Mark Francis Eberhard
Norton Rose Fulbright US LLP
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Mark efficiently delivers positive results for both plaintiffs and defendants in intellectual property disputes. He has been on the prevailing side of patent, trade secret, and breach of contract suits involving demands as high as $100+ million.
Mark has experience with all aspects of litigation, from developing initial strategies to delivering arguments at jury trials. He has represented clients in the energy, telecommunications, and e-commerce industries in federal district courts, Texas state court, and before the Patent Trial and Appeal Board in inter partes reviews. He also has experience with transactional matters, including assisting clients with forming and revising IP related contract provisions, drafting a proposed producer agreement for a recording studio, and performing related IP diligence.
JD, cum laude, Northwestern University School of Law
BS, Mechanical Engineering, University of Texas at Austin
- Texas State Bar
- US Patent & Trademark Attorney
- Assisted oil and gas equipment provider accused of infringing competitor's patents in attaining judgment of noninfringement and dismissing with prejudice competitor's breach of contract claims.
- Assisted major contract drilling services company in successfully enforcing its offshore drilling patents against competitors.
- Assisted major contract drilling services company in successfully defending the validity of a high-value family of offshore drilling patents in inter partes reviews petitioned for by a competitor.
- Assisted global quality assurance and risk management company in successfully enforcing its trademark against a company attempting to compete using a confusingly similar name.
- Assisted FPSO and drilling rig vessel design company accused of infringing competitor's patent.
- Assisted oil and gas equipment provider in successfully avoiding temporary injunctive relief sought by competitor.
- Assisted oil and gas equipment provider in attaining dismissal with prejudice of competitor's claims for fraud, misappropriation, fraudulent transfer, and patent infringement.
- Assisted large industrial gas and related services company in attaining dismissal without prejudice of competitor's claims for infringement of patents related to hydrogen storage.
- Assisted major telecommunications company accused of infringing a patent related to alternative call processing in invalidating the accuser's patent.
- Assisted in securing summary judgment of noninfringement for major contract drilling services company accused of infringing a patent related to offshore drilling operations.
- Assisted major e-commerce companies accused of infringing patents related to the operation of websites in attaining judgment of noninfringement that was subsequently affirmed by the Federal Circuit.
- As a volunteer prosecutor for the City of Houston, tried multiple criminal cases to jury verdict, negotiated plea deals with defense attorneys, and participated in oral arguments before various municipal judges.
- Represented pro bono clients in tort conversion, family law, civil rights, and contractual matters. Experience gained through these representations includes acting as attorney-in-charge for the plaintiff in a federal civil rights jury trial, negotiating settlements, developing litigation strategies, taking depositions, arguing at hearings, researching and drafting motions, conducting witness interviews, preparing witnesses to testify, and drafting a client services contract for a music producer.
- The Best Lawyers in America, Ones to Watch, Best Lawyers, 2021
- Author, "A Primer On Amendment-Based Prosecution History Estoppel," Expert Analysis, Law360, February 20, 2019