Marc S.Blackman

Of Counsel

Chicago + 1.312.269.4369

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Marc Blackman is an intellectual property lawyer with more than 25 years of experience representing technology companies in high-stakes patent infringement cases. Recognized by The Legal 500 as having "strong technical skills," Marc handles cases involving a wide range of technology, including computer hardware and software, semiconductor structures and fabrication, wireless communication, mobile devices, image sensors, LEDs, digital cameras, and other consumer electronics products. Marc represents clients in patent disputes before U.S. district courts, the International Trade Commission, and the USPTO Patent Trial and Appeal Board (PTAB).

Marc helps clients achieve their business and legal goals, including promptly and efficiently resolving matters through motion practice and inter partes review (IPR) proceedings. For example, Marc resolved a case on behalf of Kyocera after successfully moving for judgment on the pleadings that the asserted patent related to error-checking telecommunications technology was invalid for lack of patentable subject matter. On behalf of Nikon, he successfully challenged two patents in IPR proceedings with the PTAB finding 116 claims unpatentable.

Marc has substantial experience litigating cases in popular patent jurisdictions, including the Eastern District of Texas, the District of Delaware, the Western District of Wisconsin, and the Northern District of Illinois. He published an annotated version of the Local Patent Rules for the Northern District of Illinois and contributes to Jones Day's PTAB litigation blog.

Marc engages in various pro bono activities. As a part of the Firm's Border Project, he provides immigration counseling to Central American women fleeing from persecution. He also volunteers with Working in the Schools to mentor Chicago elementary school children.

Experience

  • Tineco prevails in ITC patent infringement dispute with Bissell over wet-dry surface cleaning devicesJones Day represents Tineco Intelligent Technology Co., Ltd. as respondent in an ITC Section 337 investigation filed by complainants Bissell Inc. and Bissell Homecare Inc. ("Bissell") relating to wet-dry surface cleaning devices.
  • Nikon obtains prompt voluntarily dismissal of complaint alleging infringement of media content and storage patentOn behalf of Nikon, Jones Day successfully persuaded Rothschild Broadcast Distribution Systems to voluntarily dismiss its complaint after identifying a strong patent-ineligible invalidity and several strong non-infringement positions in response to allegations that Nikon infringed a patent generally relating to media content storage and delivery.
  • Nikon obtains immediate voluntary dismissal after presenting dispositive defense to patent infringement allegationsOn behalf of Nikon Corporation, Jones Day successfully convinced the plaintiff to voluntarily dismiss its lawsuit against Nikon after Jones Day identified a dispositive defense against allegations that Nikon infringed a patent generally relating to media systems for transferring digital files.
  • Nikon successfully resolves patent infringement dispute involving communication between digital cameras and personal computersJones Day defended Nikon Corporation and Nikon Inc. against allegations that their digital cameras infringed patents owned by Papst Licensing GmbH & Co. KG ("Papst"), a German patent-holding company.
  • Lennox secures voluntary dismissal of complaint accusing iComfort S30 Smart Hub system of infringementOn behalf of Lennox Industries Inc., Jones Day obtained voluntary dismissal of a patent infringement lawsuit after identifying strong non-infringement positions.
  • Canon and Nikon win eight IPRs against two Papst patentsJones Day successfully represented both Canon and Nikon in eight inter partes reviews relating to two patents owned by Papst Licensing (U.S. Patent Nos. 8,504,746 and 8,966,144).
  • Kyocera defends against patent infringement claims relating to telecommunications technologyJones Day is defending Kyocera Corporation and Kyocera International, Inc. in a patent infringement action brought by Bell Northern Research (“BNR”).
  • Kyocera obtains judgment of invalidity against patent asserted by Dutch telecommunications company Koninklijke KPN N.V.Jones Day successfully defended Kyocera Corporation and Kyocera International, Inc. against allegations that their mobile phones infringed a patent relating to error-checking telecommunications technology.
  • Kyocera dismisses patent infringement claims relating to LTE telecommunications technologyJones Day obtained dismissal of two patent infringement cases brought against Kyocera Corporation and Kyocera International, Inc. in the Eastern District of Texas.
  • Kyocera defends against patent infringement claims relating to instant messagingJones Day is defending Kyocera International, Inc. in a patent infringement action brought by Uniloc in the Eastern District of Texas.
  • Kyocera obtains dismissal of patent infringement claims related to thumbnail image technologyJones Day obtained dismissal of a patent infringement case brought against Kyocera Communications, Inc. in the Eastern District of Texas.
  • Kyocera obtains dismissal of patent infringement claims related to Bluetooth technologyJones Day obtained dismissal of a patent infringement case brought against Kyocera Communications, Inc. in the Eastern District of Texas.
  • Cree defends claims of infringement based on Honeywell patents directed to white LEDsJones Day defended Cree, Inc. from patent infringement claims brought by Honeywell Inc. in New Jersey concerning two patents directed to white LEDs, one of which had been re-issued by the USPTO in light of Cree's products.
  • Kyocera obtains dismissal of patent infringement allegations related to image-capturing devicesJones Day obtained dismissal of patent infringement case against Kyocera International, Inc. brought by non-practicing-entity Alex is the Best ("AITB") in the District of Delaware.
  • Kyocera obtains voluntary dismissal of patent infringement case related to "music jukeboxes"On behalf of Kyocera International, Inc., Jones Day obtained a voluntary dismissal based upon pending inter partes review of the patents asserted in an infringement case brought against Kyocera by Advanced Audio Devices.
  • Kyocera obtains dismissal of "sticky path" computer display accusationsJones Day obtained dismissal of case against Kyocera International, Inc. alleging that its cell phones infringe two patents relating to the display of a dynamically-updating "sticky path" to view hierarchical information in a graphical user interface.
  • OmniVision defends against Caltech's patent infringement claims relating to CMOS image sensor technologyJones Day represented OmniVision Technologies, Inc. in a patent infringement action brought by the California Institute of Technology (Caltech) in the District of Delaware.
  • Kyocera defends patent infringement suit by Imperium (IP) Holdings involving CMOS image sensor technologyJones Day defended Kyocera Communications, Inc. against allegations that its cell phones infringe three patents relating to CMOS image sensor technology.
  • Kyocera attacks three patents relating to CMOS image sensor technologyJones Day represented Kyocera Communications, Inc. in a declaratory judgment action seeking a declaration of non-infringement and invalidity of three patents relating to CMOS image sensor technology.
  • Fenwal obtains reversal of $18M jury verdictJones Day successfully defended Fenwal, Inc. and Baxter Healthcare Corp. in a patent infringement action and appeal against Haemonetics Corporation involving a compact centrifuge device.
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    February 2023 Blog

    FWDs Issue in the Nick of Time to Suspend ITC Orders, PTAB Litigation Blog

    September 2020 Blog

    Reliance on Machine Translations Warrants Denial of IPR Petitions, PTAB Litigation Blog

    May 2020 Blog

    Despite Uncertain Trial Date, PTAB Denies Institution, PTAB Litigation Blog

    March 2020 Blog

    PTAB Focuses on IPR Control to Determine RPI, PTAB Litigation Blog

    October 2019 White Paper

    Tenth Anniversary Update: Annotated Local Patent Rules for the Northern District of Illinois

    September 2019 Blog

    Decision to Deny Institution not Reviewable Despite Prior PTAB Trial, PTAB Litigation Blog

    July 2019 Blog

    PTAB Orders Petitioner’s Expert to Produce Discovery, PTAB Litigation Blog

    April 2019 Blog

    Forum Selection Clause May Preclude PTAB Proceedings, PTAB Litigation Blog

    December 2018 Blog

    Rule 36 Judgment May Support Finding of Collateral Estoppel, PTAB Litigation Blog

    November 2018 Blog

    Seeking District Court Assistance For An IPR Proceeding, PTAB Litigation Blog
    View All

    Speaking Engagements

    • April 8, 2016
      Recent Case Law Concerning FRAND Licensing & Standard Essential Patents (SEPs)
    • April 7, 2016
      Recent Case Law Concerning FRAND Licensing & Standard Essential Patents (SEPs)
    • June 6, 2013
      Jones Day Chicago 2013 MCLE University
    • February 2013
      How To Tame A Troll
    • June 7, 2012
      Jones Day Chicago 2012 MCLE University

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