Backofen, Mark

Mark Backofen

Partner
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Mark Backofen has over 20 years of experience in all aspects of intellectual property, including patents, trademarks, copyrights and trade secrets, both in litigation as well as their preparation and prosecution. Mark's broad experience allows the issue to be addressed from both a litigation as well as transactional viewpoint. He has been involved in litigation in Federal Courts in Texas, Washington, D.C., and New York as well as administrative proceedings in the U.S. Patent and Trademark Office.

Mark Backofen has over 20 years of experience in all aspects of intellectual property, including patents, trademarks, copyrights and trade secrets, both in litigation as well as their preparation and prosecution. Mark's broad experience allows the issue to be addressed from both a litigation as well as transactional viewpoint. He has been involved in litigation in Federal Courts in Texas, Washington, D.C., and New York as well as administrative proceedings in the U.S. Patent and Trademark Office.

Mark is experienced in preparing and prosecuting patents and trademarks, both in the United States as well as worldwide, in the chemical, mechanical and medical device fields. Additionally, Mark advises clients regarding intellectual property issues. This includes counseling clients regarding the development and protection of their intellectual property, licensing of patents, technology, software and trademarks (both national and international), infringement/validity opinions and design around programs. Mark further assists with the intellectual property, information technology and privacy aspects of mergers and other corporate transactions.

Mark's representative experience includes:

  • Represented a major bank with respect to infringement claims relating to online banking, mobile wallets, chip card technology and distributed computing
  • Represented a software development company working in artificial intelligence regarding the protection and licensing of their technology.
  • Represented a technology- based marketing company in the music industry regarding advertising and sweepstakes issues
  • Represented a medical device manufacturer through verdict and appeal in asserting patent and trade secret infringement against various competitors
  • Defended major oil companies against claims of patent infringement and theft of trade secrets
  • Represented various startup companies in developing their patent and trademark estates as well as adequately protecting their trade secrets and other confidential information, including in the chemical, material engineering, oilfield tools and treatment fluids, medical, mechanical, software and other fields
  • Represented numerous companies in designing and implementing a global patent filing and protection program
  • Represented a major entertainment company in defending trademark and copyright litigation involving one of its major movie franchises
  • Represented various companies in licensing patents, trademarks and software, both nationally and internationally
  • Represented a major manufacturer in various cancellation and opposition proceedings before the Trademark Trial and Appeal Board
  • Represented a major manufacturer in designing around competitor patents for consumer products
  • Represented a trademark licensee in connection with the bankruptcy petition of a well-known trademark licensor resulting in the preferred bidder obtaining the related trademark portfolio and helped negotiate a partial sale of the trademarks from the successful bidder
  • Advised a distribution company regarding various patent and copyright issues relating to the importation of fashion bags, luggage and other products
  • Represented a national nonprofit organization in connection with registering copyrights in secure tests that are not publicly available as well as a related infringement suit
  • Advised numerous companies in connection with various corporate transactions and negotiated purchase terms and representations relating to intellectual property, including in the energy, consumer products, health care, renewable energy, 3D printing, manufacturing, fashion, services and software industries
Reported Decisions

Mark’s reported decisions include:

  • Diamondback Industries, Inc. v. Repeat Precision LLC et al., 6:19cv00034 (W.D.Tex. 2020) (Waco Div.) (patent infringement)
  • Rex Real Estate I, LP v. Rex Real Estate Exchange Inc., 1:19cv00696 (W.D. Tex.) (Waco Div.) (trademark infringement)
  • Lighthouse Consulting Group LLC v. HSBC USA, Inc., 6:19cv00598 (W.D.Tex. 2020) (Waco Div.) (patent infringement)
  • Warner Chilcott (US) LLC v. Zydus Pharmaceuticals International Ltd. et al., 2:16cv0323 (E.D.Tex. 2016) (Marshall Div.) (ANDA patent infringement)
  • Effective Exploration LLC v. Comstock Oil & Gas LP, 2:14cv00875 (E.D.Tex. 2016) (Marshall Div.) (patent infringement)
  • Textron Innovations v. American Eurocopter, 4:09cv377 (N.D.Tex. 2011) (Ft. Worth Div.) (patent infringement)
  • Retractable Technology, Inc. v. Becton Dickinson, 2:07cv250 (E.D.Tex. 2009) (Marshall Div.) (patent infringement)
  • Retractable Technologies, Inc. v. OMI, 6:08cv120 (E.D.Tex. 2009) (Tyler Div.) (patent and trade secret infringement)
  • American Heart Association v. Stafford, 3:08-CV-1460 (N.D.Tex. 2008) (Dallas Div.) (copyright and trademark infringement)
  • American Safety Razor Co. v. Dorco USA, 9:07cv229 (E.D.Tex. 2007) (Beaumont Div.) (patent, copyright, trademark and false advertising)
  • Cozby v. Disney Enter., 4:06cv547 (N.D.Tex. 2006) (Ft. Worth Div.) (copyright and trademark infringement)
  • Olivadoti v. Brampton, 05cv9627, (S.D.N.Y. 2005) (trade secret, fraud and unfair competition)
  • Maxma v. ConocoPhilips, 2:03cv421 (E.D.Tex. 2003) (Marshall Div.) (patent and trade secret infringement)
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CREDENTIALS
Education
  • J.D., Vanderbilt University Law School, 2001

    Order of the Coif
    Moot Court Board

  • B.S., Chemistry,

    cum laude

    , State University of New York at Geneseo, 1998
Bar Admissions
  • Texas, 2001
  • U.S. Patent and Trademark Office
Court Admissions
  • U.S. District Court for the Eastern District of Texas, 2005
  • U.S. District Court for the Northern District of Texas, 2001
  • U.S. Court of Appeals for the Federal Circuit, 2005
  • U.S. District Court for the Southern District of Texas, 2007
  • U.S. Supreme Court, 2012
  • U.S. Court of Appeals for the Fifth Circuit, 2013
  • U.S. District Court for the Western District of Texas, 2019
Professional Affiliations
    • IP Section Member, State Bar of Texas
    • IP Section Member, Dallas Bar Association
    • American Intellectual Property Law Association
      • Patent Law Committee
      • Chemical Practice Committee
    • Post Grant Patent Office Practice Committee, Intellectual Property Owners Association
    • International Trademark Association