Mark D. Nielsen, Ph.D.

CISL1792

MARK D. NIELSEN is an experienced litigator and partner at Cislo & Thomas LLP.  His practice focuses on intellectual property litigation, particularly patent litigation, although Mark has substantial experience litigating trademarks and copyrights as well.  Mark leaves no stone unturned in his efforts to advance clients’ interests.  He has been an author on numerous briefs that have prompted favorable decisions for clients, and intimately involved in litigation resulting in favorable outcomes.

Mark’s litigation practice has covered a wide variety of technologies and subject matter, including photographs of Marilyn Monroe (copyright), flip-top calculators (patent), automotive radiator flushers (patent), internet software related to previewing images of hyperlinks in search results (patent), blender attachments (patent), highly ornamented furniture (design patent and copyright), Asian hot sauce (trademark and trade dress), and dog chew toys (patent) to name a few.

Mark has litigated in federal courts throughout the U.S., including in California, Texas, Florida, Virginia, Michigan, Illinois, New Jersey, New York, Delaware, and elsewhere.

Mark has also had opportunity to appear before the United States Court of Appeals for the Federal Circuit.  In fact, it is believed that Mark argued the first post-KSR obviousness appeal in the Federal Circuit, which he won.

Mark also has experience prosecuting patents, trademarks, and copyrights before the United States Patent and Trademark Office and United States Copyright Office, and has been heavily involved in enforcement of our clients’ intellectual property rights.

Education:
University of Southern California, B.S., cum laude, Biological Sciences (1992)
University of Washington, Ph.D., Pharmacology (1997)
Loyola Law School, J.D. (2000)

Bar Admissions: California; Texas; U.S. Patent and Trademark Office

Court Admissions:
U.S. Court of Appeals for the Federal Circuit
U.S. Court of Appeals for the Ninth Circuit
Central District of California
Eastern District of California
Northern District of California
Eastern District of California
Eastern District of Texas
Northern District of Texas
Southern District of Texas
Eastern District of Michigan

Memberships: Federal Bar Association; Provisors

SELECTED COURT DECISIONS:
Wolf Designs, Inc. v. Donald McEvoy Ltd., Inc., 341 F. Supp. 2d 639 (N.D. Tex. 2004) (representing Wolf Designs: Plaintiff successfully moved to stay its own patent infringement action in Texas pending resolution of a California action because the issues in the cases were substantially similar, the witnesses overlapped, and the California action was the first-filed action).

Amini Innovation Corp. v. Classic World Imports, Inc., 2005 U.S. Dist. LEXIS 406 (Jan. 12, 2005) (representing Amini Innovation: defeated Defendant’s motion to stay the action pending the resolution of certain allegedly related actions filed by Plaintiff in a California court, defendant claiming that a stay would promote judicial economy and avoid the possibility of inconsistent rulings between Texas court and court in California.  The Texas court denied Defendant’s motion finding that a stay would only delay Plaintiff’s attempt to recover for the copyright infringements and not serve judicial economy where the cases in California were not shown to be related to the Texas action).

Wolf Designs, Inc. v. Donald McEvoy Ltd., Inc., 355 F. Supp. 2d 848 (N.D. Tex. 2005) (defeated motion to transfer venue where competitors who sought transfer of lawsuits alleging trade dress and patent infringement failed to prove that, absent their consent, they would have been subject to personal jurisdiction in Georgia when patent holder filed instant suits in Texas, they also failed to establish that 28 U.S.C.S. § 1404 authorized transfer of suits to Georgia).

Wolf Designs, Inc. v. Donald McEvoy Ltd., Inc., 2005 U.S. Dist. LEXIS 5853 (N.D. Tex. Apr. 6, 2005) (representing Wolf Designs: defeated a motion for reconsideration of the denial of a motion to transfer venue pursuant to 28 U.S.C.S. § 1404(a) based on Defendants’ failure to show that the cases could have been brought in the transferee forum and they possessed “new” evidence supporting minimum contacts with the transferee forum at the time they brought their original motion).

Amini Innovation Corp. v. Anthony California, Inc. et al., 439 F.3d 1365 (Fed. Cir. 2006) (representing Amini Innovation: the Federal Circuit reversed the district court’s grant of summary judgment of non-infringement of six copyrights and a design patent because the district court erred in applying the extrinsic and intrinsic tests for substantial similarity in copyright infringement, and an element-by-element test for design patent infringement.  Later in 2006, Amini Innovation won and collected on a jury verdict of willful infringement on the design patent and several of the copyrights).

Amini Innovation Corp. v. Anthony California, Inc. et al, 2007 U.S. App. LEXIS 420 (Fed. Cir. Jan. 8, 2007) (representing Amini Innovation: the Federal Circuit reversed the district court’s order granting summary judgment of non-infringement of a design patent for a dresser since it was improper to focus on specific elements of the dressers rather than analyzing the designs as wholes from the perspective of an ordinary observer).

Alan Lee Distributors, Inc. dba ADI Pet, Inc. and Christopher Weinberg v. Van Brown, 2007 U.S. App. LEXIS 12460 (Fed. Cir. May 18, 2007) (representing ADI Pet: in what is believed to be the first Federal Circuit obviousness argument after the Supreme Court’s decision in KSR, the Federal Circuit affirmed the district court’s grant of summary judgment finding that the asserted claims of the patent-in-suit covering meat-filled rawhide chew toys for dogs were invalid for obviousness).

Amini Innovation Corp. v. JS Imports and Designer Furniture Warehouse, 497 F. Supp. 2d 1093 (C.D. Cal. 2007) (representing Amini Innovation: motion to dismiss or transfer brought by New York and Maryland-based defendants defeated where the evidence tended to show that defendants must have known that their alleged willful copyright infringements would cause harm to plaintiff, a California corporation).

Girafa.com, Inc. v. Amazon.com, Inc. et al., 2008 U.S. Dist. LEXIS 99196 (D. Del. Dec. 9, 2008) (representing Snap Technologies: in computer software patent case, court denied Plaintiff’s motion for preliminary injunction).

Amini Innovation Corp. v. Cosmos Furniture Ltd., 2009 U.S. Dist. LEXIS 29812 (C.D. Cal. March 16, 2009) (representing Amini Innovation: court denied Canadian defendant’s motion to dismiss for lack of personal jurisdiction where the complaint alleged willful copyright and design patent infringement, and the record demonstrated that the defendant knew that the plaintiff resided in Southern California and that the alleged infringements would harm the Southern California company).

Collezione Europa USA, Inc. v. Amini Innovation Corp., 2009 U.S. Dist. LEXIS 76411 (D.N.J. Aug. 26, 2009) (representing Amini Innovation: court granted motion for leave to amend counterclaim to add owners/officers of Collezione as counterclaim-defendants by noting that individuals who possess the right and ability to supervise the infringing conduct and who have an obvious and direct financial interest in the exploitation of copyrighted material can be held indirectly liable for copyright infringement).

Girafa.com, Inc. v. IAC Search & Media, Inc. et al., 2009 U.S. Dist. LEXIS 88796 (D. Del. Sept. 25, 2009) (representing Snap Technologies: court granted summary judgment in favor of Snap as to numerous asserted patent claims).

Sunbeam Products, Inc. v. Hamilton Beach Brands, Inc. et al., 727 F. Supp. 2d 470 (E.D. Va. July 22, 2010) (representing Homeland Housewares: court granted Homeland Housewares’ motion to disqualify Steptoe & Johnson from continuing to represent Plaintiff Sunbeam Products).

SDS Korea Co., Ltd. v. SDS USA, Inc. et al., 732 F. Supp. 2d 1062 (S.D. Cal. 2010) (representing Defendants: in case including patent and trademark infringement claims, court granted Defendants’ motion to dismiss for lack of personal jurisdiction and improper venue, and denied Plaintiff’s request for jurisdictional discovery).

Amini Innovation Corp. v. KTY International Marketing, Inc. et al., 768 F.Supp.2d 1049 (C.D. Cal. 2011) (representing Amini Innovation: court entered default judgment on copyright and design patent infringement claims in favor of Amini Innovation in excess of $175,000).

Prototype Productions, Inc. v. Reset, Inc., 2011 U.S. Dist. LEXIS 150666 (E.D. Va. Oct. 14, 2011) (representing Reset: Magistrate Judge found personal jurisdiction lacking and recommended that the court transfer the case to the Central District of California where Reset is located; District Judge overruled Plaintiff’s objections to Magistrate Judge’s recommendations and ordered the transfer, 844 F. Supp. 2d 691 (E.D. Va. 2012)).

Surefire, Inc. v. Casual Home Worldwide, Inc. et al., 2012 U.S. Dist. LEXIS 88372 (S.D. Cal. June 26, 2012) (representing Defendants: in a patent infringement case involving a U.S. distributor and Chinese manufacturer as defendants, court quashed service on Chinese manufacturer for failure to serve authorized representative of Chinese manufacturer with summons and complaint).

EDCO Plastics, Inc. v. Allynce, Inc. et al., 2013 U.S. Dist. LEXIS 57541 (C.D. Cal. Mar. 18, 2013) (representing Dispensing Dynamics International (DDI): claim against DDI for fraud in connection with sales of patent and other assets dismissed for lack of subject matter jurisdiction; breach of contract claim against DDI previously dismissed for failure to state a claim).

World Trading 23, Inc. v. EDO Trading et al., 2013 U.S. Dist. LEXIS 58949 (C.D. Cal. Apr. 24, 2013) (representing World Trading: court denied Defendants’ motion for judgment on the pleadings based on release in settlement agreement between parties in prior litigation, and allowed World Trading’s copyright infringement claim to go forward).

COA, Inc. v. Xiamei Houseware Group Co., Inc., 2013 U.S. Dist. LEXIS 74768 (W.D. Wash. May 28, 2013) (representing COA, Inc.: In a case alleging trademark infringement, false designation of origin, and related claims in which the defendant was improperly associating with the plaintiff’s product detail pages on Amazon.com, plaintiff issued a subpoena to non-party Amazon.com seeking documents and a deposition from Amazon.com.  Amazon.com filed a motion to quash the subpoena on a variety of grounds, which was granted-in-part and denied-in-part by the Court.  Plaintiff was permitted to take Amazon.com’s deposition).

EDCO Plastics, Inc. v. Allynce, Inc. et al., 2013 U.S. Dist. LEXIS 117259 (C.D. Cal. July 11, 2013) (representing Dispensing Dynamics International (DDI): court awarded DDI the full amount of its attorneys’ fees and costs after successful dismissal of all claims; court also stated counsel’s hourly rates were reasonable).

Surface Supplied, Inc. v. Kirby Morgan Dive Systems, Inc., 2013 U.S. Dist. LEXIS 143478 (N.D. Cal. Oct. 3, 2013) (representing Kirby Morgan: in a declaratory judgment/trademark case, court dismissed all 21 of Surface Supplied’s defenses to Kirby Morgan’s counterclaims, and dismissed Surface Supplied’s counterclaims-in-reply for antitrust violations).

Surface Supplied, Inc. v. Kirby Morgan Dive Systems, Inc., 2013 U.S. Dist. LEXIS 171858 (N.D. Cal. Dec. 5, 2013) (representing Kirby Morgan: in a declaratory judgment/trademark case, court granted motion for leave to file amended counterclaim to add false advertising claim and additional defendants).

Amini Innovation Corp. v. McFerran Home Furnishings, Inc. et al., 2014 U.S. Dist. LEXIS 13342 (C.D. Cal. Jan. 21, 2014) (representing Amini Innovation: in a copyright and trade dress infringement case, court struck affirmative defenses and an attempt by Defendants to reserve rights to plead other defenses).

Amini Innovation Corp. v. McFerran Home Furnishings, Inc. et al., 300 F.R.D. 406 (C.D. Cal. May 19, 2014) (representing Amini Innovation/Jane Seymour: in product configuration trade dress infringement case, defendants served a deposition subpoena on the famous actress Jane Seymour.  The court quashed the subpoena finding that the defendants did not adequately demonstrate that they had sought the discovery in question from the plaintiff or that they could not obtain the discovery in question from the plaintiff, as opposed to Ms. Seymour, and that the burden for Ms. Seymour to comply with the subpoena would be great).

Urban Home, Inc. v. Cordillera Investment Company, LLC, 2014 U.S. Dist. LEXIS 105804 (C.D. Cal. June 19, 2014) (representing Urban Home: Plaintiff Urban Home, Inc. filed an action for trademark infringement, unfair competition, and trademark dilution against Cordillera Investment Company, LLC in connection with Cordillera’s use of the name “Urban Home” online and in video advertisements in what Urban Home alleged was a confusingly similar manner.  The Court denied Cordillera’s motion to dismiss under Fed.R.Civ.P. 12(b)(6), which asserted that the case was not ripe for adjudication, and that it is a good faith remote junior user under the Tea Rose-Rectanus doctrine).

Amini Innovation Corporation v. McFerran Home Furnishings, Inc. et al., 2014 U.S. Dist. LEXIS 93477 (C.D. Cal. July 9, 2014) (representing Amini Innovation: In its complaint for copyright and design patent infringement, Amini Innovation alleged that the infringements were willful based, in part, because of the defendants’ past history of infringing Amini’s and others’ intellectual property rights related to furniture. The defendants filed a motion to strike such allegations claiming that such matter was, in the language of Fed.R.Civ.P. 12(f) immaterial and impertinent.  The Court denied the defendants’ motion).

Amini Innovation Corp. v. McFerran Home Furnishings, Inc. et al., 68 F. Supp. 3d 1170 (C.D. Cal. Dec. 12, 2014) (representing Amini Innovation: in product configuration trade dress infringement case, Amini Innovation successfully opposed Defendants’ motion for summary judgment.  The court denied Defendants’ motion on all grounds).

PUBLICATIONS:
Cohiba: Not Just Another Name, Not Just Another Stogie: Does General Cigar Own a Valid Trademark for the Name Cohiba in the United States, 21 Loyola L.A. Int’l & Comp. L.J. 633 (1999) (cited in, Empresa Cubana del Tabaco v. Culbro Corp., 213 F. Supp. 2d 247, 275 n.42 (S.D.N.Y. 2002)).

Nielsen, M.D. and Baker, L.P. (co-primary authors) et al (1999). Regulation and Immunohistochemical Localization of betagamma-stimulated adenylyl cyclases in mouse hippocampus.  J. Neuroscience 19: 180-192.

Nielsen, M.D. and Baker, L.P. (co-primary authors) et al (1998). Stimulation of Type I and Type VIII Ca2+/calmodulin-sensitive Adenylyl Cyclases by the Gs-coupled 5-hydroxytryptamine subtype 5-HT7A Receptor.  J. Biological Chemistry 273: 17469-17476.

Nielsen, M.D. et al (1996).  Differential Regulation of Type I and Type VIII Ca2+-stimulated Adenylyl Cyclases by Gi-coupled Receptors in vivo.  J. Biological Chemistry 271: 33308-33316.

Villacres, E.C., Wu, Z., Hua, W., Nielsen, M.D., Watters, J.J., Yan, C., Beavo, J., and Storm, D.R. (1995). Developmentally Expressed Ca2+-sensitive Adenylyl Cyclase Activity is Disrupted in the Brains of Type I Adenylyl Cyclase Mutant Mice.  J. Biological Chemistry 270: 14352-14357.

Schiemann, W.P., Graves, L.M., Baumann, H., Morella, K.K., Gearing, D.P., Nielsen, M.D., Krebs, E.G., and Nathanson, N.M. (1995).  Phosphorylation of the Human Leukemia Inhibitory Factor (LIF) Receptor by Mitogen-activated Protein Kinase and the Regulation of LIF Receptor Function by Heterologous Receptor Activation.  Proc. Nat’l. Acad. Sci. 92: 5361-5365.

Duhe, R.J., Nielsen, M.D., Dittman, A.H., Villacres, E.C., Choi, E.J., and Storm, D.R. (1994).  Oxidation of Critical Cysteine Residues of Type I Adenylyl Cyclase by o-iodosobenzoate or Nitric Oxide Reversibly Inhibits Stimulation by Calcium and Calmodulin.  J. Biological Chemistry 269: 7290-7296.

Personal Interests: Golf, fishing, travel with his wife Maria

Contact: mark@cislo.com