Mark Miller
PEOPLE

Mark Miller

Partner
miller.mark@dorsey.com

Overview

MARK HELPS CLIENTS INCREASE THEIR BUSINESS VALUE THROUGH ENFORCING THEIR INTELLECTUAL PROPERTY RIGHTS AND DEFENDING AGAINST IMPROPER ATTACKS.  HE HAS EXTENSIVE EXPERIENCE IN PATENT, TRADEMARK, AND TRADE SECRET LITIGATION IN FEDERAL DISTRICT COURTS NATIONWIDE, THE INTERNATIONAL TRADE COMMISSION, AND IN FEDERAL CIRCUIT COURTS OF APPEAL.
As a registered patent attorney, Mark is uniquely skilled in patent infringement litigation in federal court and post-grant proceedings before the United States Patent and Trademark Office. He is admitted to practice before the U.S. District Courts in Utah, Colorado and Texas, the U.S. Courts of Appeals for the Federal Circuit, Ninth Circuit, and Tenth Circuit. He also litigated patent infringement actions in federal courts across the country and in the U.S. International Trade Commission.  Mr. Miller also has significant expertise with trademark and trade secret litigation in federal courts, as well as inter partes proceedings before the Trademark Trial and Appeal Board and the Patent Trial and Appeal Board.

Education & Admissions

Brigham Young University (J.D., 2002), cum laude

University of Utah (B.S., 1998)

Admissions

  • Utah
  • United States Patent and Trademark Office
  • U.S. Courts of Appeal for the Ninth, Tenth and Federal Circuits
  • U.S. District Courts for the Districts of Utah, Colorado, Northern Texas

Clerkships

  • U.S. District Court for the District of Utah, Judge Dee Benson, 2002-2003
  • United States Court of Appeal for the Federal Circuit, Judge Randall Rader, 2003-2004

Experience

CLIENT RESULTS

  • Bridgestone Americas Tire Operations, LLC v. Bridgeport-Schrader et al, (D. Delaware 2015): In a patent infringement case involving remote tire pressure monitoring technology, successfully obtained a jury verdict of non-infringement on behalf of the defendants against a plaintiff financed by one of the world's largest NPEs.
  • Honeywell v. The Code Corp, (ITC 2018): In a patent infringement case involving remote bar code scanning technology, represented defendants in defending against allegations of infringing 6 patents, resulting in a mutually agreeable settlement.
  • Petter Investments, Inc. v. Hydro Engineering, Inc., (D. Utah 2015): Represented Utah company accused of infringing three patents owned by competitor as well as false advertising and unfair competition claims; successfully obtained summary judgment of no infringement on all three patents and dismissal of all other claims.
  • K-TEC, Inc. v. Vita-Mix Corp., District of Utah, Case. No. 2:06-cv-108: Represented K-TEC, Inc., in a patent infringement suit against Vita-Mix Corporation, and won a willful infringement verdict after a 9-day jury trial, and successfully defended the verdict on appeal.
  • Petter Investments v. Hydro Engineering, Western District of Michigan, Case No. 1:07-cv-1033: Represented Hydro Engineering in a case involving cross-claims for patent infringement, and won summary judgment in Hydro's favor on all issues.
  • Reexamination Control Nos. 95/000,228, 95/000,339: Represented the patent owner to defend the validity of two patents. All claims in each patent were confirmed valid without amendment.
  • Reexamination Control No. 95/001,016: Represented a third party requester challenging the validity of its competitor's patent. All claims in the patent were cancelled.
  • Primos, Inc. v. Hunder's Specialties, 451 F.3d 841 (Fed. Cir. 2006): Represented Primos, Inc. on appeal in a patent infringement action. The jury's willful infringement verdict was affirmed.
  • Lens.com, Inc. v. 1-800 CONTACTS, Inc., 686 F.3d 1376 (Fed. Cir. 2012): Represented 1-800 CONTACTS, Inc. on appeal, where cancellation of competitor's trademark registration was affirmed.
  • 1-800 CONTACTS, Inc. v. Lens.com, Inc., 722 F.3d 1229 (10th Cir. 2012): Represented 1-800 CONTACTS, Inc. on appeal in a trademark infringement action, obtaining partial reversal of adverse summary judgment.
  • K-TEC, Inc. v. Vita-Mix Corp., 696 F.3d 1364 (Fed. Cir. 2012): Represented K-TEC, Inc. on appeal in a patent infringement action, obtaining affirmance of $24 million judgment. Jury's willful infringement verdict was affirmed.

Industries & Practices

  • Food, Beverage & Agribusiness
  • Health Care
  • Intellectual Property Litigation
  • Mining & Natural Resources
  • Patent Prosecution, Portfolio Strategy & Management
  • Trademark, Copyright, Advertising & Brand Management

Professional & Civic

Professional Achievements

  • Utah State Bar, Member
  • Federal Circuit Bar Association, Member

Accolades

  • The Best Lawyers in America© Litigation – Intellectual Property, 2015-2016, 2018; Patent Law, Trademark Law, 2016, 2018
  • Benchmark Litigation, Future Star, 2018
  • Utah Business Magazine, Utah Legal Elite, Intellectual Property
  • Utah Business Magazine, Top 40 Under 40, 2012
  • Recognized as an “IP Star” in 2018 by Managing Intellectual Property Handbook
  • Mountain States Super Lawyers®, IP Litigation, Rising Star, 2008, 2010-2013
  • Mountain States Super Lawyers®, IP Litigation, 2017
Mark Miller