Overview
Mark Lezama is a litigation partner in our Orange County office specializing in patent disputes.
Mark represents patent owners and accused infringers alike, in jurisdictions all across the country. He approaches litigation thoughtfully, working with clients to position their cases for meaningful victories. In a recent contract case involving a patent license, Mark obtained for his client a court-ordered injunction requiring the licensee to honor its agreement and withdraw its challenges to his client’s patents at the Patent and Trademark Office. When the licensee appealed, Mark obtained an affirmance from the Ninth Circuit for his client. In another case, Mark obtained key evidentiary rulings for his client early on, laying the groundwork for the court to rule that his client did not infringe just six months into the case. Mark builds on courtroom successes like these by planning and taking strategic steps out of court for his clients, including pursuing inter partes review by the Patent Trial and Appeal Board. He also counsels on patent-portfolio strategy, patent-infringement and validity assessments, and licensing transactions.
Owing to his strong background in mathematics and computer science, Mark’s practice encompasses a wide variety of technologies, including such diverse fields as quantum computing, mobile apps, computer networks, cryptography, optics, medical devices, thermoelectrics, internal-combustion engines, and surf systems for sport boats.
Before joining the firm in 2007, Mark worked for the Honorable Rosalyn M. Chapman of the United States District Court for the Central District of California and was Symposium Editor for the Berkeley Technology Law Journal. Mark is currently serving as a lawyer representative to the Ninth Circuit Judicial Conference, as a member of the Local Rules Advisory Committee for the Central District of California, and as President of the Orange County Coalition for Diversity in the Law.
Education
- University of California - Berkeley - School of Law (CAL) (J.D., 2007)
- Harvard University (A.B. Mathematics, 2004), cum laude
Representative Matters
Nomadix, Inc. v. Guest-Tek Interactive Entertainment Ltd. (C.D. Cal.; 9th Cir.; PTAB)
In a first case, obtained a multimillion dollar jury award for client Nomadix for Guest-Tek’s breach of its royalty obligations under a patent license agreement. In a related case, secured summary-judgment victory for Nomadix, with the district court determining that Guest-Tek had breached other obligations under the license agreement. Obtained permanent injunction requiring Guest-Tek to withdraw inter partes review (IPR) challenges to Nomadix’s patents and prohibiting Guest-Tek from filing more IPR challenges. Argued the appeal to the Ninth Circuit and successfully defended the district court’s finding of breach and permanent injunction. Meanwhile, at the Patent Trial and Appeal Board, defeated multiple IPR challenges at the petition stage, with the Board finding that Guest-Tek had not demonstrated a reasonable likelihood of showing any claim was unpatentable.
Nomadix, Inc. v. Hospitality Core Services LLC, d/b/a Blueprint RF (C.D. Cal.)
Represented plaintiff Nomadix in a patent-infringement action against Blueprint RF involving Internet-access technology. Handled all argument for Nomadix at a day-long hearing on claim construction and summary judgment, successfully obtaining summary judgment of infringement and defeating motions for summary judgment of invalidity. The case then settled, with Blueprint RF taking a license under undisclosed terms.
Malibu Boats, LLC v. Nautique Boat Company, Inc. (E.D. Tenn.)
Represented market leader Malibu Boats in an action to enforce its patents on wakesurf systems against competitor Nautique. On the eve of trial, the case settled, with Nautique taking a license under undisclosed terms.
Nomadix, Inc. v. Hewlett-Packard Co., Aruba Networks, Inc., Wayport, Inc., et al. (C.D. Cal.)
Represented plaintiff Nomadix in a patent-infringement action against HP, Aruba Networks, and AT&T subsidiary Wayport (now AT&T Wi-Fi Services) involving technology to provide Internet access to mobile-computer users. Shortly before trial, the case settled, with HP, Aruba, and AT&T each taking a license under undisclosed terms.
Nobel Biocare USA, LLC, et al. v. Technique D’Usinage Sinlab, Inc. (E.D. Va.)
Represented Nobel Biocare in a declaratory-judgment suit involving patents relating to CAD/CAM processes for dental surgery and dental restorations. Obtained summary judgment of noninfringement for Nobel just six months after filing suit.
Linksmart Wireless Technology, LLC v. T-Mobile USA, Inc., et al. (E.D. Tex.)
Linksmart asserted claims of patent infringement against several defendants related to their alleged use of network-access technology, some of whom brought claims against client as a third-party defendant. The case was dismissed without any judgment against client.
W.E.T. Automotive Systems Ltd. v. Amerigon Inc. (E.D. Mich.)
Represented Amerigon in an infringement action against W.E.T. Automotive Systems where the two sides collectively asserted against each other 13 patents relating to heating and cooling systems for vehicle seats. The dispute was resolved when Amerigon (now Gentherm) acquired a majority of the shares of W.E.T.’s parent corporation.
Kruse Technology Partnership v. General Motors Company (C.D. Cal.)
Represented plaintiff Kruse Technology Partnership in a patent-infringement action against GM involving internal-combustion engines that use multiple fuel injections per engine cycle. The case settled before trial under confidential terms.
j2 Global Communications, Inc. v. OneSuite Corporation (C.D. Cal.)
Represented OneSuite Corporation, who was accused of infringing patents relating to accessing voicemails and faxes over the Internet. Less than four months after filing suit, the plaintiff agreed to dismiss all claims against OneSuite.
Nomadix, Inc. v. Second Rule, LLC (C.D. Cal.)
Represented plaintiff Nomadix in a patent-infringement action involving gateway devices that provide Internet access to mobile-computer users at hotels and hot spots. Obtained a permanent injunction and a $3.3 million judgment in damages and attorneys’ fees.
Recognition
Awards & Honors
- Recognized in Profiles in Diversity Journal for “Latino Leadership” (2024)
Affiliations
American Intellectual Property Law Association
Local Rules Advisory Committee – C.D. Cal.
Federal Circuit Bar Association
Federal Bar Association
Association of Business Trial Lawyers
Orange County Coalition for Diversity in the Law
International Association for Cryptologic Research
News & Insights
Articles
Quoted in “Steamboat Willie’ Mickey Mouse goes public, spawns horror films,” Los Angeles Times (January 2024)
Co-author, “Predictions in 3 Key Areas for IP Practitioners This Year,” Law360 (January 2023)
Author, “How Patent Holders Can Avoid Early Dismissal at Pleadings Stage,” Bloomberg Law (November 2022)
Co-author, Seven Keys to Obtaining Meaningful Patent Protection for Your Mobile App, App Developer Magazine (September 2016)
Contributor, 7 Intellectual Property Issues Startup Entrepreneurs Should Not Overlook, JD Supra Legal Perspectives (September 2015)
Amendments to the Federal Rules of Civil and Appellate Procedure, Knobbe Martens Olson & Bear (December 2009)
Speeches & Seminars
Invited Speaker, Patent Litigation Trends: Focus on PTAB, Western District of Texas, and the District of Delaware, AIPLA Spring Meeting 2023
Blockchain, Cryptocurrency, and the Law, Orange County Bar Association, Masters Division
Panelist, Protecting and Enforcing Your High Technology Intellectual Property, Knobbe Martens Hosted Webinar Series
Introduction to Intellectual Property for Entrepreneurs and Start-ups, IEEE Orange County Entrepreneurs’ Network (OCEN)