Mark Backofen

Mark brings more than 20 years of experience in all aspects of intellectual property law. His work includes development and protection, including vendor and joint development agreements; worldwide prosecution, counseling, licensing, and other transactions; and enforcement and litigation.

Mark’s experience encompasses both traditional intellectual property fields, such as patents, trademarks, copyrights, and trade secrets, as well as increasingly important related areas, including information technology, privacy, cybersecurity, and artificial intelligence. He represents a diverse client base, ranging from major banks, oil companies, and medical device manufacturers to smaller software development companies, technology-based marketing firms, oil and gas service companies, and startups.

Mark provides comprehensive IP counseling relating to the entire lifecycle of intellectual property. He advises on vendor and joint development agreements, licensing and commercial distribution, the sale of goods and services incorporating technology, infringement, validity opinions, and design around programs. Mark also handles the intellectual property, information technology, and privacy and cybersecurity aspects of large corporate transactions.

• Represented a major bank concerning various infringement claims relating to online banking, mobile wallets, chip card technology, and distributed computing.
• Represented a software development company working in artificial intelligence regarding the development, protection, and licensing of its technology.
• Represented a technology-based marketing company in the music industry regarding advertising and sweepstakes issues.
• Represented a social media brand management company relating to various intellectual property ownership and licensing issues.
• Represented a major manufacturer in designing around competitor patents for consumer products.
• Represented a number of real estate development and management companies with respect to trademark and related issues relating to the communities they developed and manage.
• Represented various companies, including startups, in developing, protecting, licensing, and enforcing the intellectual property in their technology in the chemical, material engineering, renewable energy, oilfield tools and treatment fluids, medical, mechanical, software, and other fields.
• Represented various companies in in-bound and out-bound licensing of patents, trademarks, copyrights, technology, and software, both nationally and internationally.
• Advised numerous companies in connection with various corporate transactions and negotiated purchase terms and representations relating to intellectual property, information technology and privacy, including in the energy, consumer products, health care, renewable energy, 3D printing, manufacturing, fashion, services, and software industries.

Reported Decisions

• Diamondback Industries, Inc. v. Repeat Precision LLC et al., 6:19cv00034 (W.D. Tex. 2020) (Waco Div.) (patent infringement).
• Lighthouse Consulting Group LLC v. HSBC USA, Inc., 6:19cv00598 (W.D. Tex. 2020) (Waco Div.) (patent infringement).
• Effective Exploration LLC v. Comstock Oil & Gas LP, 2:14cv00875 (E.D. Tex. 2016) (Marshall Div.) (patent infringement).
• Textron Innovations v. American Eurocopter, 4:09cv377 (N.D. Tex. 2011) (Ft. Worth Div.) (patent infringement).
• Retractable Technology, Inc. v. Becton Dickinson, 2:07cv250 (E.D. Tex. 2009) (Marshall Div.) (patent infringement).
• Retractable Technologies, Inc. v. OMI, 6:08cv120 (E.D. Tex. 2009) (Tyler Div.) (patent and trade secret infringement).
• American Heart Association v. Stafford, 3:08-CV-1460 (N.D. Tex. 2008) (Dallas Div.) (copyright and trademark infringement).
• American Safety Razor Co. v. Dorco USA, 9:07cv229 (E.D. Tex. 2007) (Beaumont Div.) (patent, copyright, trademark, and false advertising).
• Cozby v. Disney Enter., 4:06cv547 (N.D. Tex. 2006) (Ft. Worth Div.) (copyright and trademark infringement).
• Olivadoti v. Brampton, 05cv9627, (S.D. N.Y. 2005) (trade secret, fraud, and unfair competition).
• Maxma v. ConocoPhilips, 2:03cv421 (E.D. Tex. 2003) (Marshall Div.) (patent and trade secret infringement).