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Zuber Lawler & Del Duca

Strategic Legal Solutions for Visionary Clients

Mark H. Bloomberg

Partner

Mark Bloomberg is an intellectual property litigator. With more than 25 years of experience, he has represented clients in infringement actions, and advised clients concerning patent infringement, validity, remedies and licensing. During this time, Mr. Bloomberg has participated in all aspects of patent litigation, including jury trials, bench trials, claim construction hearings, arbitrations and appeals.

Mr. Bloomberg’s experience ranges from representing an American-based international consumer product company in a landmark damages trial that resulted in a $925 million damages award, to representing a start-up satellite radio company that successfully launched its satellite radio service after designing around patents asserted by its competitor. He has represented clients in a number of technology areas, including computers, video games, telecommunication systems, electronic trading systems, business methods and medical devices, and has substantial experience representing clients in connection with patent damages and injunctive remedies.

Mr. Bloomberg also counsels clients in connection with various intellectual property issues and disputes. He has evaluated potential infringement and validity of patents, developed strategies to redesign products to avoid infringement, assessed the merits, potential damages and potential injunctive relief for ongoing litigation in connection with diligence, and negotiated and prepared patent licenses, settlement agreements and purchase agreements.

Prior to joining Zuber Lawler & Del Duca, Mr. Bloomberg was a Partner at Ropes & Gray LLP.

Notable Representations

  • Represented an American-based international consumer product company at eight-month bench trial for damages relating to the opposing party’s infringement of the company’s instant photography patents. The Court awarded $925 million in damages.
  • Represented a leading technology innovator of electronic trading systems in connection with its acquisition and assertion of a patent relating to automated futures trading systems, resulting in royalty payments of $48 million.
  • Represented a major American company in the computer industry and leading vendor of computer systems, software and peripherals in an action for infringement of ten patents by the opposing party’s microprocessors and in a responsive action filed by the opposing party. It was reported that the settlement of the case was estimated to be worth $1.6 billion for the represented company.
  • Represented a company in the video game industry in a two-week jury trial for alleged infringement of three patents relating to countertop vide game machines, and advised company in connection with modifying its products to design around the asserted patents. None of the company’s redesigned products was held to infringe.
  • Represented a start-up satellite radio company in an action for alleged infringement of three patents brought against the company prior to the launch of its satellites, and advised company in connection with redesigning its system to provide service before the other party launched its competing service.
  • Represented a data storage technology company, after a jury found that the company had willfully infringed another company’s patent relating to data storage and retrieval systems. Obtained JMOL of non-infringement, which enabled the company to design around the patent and to avoid any injunction against its products, and successfully avoided any enhancement of damages.
  • Represented a global securities exchange and private investor in an action for alleged copyright infringement relating to electronic trading system software and for breach of a contract relating to the joint development of an early electronic trading system. The $50 million copyright infringement claim was dismissed with prejudice based on a license defense, and the remaining state law claims were dismissed from the federal action.
  • Represented an insurance company in a two-week jury trial for alleged infringement of a patent relating to a method for administering annuity contracts.
  • Represented a medical device company in a two-month bench trial for alleged infringement of a patent relating to angioplasty catheters.

Professional Honors & Activities

  • Co-Chair, New York Intellectual Property Law Association CLE Committee
  • Member, IPO Damages and Injunctions Committee
  • Member, IPO Litigation Committee

Representative Publications & Presentations

  • Long-Awaited Patent Reform Bill Passes Congress, Ropes & Gray Alert (September 2011)
  • Tivo v. EchoStar: Waiver and Redesign Issues, IPO IP Chat Channel Webnar (May 2011)
  • Hyatt v. Kappos: The Right to Introduce New Evidence and Standard of Review, 27th Annual Joint Patent Practice Seminar (April 2011)
  • Patents and the Video Game Industry – What you Don’t Know Could Hurt You, Gamasutra (January 2011)
  • Business Method Patents in Biopharmaceuticals: Fad Or The Real Deal? BIO 2007 (May 2007)
  • Extraterritorial Application Of Business Method Patents, IPLAW 360 (August 2006)
  • Patenting Business, LatinFinance (November 2005)

Education

Harvard Law School
J.D., 1984, cum laude

Massachusetts Institute of Technology
S.M., 1981
Major: Mechanical Engineering

Massachusetts Institute of Technology
S.B., 1980
Major: Mechanical Engineering

Bar Admissions

Massachusetts
New York
U.S. Patent and Trademark Office

Court Admissions

U.S. Court of Appeals – Federal Circuit
U.S. District Court – Eastern District of NY
U.S. District Court - Southern District of NY
U.S. District Court - Northern District of CA