Mr. Marcus brings a unique focus based on years of IP experience representing clients seeking to protect and enforce their patent and trademark rights or seeking to defend against charges of infringement. Mr. Marcus has represented clients in high stakes and complex litigations involving patent, trademark, unfair competition, trade secret and related anti-trust and contract issues. Mr. Marcus has regularly appeared in federal district courts throughout the U.S. and at the International Trade Commission. He also has a strong record of success before the Federal Circuit Court of Appeals, and has overturned district court decisions in cases where he was retained just for the appeal. Mr. Marcus recognizes the risks and costs of IP litigation, however, and prides himself on achieving clients' business objectives while avoiding litigation or by achieving settlements through effective pre-trial strategies and mediation. Many of Mr. Marcus’ cases are resolved by summary judgment. Mr. Marcus has been recognized repeatedly by The Best Lawyers in America and by Super Lawyers, and has been consistently rated by Martindale-Hubbell as a top ranked attorney.
Education
- J.D., New York University School of Law, 1964
Member, Ammd Survey of American Law - B.S., Mechanical Engineering, Syracuse University, 1961
Bar Admissions
- New York
- U.S. Supreme Court
Admitted To Practice
- U.S. District Court for the Southern District of New York
- U.S. District Court for the Eastern District of New York
- U.S. District Court for the Eastern District of Wisconsin
- U.S. Court of Appeals for the Second Circuit
- U.S. Court of Appeals for the Federal Circuit
- U.S. Patent and Trademark Office
Representative Experience
- PPC v. International Trade Commission (Fed. Cir.): Co-counsel for PPC in appeal from adverse ITC decision.
- Gemini v. Genesys Conferencing (West Corporation) (E.D. Tex.): Lead counsel for Genesys in patent suit by Non-Practicing Entity relating to Internet-based business method patent; settled.
- R.J. Katz v. Genesys Conferencing et al: Lead counsel for Genesys in MDL patent infrigement suit by Non-Practicing Entity; settled before trial.
- Lorillard Tobacco Company v. Liggett Group: Lead counsel for Lorillard in trademark suit alleging infringement of NEWPORT package design; settled.
- Lorillard Tobacco Company v. R.J. Reynolds Tobacco Company: Lead counsel for Lorillard in a trademark unfair-trade practices suit; obtained Rule 12(b)(6) dismissal of RJR’s unfair trade practices counterclaim based on application of the Noerr-Pennington Doctrine.
- Lorillard Tobacco Company v. Super City Trading: Obtained permanent injunction against sales of cigarette cases imitating Lorillard’s well-known NEWPORT cigarette packages.
- Ledergerber v. W.L. Gore & Associates, Inc: Lead counsel for Gore in obtaining summary judgment that asserted patent is invalid; Lead counsel for Gore in appeal for Ledergerber 2010 U.S. Dist. LEXIS 90453 (Sept. 1, 2010).
- Kawasaki Heavy Industries, Ltd. v. Bombardier Recreational Products, Inc., et al. (E.D. Tex.): Lead counsel for Bombardier; defeated Rule 60(b)(3) motion to vacate dismissal of patent suit. Published Decision: 2009 U.S. Dist. LEXIS 96066 (Sept. 16, 2009).
- C.R. Bard v. W.L. Gore & Associates, Inc: Member of defense team for Gore in high stakes litigation involving life-saving vascular prostheses; opposed permanent injunction; co-counsel for Gore on appeal to Federal Circuit.
- Edwards Lifesciences LLC et al. v. W.L. Gore: Lead counsel for Gore in suit charging it with infringement by virtue of sales of life saving aortic stent-grafts; obtained summary judgement of non-infringement and affirmance by Federal Circuit Court of Appeals. Published Decision: 2009 WL2998543 (Fed. Cir. 2009).
- Bombardier Recreational Products v. Kawasaki Heavy Industries, Ltd., et al. (M.D. Fla.); Bombardier v. Kawasaki et al. (E.D. Tex.); Kawasaki v. Bombardier Recreational Products (E.D. Tex.): Lead Counsel for Bombardier in three litigations involving patents directed to personal watercraft. Globally settled before trial.
- In the Matter of Certain Wireless Communication Equipment, Articles Therein and Products Containing the Same: Co-counsel for Ericsson and Sony-Ericsson in ITC 337 proceeding bought by Samsung alleging infringement of seven patents directed to cell phone technology. Settled on eve of trial.
- Boss Control, Inc. et al. v. Bombardier, Inc. et al.: Lead Counsel for Bombardier in defense against charges of infringing patent on electronic safety system used in watercraft and snowmobiles. Obtained summary judgment of noninfringement and subsequent affirmance by Federal Court Court of Appeals. Published decisions: 410 F.3d 1372; 2005 U.S. App. LEXIS 10543; 75 U.S.P.Q.2D (BNA) 1038 (Fed. Cir. 2005).
- Empresa Cubana del Tabaco v. General Cigar, Inc.: Co-counsel for General Cigar in landmark trademark case in which the Second Circuit Court of Appeals reinstated General Cigar's federal registration rights to COHIBA mark and rejected Cubatabaco's numerous claims under Lanham Act and International Treaties. Published decisions: 399 F.3d 462, 73 USPQ2d 1936 (2d Cir. 2005)
- In The Matter Of Certain Personal Watercraft and Components Thereof: Lead counsel in defense of Bombardier Inc. in ITC 337 proceeding by Yamaha Motor Co. and Sanshin Industries alleging infrigement of 11 patents directed to personal watercraft. Obtained dismissal of five of the patents before trial through motions for summary determination. Settled after trial on remaining patents. Published decisions: 2001 ITC LEXIS 865 (August 14, 2001) (Initial Determination Granting Respondents' Motion For Summary Determination With Respect To U.S. Patent No. 5,390,621); 2001 ITC LEXIS 867 (August 20, 2001) (Initial Determination Granting In Part Respondents' Motion For Summary Determination Of Noninfringement And Invalidity Of Claim 1 Of U.S. Patent No. 4,813,898); 2001 ITC LEXIS 586 (September 4, 2001) (Initial Determination Granting In Part Respondents' Motion For Summary Determination Of No Domestic Industry Of Claims 1-22 Of The 5,699,749 Patent); 2001 ITC LEXIS 974 (November 15, 2001) (Initial Determination Granting Respondents' Motion For Summary Determination That Asserted Claim 24 Of U.S. Patent No. 4,811,560 Is Invalid For Violation Of 35 U.S.C. §102(b)); 2001 ITC LEXIS 973 (November 16, 2001) (Initial Determination Granting Respondents' Motion For Summary Determination That Asserted Claim 9 Of U.S. Patent No. 5,550,337 Is Invalid For Violation Of 35 U.S.C. §102(b)).
- Yamaha et. al. v. Bombardier et. al.: Lead Counsel in defense of Bombardier in action by Yamaha Motor Co. and Sanshin Industries Company, Inc. involving allegations of infringement of 33 patents directed to personal watercraft. The case was settled with companion ITC proceeding. Interlocutory Published decisions: 2001 U.S. Dist. LEXIS 10738; 59 U.S.P.Q.2D (BNA) 1088
- Kollmorgen Corporation v. Yaskawa Electric Corporation and Yaskawa Electric America, Inc.: Lead Counsel for patentee Kollmorgen in infringement action with respect to patents directed to electric motor control systems. Settled before trial. Interlocutory Published decisions: 147 F.Supp.2d 464 (W.D. Va. 2001); 169 F.Supp.2d 530 (W.D. Va. 1999).
- Yaskawa Electric Corporation and Yaskawa Electric America, Inc. v. Kollmorgen Corporation and IMAC Motion Control Corporation: Lead Counsel for defendant Kollmorgen in suit alleging infringement of patent on synchronous motor control. Settled before trial.
- Unocal Corporation and Union Oil Company of California v. Atlanta Richfield Company, Chevron U.S.A., Inc., Exxon Corporation, Mobil Oil Corporation, Shell Oil Products and Texaco, Inc.: Co-counsel for defendant oil companies in patent suit involving reformulated gasoline mandated by the EPA and the State of California to reduce air pollution.
- C.R. Bard, Inc. v. M3 Systems, Inc.: Co-Counsel for C.R. Bard on appeal in patent infringement action involving automatic biopsy needle. Published decisions: 157 F.3d 1340, 1998-2 Trade Cases P 72,289, 48 U.S.P.Q.2d 1225 (Fed.Cir. 1998).
- General Cigar v. GDM Inc.: Lead Counsel for General Cigar in case involving infringement of General Cigar's COHIBA trademark. Settled after obtaining preliminary injunction. Published decisions: 988 F.Supp. 647, 45 U.S.P.Q.2d 1481 (S.D.N.Y. 1997).
- Stryker Corp. and Osteonics Corp. v. Intermedics Orthopedics, Inc. and Marli Medical Supplies, Inc.: Co-counsel for plaintiffs on appeal affirming patent infringement award of $72 million, including increased damages and attorney fees. Published decisions: 891 F.Supp. 751 (E.D.N.Y. 1995); affirmed 96 F3d. 1409 (Fed. Cir. 1996).
- MPR Associates, Inc. v. General Electric Co.: Lead patent counsel defending General Electric against change of infringing patent directed to repair of nuclear reactors. Case settled after defeating motion for preliminary injunction.
- Mobil Oil Corp. v. Amoco Chemical Corp: Represented patentee Mobil in petrochemical patent case which resulted in a $120 million award to client. Published decisions: 779 F. Supp. 1429 (D. Del. 1991), aff'd, 980 F.2d 742; 915 F.Supp. 1333; 1994 U.S. Dist. LEXIS 20851; 1994 WL 657913 (D. Del. 1994).
- Spancrete Mach. Corp. v. RH&M Machine Co.: Retained by patentee Spancrete for appeal from adverse decision in patent infringement case involving backhoes. Obtained reversal of jury verdict of noninfringement under doctrine of equivalents. Published decisions: 34 F.3d 1080 (Fed. Cir. 1994); 1994 WL 42460 (Fed. Cir. Aug. 15, 1994); 1994 U.S. App. LEXIS 22257.
- Duracraft Corporation v. Honeywell: Represented Duracraft in suit involving patent on HEPA air cleaners. Obtained summary judgment dismissing trade dress infringement claims after which case settled. Published decisions: 881 F.Supp. 685 (D.Mass 1994); 1994 U.S. Dist. LEXIS 20089; 38 U.S.P.Q.2d (BNA) 1793.
- Phoenix Laser Systems, Inc. v. Intelligent Surgical Lasers, Inc.: Lead Counsel for Phoenix Laser in patent litigation involving laser technology for eye surgery. Defeated motion for summary judgment of infringement after which case was settled.
- Braun v. Dynamics Corp. of America: Retained by Dynamics Corporation of America for appeal from adverse decision in design patent/trade dress infringement case involving hand-held blenders. Obtained reversal of jury verdict of willful patent infringement, as well as Lanham Act trade dress infringement and unfair competition. In case of first impression, also obtained precedential Federal Circuit ruling that infringer's profits awarded under 35 U.S.C. § 289 cannot be increased for willful infringement. Published decisions: 975 F.2d 815; 1992 U.S. App. LEXIS 21127; 24 U.S.P.Q.2d (BNA) 1121; 93 Daily Journal DAR 1908 (Fed. Cir. 1992).
- Daniel Dickey & Trine Manufacturing Co., Inc. v. B & H Manufacturing, Inc.: Lead Counsel for plaintiff in declaratory judgment action against patents on heat shrink labeling technology. Settled on eve of trial. Interlocutory Published decision: 1991 WL 322239 (E.D.Ca.).
- Procter & Gamble Co. v. Nabisco, Keebler & Frito Lay: Represented P&G in patent and trade secret case involving use of sugar chemistry. After moving to vitiate privilege for fraud, settled on eve of trial for payment to P&G of $125 million, the largest recovery in a patent case, at the time. Published decisions: 711 F.Supp. 759 (D.Del. 1989); 697 F.Supp. 1360 (D.Del. 1988); 125 F.R.D. 405 (D.Del. 1987); 109 F.R.D. 673 (D.Del. 1986); 111 F.R.D. 326 (D.Del. 1986); and 604 F.Supp. 1485 (D.Del. 1985).
- Nintendo of America, Inc. v. Magnavox: Patent counsel for Nintendo “pong” video game patent that twice had been previously upheld. Developed new prior art defense that resulted in settlement on the eve of trial. Interlocutory Published decision: 707 F.Supp. 717 (S.D.N.Y. 1989).
- Lux et al. (Sandvik) v. Hale (G.E.): Lead Counsel for General Electric in patent interference involving cutting tools and metallurgy. Obtained award for G.E. on all counts resulting in millions of dollars in future royalty payments.
- DMI, et al. v. Duplan, et al.: Co-counsel representing patentee against 17 major textile companies in patent and antitrust suit involving the texturing of synthetic yarn. Responsible for the only patents of the eight in suit held valid or infringed. Published decisions: 487 F.2d 459 (4th Cir. 1973); 487 F.2d 459 (4th Cir. 1973); 459 F.2d 480 (4th Cir. 1973); 509 F.2d 730 (4th Cir. 1974); 522 F.2d 809 (4th Cir. 1975); 540 F.2d 1215 (4th Cir. 1976); 191 U.S.P.Q. 417, 1976-2.
- Grotrian, Helfferich Schulz, Etc. v. Steinway & Sons: Represented Steinway Piano Company (2nd Chair) in trademark case protecting famous Steinway piano trademark against German company claiming to be original Steinway company; landmark case on use of survey evidence. Published decisions: 523 F.2d 1331; 1975 U.S. App. LEXIS 13776; 186 U.S.P.Q. 436 (2d. Cir. (N.Y.) 1975).
Publications & Presentations
- Author, "Practical Strategies For Effectively Managing Complex Patent Litigation in the International Trade Commission," Mealey's Litigation Report: Intellectual Property (November 4, 2002).
- Author, "Design Patent Infringement Put to Sea Without Guiding Charts," AIPLA Vol. 22, No. 22 (Spring 1994).
- Author, "Defending Against Patent Infringement Claims," Gekkan Kaigai Chuzai (April 1992).
Professional History
- Partner, Locke Lord LLP
- Partner, Morgan & Finnegan (1973 - 2009)
Professional Affiliations & Achievements
- Fellow, New York Bar Foundation
- Member, American Bar Association
- Member, American Intellectual Property Law Association
- Member, American Association of Justice
- Member, New York Intellectual Property Law Association
- Member, New York State Bar Association
- Member, Federal Circuit Bar Association
- Member, ITC Trial Lawyers Association
- Named, The Best Lawyers in America, Intellectual Property Law (2007-2013)
- Named, The Best Lawyers in New York, Intellectual Property Law (2007-2011)
- Named, Super Lawyers (2007-2011)
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