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Mark Kachner is a partner in our Los Angeles office. His practice focuses on litigation, client counseling, and licensing intellectual property assets. Mr. Kachner has litigated cases involving a wide range of technologies and products including medical devices, consumer electronics, telecommunications, and chemical compounds, among others.
Prior to joining the firm in 2009, Mr. Kachner served as a law clerk to the Court for the Seventh Circuit US Court of Appeals from 2004-2006, and practiced at Latham & Watkins LLP.
- Named a 2018 "Southern California Rising Star" by Super Lawyers magazine for his work in intellectual property litigation
Co-author, "What's Next For Foreign Patent Damages?" Law360, July 2, 2018
Co-author, "Be careful what you write: attorney-client privilege for international businesses," International Litigation News, Newsletter of the International Bar Association Legal Practice Division, May 2012
“Patent suits: Inconsistent application of attorney-client privilege", Los Angeles Daily Journal, February 28, 2012
“Targeting ISPs in the Enforcement of Intellectual Property Rights”, Los Angeles Lawyer, December 2009
Litigation Blog
- Not a Cowboy Claim Construction, University of Wyoming’s Patent Adequately Defined Claim Term
- Skinny Labelling on Generic Drugs Does Not Avoid Induced Infringement of Patents Covering Non-Indicated Uses
- Limiting Terms in Preamble May Render Entire Preamble Limiting
- Government’s Pre-Litigation Conduct Cannot Justify a Court of Claims Fee Award
- Claims Covering Human Engineering That Exploits a Naturally-Occurring Phenomenon Are Patent Eligible
- The Risks of Overbroad Motions to Seal
- Courts Have No Jurisdiction Over Challenge to PTO Action Before Final Agency Decision
- Standing to Appeal in IPR Remains Even After Divesting Accused Products
- An Invention That Changes the Normal Operation of a System Is Not Abstract Under § 101
- $5 Million Attorneys’ Fee Award Affirmed Because Government’s Litigation Position Not Substantially Justified
- Infringement Need Not Be Ex Ante Determinable for Claim to Be Definite
- PTAB Must Give Notice and Opportunity to Respond When Raising Its Own Theory of Unpatentability
- Attorneys and Clients Behaving Badly – Deliberately Withheld Offer for Sale Is Inequitable Conduct
- Schrader Hit With $31 Million Patent Verdict Over Tire Pressure Sensors
- Wells Fargo Twice Found Guilty of Willfully Infringing Patents on Remote Check Depositing Technology
- Prior Art Disclosing Partially Overlapping Temperature Range Is Enough to Establish Prima Facie Case of Anticipation and Obviousness
- Integration Clause Does Not Necessarily Extinguish Prior Agreement on Same Patent
- No Appeal of PTAB’s Final Decision by Appealing a District Court’s Adoption of That Decision
- Safe Harbor Defense Under 35 U.S.C. §271(e)(1) Requires That the Accused Activity Is Solely for Uses Reasonably Related to Submitting Information to the FDA
- Defendant Awarded Attorney Fees After NPE Dismissed Frivolous Case with Prejudice
- North Carolina Jury Finds Dubose Strapping Inc. Liable for Willful Patent Infringement
Speeches & Seminars
Speaker - "Blocking Patents: Impact of Acorda Therapeutics on Obviousness Analysis," Strafford Webinar (January 2019)
Moderator - World Intellectual Property Day, Presentation to UCLA Engineering Society (April 2017)
“Lost Profits and Patent Damages – Lessons Learned from Masimo v. Philips” (with Greg Pinsonneault), Presentation to California Society of CPAs, Economic Damages Section Meeting (February 2017)
“Reasonable and Non-Discriminatory Royalties in Standards Essential Patent Litigation” (with Matt Lynde and Jeff Kichaven), Presentation to Beverly Hills Bar Association, (November 2015)