Litigation - Intellectual Property Litigation - Patent
Mark C. Nelson
Recognized in Best Lawyers since 2018 Awarded Practice Areas
Biography
Mark Nelson is a partner in Barnes & Thornburg's Intellectual Property and Technology practice based in Dallas and Houston. He has more than 20 years of experience litigating large, multifaceted patent infringement cases in federal district courts and before the International Trade Commission. Mark also has experience in post-grant proceedings, including both inter partes and covered business method reviews (“IPRs” and “CBMs”).
Mark's experience in patent litigation spans a number of diverse technologies, including semiconductor products and the processes used to make such products; telecommunications and networking; satellite communications; gaming technology; pointing systems (indirect and direct); financial services technology (e.g. payment systems, mobile payment systems, check processing, ATM functionality, and software, hardware, and infrastructure supporting same); machine learning; personalized communications systems; solar-powered lighting devices, LED technology and fabrication;Internet-related personalization; location-based technologies and navigation technology; cryptography; electronic circuitry; Internet business methods; search engines; and internet sales; computer software; explosives used in automobile airbags and other automotive technology; soft drink bottling technology; electric motor technology; stereo speakers; cosmetics; chemical compositions used in cosmetics; asexually reproduced plants and plant patents; biotechnology and asynchronous assembly techniques.
In addition, he has experience drafting and negotiating IP license agreements, counseling clients on setting up and maintaining IP licensing and/or IP capture programs, performing corporate IP due diligence, and opinion work. He also has handled copyright, trademark and trade secret matters, and other technology-related litigation matters.
Overview
- The University of Texas, JD, graduated 1995
- University of North Dakota, MS, Biology (concentration in Genetics), graduated 1989
- University of North Dakota, BS, Biology (minor in Chemistry), graduated 1986
- Texas, State Bar of Texas
- United States, U.S. Patent and Trademark Office
- American Bar Association - Co-chair, Genetics and Medical Research Committee, 2005 – 2007
- American Bar Association - Member
- American Intellectual Property Law Association (AIPLA) - Member
- Dallas Bar Association - Member, Intellectual Property Section
- Dallas-Fort Worth Intellectual Property Law Association (DFWIPLA) - Member
- Dallas-Fort Worth Intellectual Property Law Association (DFWIPLA) - President, 2002
- Dallas-Fort Worth Intellectual Property Law Association (DFWIPLA) - President, 2002
- Texas
- US Court of Appeals for the Federal Circuit
- US Court of Appeals for the Third Circuit
- US District Court for the Eastern District of Texas
- US District Court for the Northern District of Texas
- US Patent and Trademark Office
- Texas, State Bar of Texas
- United States, U.S. Patent and Trademark Office
- American Bar Association - Co-chair, Genetics and Medical Research Committee, 2005 – 2007
- American Bar Association - Member
- American Intellectual Property Law Association (AIPLA) - Member
- Dallas Bar Association - Member, Intellectual Property Section
- Dallas-Fort Worth Intellectual Property Law Association (DFWIPLA) - Member
- Dallas-Fort Worth Intellectual Property Law Association (DFWIPLA) - President, 2002
- Dallas-Fort Worth Intellectual Property Law Association (DFWIPLA) - President, 2002
- The University of Texas, JD, graduated 1995
- University of North Dakota, MS, Biology (concentration in Genetics), graduated 1989
- University of North Dakota, BS, Biology (minor in Chemistry), graduated 1986
- Texas
- US Court of Appeals for the Federal Circuit
- US Court of Appeals for the Third Circuit
- US District Court for the Eastern District of Texas
- US District Court for the Northern District of Texas
- US Patent and Trademark Office
Client Testimonials
Awards & Focus
Recognized in The Best Lawyers in America® 2026 for work in:
- Litigation - Intellectual Property
- Litigation - Patent
Awards:
- "Texas Super Lawyer" Intellectual Property Litigation, Thomson Reuters 2012-2013
- Ranked in Intellectual Asset Management (IAM) Magazine's Patent 1000, Texas Intellectual Property-Litigation 2017
News & Media
Additional Information
Case History
Cases
- University of Florida Board of Trustees, An Agency of the State of Florida, and Florida Foundation Seed Producers, Inc., a Not-For-Profit Corporation Chartered by the State of Florida v Hartmann’s Plant Company, (N.D. Florida [Gainesville Division] 2016)
Lead counsel for Univ. of Florida and Florida Foundation is six patent case involving blueberry plants. Obtained a preliminary injunction on behalf of the University requiring the destruction of Defendant’s infringing inventory and that Defendant cease and desist its infringing activity. Case remains pending.
- RFJ Licensing, LLC v. Tait Radio, Inc., (N.D. Texas [Dallas Division] 2016)
Lead counsel for Tait in patent case involving radio communications over the Internet. Case remains pending.
- Bluestone Innovations LLC v. ACE Hardware Corporation, (N.D. California [San Francisco Division] 2016)
Lead counsel defending ACE against patent relating to LED fabrication. Case is pending.
- Bluestone Innovations LLC v.Wayfair, LLC, (N.D. California [San Francisco Division] 2016)
Lead counsel defending Wayfair on patent against relating to LED fabrication. Case is pending.
- Ectolink, LLC v. Bank of Hawaii, (E.D. Texas [Marshall Division] 2015
Lead counsel representing Bank of Hawaii. Following Bank of Hawaii filing a Motion for Lack of Personal Jurisdiction, the case was dismissed with Plaintiff taking nothing.
- Internet Media Interactive Corporation v. ACE Hardware Corp., (N.D. Illinois 2015)
Lead counsel defending ACE on patent relating to QR codes. Case settled shortly after it was filed.
- BSG Tech LLC v. Sears Holdings Management Co., (E.D. Texas [Marshall Division] 2015); Oberalis, LLC v. Sears Holdings Management Co., (E.D. Texas [Marshall Division] 2015; Internet Media Interactive Corporation v. Sears, Roebuck and Co. (N.D. Illinois [Ch
Lead counsel for Sears in multiple venues against multiple patent plaintiffs. Cases settled shortly after they were filed.
- Property Disclosure Technologies LLC v. BRER Affiliates LLC (E.D. Texas [Tyler Div.] 2014)
Lead counsel for BRER on a three patent case relating to real estate reporting forms and software relating to same. Case settled after the filing of a 35 U.S.C. § 101 Motion for Judgment on the Pleadings.
- Grant Street Group, Inc. v. Ipreo Holdings LLC (W.D. Pennsylvania [Pittsburgh] 2014)
Lead counsel for Ipreo in what is round two of the Muniauction v. Thompson dispute. Plaintiff filed the lawsuit and a Motion for Preliminary Injunction in its home venue. Ipreo opposed that motion filed summary judgment of invalidity. The case was dismissed with prejudice after argument on summary judgment and claim construction on the patent claims asserted in the PI.
- Innovative Display Technologies LLC, v. Best Buy Co., Inc. et al. (E.D. Texas [Marshall Div.] 2014)
Lead counsel for Best Buy entities on multi patent case involving LED fabrication technology. The case settled shortly after filing as part of a larger, global settlement involving the patents.
- N5 Technologies LLC, v. Citigroup Inc. and Citibank, National Association (E.D. VA [Norfolk Div.] 2014); Pi-Net International, Inc. v. Citigroup Inc., Citicorp and Citibank, N.A. (Delaware [Wilmington Div.] 2014); Card Verification Solutions, LLC v. Citig
Lead counsel for Citigroup in multiple venues against multiple patent plaintiffs. N5 settled after Citigroup filed its claim construction brief arguing, among other things, that Plaintiff was estopped from challenging the claim construction from a previous case. PiNet is currently stayed.
- Phoenix Licensing, LLC et al v. American Express et al (E.D. Texas [Tyler Div.] 2014)
Lead counsel for American Express in a seven patent case involving business methods used for personalized communication. The case settled after claim construction.
- Simon Nicholas Richmond v. Forever Gifts et al (N.D. Texas [Dallas Div.] 2014)
Lead counsel for Forever Gifts on a patent relating to outdoor lighting. The case settled after claim construction.
- Simon Nicholas Richmond v. Jiawei Technology (HK) Ltd. et al (3:13-cv-01953 (D.N.J 2013.)
Lead counsel for eighteen (18) defendant manufacturers and retailers in an multiple patent dispute relating to solar-powered, outdoor lighting products, the circuitry used in same, and certain packaging features relating to same. The case remains pending. The actions are consolidated under 3:13-cv-01944. Certain Defendants filed IPRs on some of the asserted patents. The cases remain stayed after final IPR decisions found all instituted claims invalid. Two of the three IPR decisions are being appealed.
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