advanced Modular Sputtering, Inc. et al., Mark represented AMS in a trade secret case involving PVD sputtering technologies. The case generated an oft-cited decision clarifying California’s statute requiring plaintiffs to identify their trade secrets, Advanced Modular Sputtering v. Superior Court, 132 Cal. App. 4th 826 (2005).
Minerva Networks, Inc. In Myrio, Inc. v. Minerva Networks, Inc., Mark defended Minerva against trade secret, unfair competition and false advertising claims involving technologies for delivering television and multimedia services over broadband networks. The case settled favorably after the court ruled that Myrio had failed to adequately identify its trade secrets.

Other Engagements:

DVD Copy Control Association (DVD CCA). In RealNetworks, Inc., et al. v. DVD Copy Control Association, Inc. et al. (N.D. Cal.) and DVD Copy Control Association, Inc. v. Kaleidescape, Inc. (Santa Clara Sup. Ct.), Mark represents the DVD CCA in two separate actions alleging breach of the technology license that covers use of the Content Scramble System (CSS) technology that is used to prevent copying of motion picture DVDs. Both cases are pending.
Marshal Software. Mark represented Marshal, a leading producer of Internet security and anti-spam software, in three trademark and unfair competition lawsuits against competing companies. All three cases resulted in the defendants agreeing to rebrand their products to avoid any use of Marshal's trademarks.
Verio Inc. Mark oversees all nationwide litigation for Verio, one of the largest web hosting providers in the United States.

Bars and Courts
California State Bar
US District Courts for the Central, Northern and Southern Districts of California
US Court of Appeals for the Federal Circuit
US District Court for the Eastern District of Texas

Education
JD, University of San Diego, magna cum laude, Order of the Coif, San Diego Law Review, 1997
BS, University of California, San Diego, 1992

Professional Associations and Memberships
American Bar Association
American Intellectual Property Law Association
Silicon Valley Intellectual Property Law Association
Association of Computing Machinery (ACM)

Selected Speaking Engagements and Publications
Co-author, Review of Io Group, Inc. v. Veoh Networks, Inc.; 2008 WL 4065872, No. 06-3926 (N.D. Cal. 27 Aug. 2008), E-Commerce Law Reports, Vol. 8, Issue 03, December 2008 (with Heidi Keefe and Jeremiah Burke)
"Patent Opinions and Advice of Counsel after the Seagate Case," 2008 Symposium on International Intellectual Property Strategies for Taiwanese High-Tech Companies, Taipei, Taiwan, May 28, 2008 and Hsinchu, Taiwan, May 30, 2008
Mark moderated a panel on "What Challenges Do Entrepreneurs Face When Licensing or Enforcing Patents?" at the Berkeley Center for Law & Technology's Symposium on "IP & Entrepreneurship,” Berkeley, California, March 7 - 8, 2008
"You've Been Served: What to do When You Are the Subject of a Major IP Litigation," Association of Corporate Counsel - San Francisco Bay Area's 3rd Annual CLE Spring Training Day, San Francisco, CA, April 18, 2008
Co-author, "Douglas v United States District Court: Enforcing modified contracts: notification and assent," E-finance & Payments Law & Policy, Volume 01, Issue 13, October 2007 (with Heidi Keefe)
"Software and Business Method Patents" and "Trade Secrets and their Relationship to Patents," First International Conference on Communications System Software and Middleware (COMSWARE), New Delhi, India, January 10, 2006
Co-author, "Best Practices for Creating Effective and Enforceable End User Agreements," presented at the Third Annual E-Commerce Best Practices Conference, Stanford Law School, June 12, 2006
Co-author, "O'Grady v Superior Court: Publishers of Online News Websites Need Not Reveal Sources of Confidential Information," E-Commerce Law Reports, Vol. 6, No. 2, June 2006
Co-author, "Phillips v. AWH Corp.: Reaffirming the Claim Construction Status Quo," The Colorado Lawyer, Vol. 34, No. 11, November 2005

Languages
English

Citizenship
United States