Mark T. Jansen, Partner San Francisco
mjansen@crowell.com
Phone: +1 415.365.7203
275 Battery Street, 23rd Floor
San Francisco, CA 94111-3305

Mark T. Jansen is a partner in the firm's Intellectual Property Group. With more than 25 years of trial and appellate experience, Mark's work has involved a wide range of intellectual property, antitrust, unfair business practice, business tort, breach of contract and other business dispute litigation.

Mark has substantial patent litigation experience that includes significant Abbreviated New Drug Application (ANDA) pharmaceutical patent litigation matters. Mark has been successful both at the trial and appellate court levels representing clients with an interest in bringing generic drug products to market. Mark also represents patent holders in actions enforcing their right to exclude infringers. He has significant antitrust experience in a wide range of industries, including in the chemical and pharmaceutical industries. Mark worked as a research chemist at Stauffer Chemical Company prior to attending law school. He has litigated numerous patent, copyright, trademark and trade secret infringement cases, as well as antitrust and business dispute cases. His pharmaceutical and chemistry patent cases have included four recent victories before the Federal Circuit Court of Appeals and a major win after a trial at the U.S. International Trade Commission (ITC) regarding accused infringement of rubber chemical patents. Mark has lectured and written on a number of intellectual property and antitrust issues, from cutting edge internet copyright protection issues to the antitrust implications of settlements of ANDA patent litigation, including lectures to the Association of Corporate Patent Counsel, American Intellectual Property Law Association (AIPLA) and Practicing Law Institute (PLI) programs. He also has substantial appellate court experience in both the Federal Circuit Court of Appeals arguing patent cases and in the Ninth Circuit Court of Appeals and California state courts of appeal.

Mark also provides counseling, primarily in the intellectual property, antitrust and unfair business practices areas, in a wide range of contexts, including, but not limited to, mergers, intellectual property infringement and licensing, product distribution, vertical price restraints, trade secret protection and development of antitrust compliance and amnesty programs. He also has represented clients in connection with grand jury and other government investigations.

Representative Matters

Intellectual Property

  • Bayer Schering Pharma AG, et al. v. Sandoz, Inc., et al., Southern District of New York. Obtained defense judgment of non-infringement in ANDA litigation over generic version of YASMIN.  Affirmed on Appeal: Bayer Schering Pharma AG v. Lupin, Ltd., 676 F.3d 1316 (Fed. Cir. 2012).
  • Duramed Pharmaceuticals, Inc. v. Watson Laboratories, Inc., District of Nevada and Federal Circuit Court of Appeals  (2009-2012).  Successfully defended generic product launch and obtained Federal Circuit decisions of patent invalidity (obviousness) and affirming propriety of the product launch.
  • Bayer Schering Pharma AG et al. v. Watson Pharmaceuticals, Inc., et al., District of Nevada and Federal Circuit Court of Appeals (2009-2013). Obtained judgment of patent invalidity on appeal, in defense of ANDA litigation over generic version of Yaz oral contraceptive product. Reported appellate decision: Bayer Healthcare Pharm., Inc. v. Watson Pharm., Inc., 713 F.3d 1369, 1377 (Fed. Cir. 2013). 
  • Flexsys International v. Kumho Korea Petrochemical Corp., International Trade Commission (2005-2006). Successful defense of Korean rubber chemical and tire company accused of infringing rubber chemical patents, following a ten-day trial in ITC.
  • Shum v. Intel Corp. (2008). Six week federal court jury trial on patent inventorship dispute and related state law claims. Followed a successful appeal of district court's denial of inventor's right to a jury trial on patent inventorship issues. Reported decision: Shum v. Intel Corp. 499 F.3d 1272 (Fed. Cir. 2007).
  • Shire Development, LLC v. Watson Pharmaceuticals, Inc.  (2012-2013).  Defended generic version of Lialda (mesalamine) through federal court bench trial of patent infringement action.
  • Gigoptix Inc. v. Optomai, Inc., et al.,  Santa Clara County Superior Court (2012-2013). Succesful prosecution of trade secret dispute regarding telecommunication component design and fabrication.
  • Perfect 10 v. Amazon.com, Inc., Central District Court of California and Ninth Circuit Court of Appeals. Successful defense of Internet copyright infringement claim against Amazon.com's Internet image search functionality. Reported decision: Perfect 10 v. Amazon.com, Inc., 487 F.3d 701 (9th Cir. 2007).
  • Bechtel Corp. v. The Shaw Group, District of Maryland (2006). Successfully prosecuted trade secret case for Bechtel.
  • In re Armodafinil Patent Litigation (D. Del. 2013). Defeated motion for preliminary injunction to stop client’s generic product launch. Resulted in favorable settlement.
  • International Rectifier Corporation v. IXYS Corporation, Central District of California (2003). Tried patent damages case to jury. Patent infringement action involving power transistor patents.
  • Perfect10, Inc. v. Visa Int'l Serv. Ass'n, et al., ¬≠¬≠¬≠Northern District of California and Ninth Circuit. Court of Appeals. Successfully defended Visa in federal copyright suit alleging vicarious and contributory trademark and copyright liability for providing financial services to operators of websites that infringed plaintiff's copyrighted images. Dismissal of action in Visa's favor affirmed by Ninth Circuit Court of Appeals. Reported decision: 497 F.3d 788 (9th Cir. 2007).
  • GRiD Systems Corp. v. Texas Instruments, Inc., Northern District of California (1990-1994),  Prosecuted federal antitrust and patent invalidity declaratory relief action for major personal computer maker against Texas Instruments. Key issues included the validity of Texas Instruments' microprocessor patents and the legality of its package patent licensing practices under the federal antitrust laws. 
  • Sebastian International, Inc. v. Longs Drug Stores Corporation, Central District of California (1994-1996). Successful defense against preliminary injunction motion. Asserted antitrust and unfair business practice theories in successful defense of a manufacturer's attempt to enforce its product distribution restrictions through trademark infringement actions against unauthorized retailer.
  • Harris Corporation v. Mosel Vitelic, Eastern District of Virginia. Defense of integrated circuit maker accused of infringing six circuit and process patents. Case settled favorably with entry into license agreement. 
  • Texas Instruments v. Hyundai Electronics, Eastern District of Texas. Defense of integrated circuit maker accused of patent infringement.
  • Berclain America Latina S.A. de C.V. v. Baan, N.V., et al, California Superior Court. Successful prosecution of contract interference case as lead plaintiffs' counsel for Latin American software distributors against international business software manufacturer and related defendants.
  • Network Services Corporation v. Buckner, Inc., AAA Arbitration. Lead plaintiff's counsel in two-week American Arbitration Association hearing concerning breach of best efforts clause in satellite communication technology license. Obtained award and judgment terminating license, returning technology, and awarding damages.

Antitrust

  • Chinese Hospital v. Brown & Toland Medical Group, San Francisco Superior Court (2006). Plaintiff's counsel in action against major physicians’ network alleging market abuse.
  • Lingo, et al v. Microsoft Corp., San Francisco Superior Court (and follow-on federal class action) (2002-2005). Prosecution of antitrust and unfair competition claims against Microsoft on behalf of all California consumers of Microsoft products.
  • Forces Action v. State of Utah, et al, United States District Court, San Francisco. Lead counsel for State of Utah in successful defense of class action challenging multistate tobacco litigation settlement.
  • St. Luke's Hospital v. California Pacific Medical Center, San Francisco Superior Court. Plaintiff's co-counsel in antitrust action challenging exclusive dealing contracts between large hospital system and the largest physicians group in San Francisco, California. Settled on favorable terms.
  • GRiD Systems Corp. v. Texas Instruments, Inc., Northern District of California. Prosecuted federal antitrust patent tying case on behalf of major PC maker against Texas Instruments. Key issues included the legality of Texas Instruments’ package patent licensing practices under the federal antitrust laws.
  • Central Garden and Pet Company v. Monsanto Corp. and The Scotts Company, San Francisco Federal Court. Represented distribution company in group boycott, price fixing and monopolization claims against agricultural chemical products companies.
  • Gonzales v. Kaiser Sand & Gravel Co. and Syar Industries, United States District Court, San Francisco. Successfully defended wrongful termination action and two related antitrust class actions alleging price fixing and bid rigging in sand, gravel and asphaltic concrete markets.
  • Connell v. Bank of America, Northern District of California. Co-tried six-week Sherman Act Section 2 antitrust jury trial concerning monopolization of agricultural products market in Northern California. Pacific Gas & Electric Co. v. Wismer et al., United States District Court, San Francisco. Defense of bid rigging action brought by PG&E against numerous electrical contractors regarding construction of Diablo Canyon Nuclear Power Plant.


Affiliations

Admitted to practice: California, U.S. Supreme Court, U.S. Court of Appeals for the Federal Circuit, U.S. Court of Appeals for the Fifth Circuit, U.S. Court of Appeals for the Ninth Circuit, U.S. District Court for the Central District of California, U.S. District Court for the Eastern District of California, U.S. District Court for the Northern District of California, U.S. District Court for the Southern District of California, U.S. District Court for the Eastern District of Texas

Memberships
  • American Bar Association, Antitrust Section
  • San Francisco Bar Association


Highlights, News & Knowledge


Speeches & Presentations

  • "Of Prior Art and Double Patenting: Exploring the Dichotomy Between the Federal Circuit and PTO on Obviousness Findings," American Conference Institute 8th Annual "Paragraph IV Disputes" Conference, New York, NY (April 28-29, 2014). Moderator: Mark T. Jansen.
  • "Obviousness of Dosing, Formulation, Polymorph and Other Follow On Patents," American Conference Institute 7th Annual "Paragraph IV Disputes" Conference, New York, NY (May 7-8, 2013). Speaker: Mark T. Jansen.
  • "Controversies Surrounding Damages and Injunctions Relative to At Risk Launch," American Conference Institute 3rd West Coast Edition Paragraph IV Disputes Conference, San Francisco, CA (December 4-5, 2012). Moderator: Mark T. Jansen.
  • "Search Engine and Other Secondary Liability for Infringement on the Internet Perfect 10 v. Amazon.com, A9.com, and Google," AIPLA 2008 Spring Meeting, Houston, Texas (May 2008). Speaker: Mark T. Jansen.
  • "ANDA Litigation: Big Pharma v. Generics," The Annual IP Counsel Forum, San Jose California (March 2008). Speaker: Mark T. Jansen.
  • "To Settle or Not: Is Settling IP Litigation an Antitrust Violation?," Association of Corporate Patent Counsel (February 2004). Speaker: Mark T. Jansen.
  • "Reverse Payment Litigation Settlements: Antitrust Issues Affecting IP Licensing and Settlements of Pharmaceutical Patent Litigation," San Diego Intellectual Property Law Association (January 2004). Speaker: Mark T. Jansen.
  • "Settlement of IP Litigation as an Antitrust Violation," Practicing Law Institute Seminar (January 2003). Speaker: Mark T. Jansen.


Publications

  • "KSR' Has Made It Easier To Prove Obviousness," National Law Journal (October 2011). Co-Author: Mark T. Jansen.
  • "Antitrust's Impact on Intellectual Property Management," IP Value (January 2005). Author: Mark T. Jansen.


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