Mark Deming is an intellectual property attorney. His practice includes patent, trademark,
trade dress, copyright and trade secret law. He advises companies of all sizes regarding
protecting intellectual property rights as well as litigating the same as either plaintiffs or
defendants. Mark regularly appears before state and federal courts and agencies,
including in the Northern District of Illinois, the District of Delaware, the Central District of
California, the Trademark Trial and Appeal Board, and the Patent Trial and Appeal Board.
Mark leads all aspects of case development, from initial assessment through discovery,
motions practice, claim construction, expert witnesses, trial, and appeal. Mark is also a
registered patent attorney.
Mark’s practice includes pharmaceutical and medical device patent litigation. He advises
both brand-side and generic-side companies at every stage of the product development
cycle, including candidate evaluation, loss of exclusivity projection, notice letter
preparation, pre-litigation strategy, and post-settlement enforcement. He also regularly
litigates Hatch-Waxman cases involving drug product types such as ophthalmic, solid oral,
controlled release, transdermal, and topical dosage forms.
Prior to joining Polsinelli, Mark clerked for two years with District Judge Michael Schneider
and Magistrate Judge John Love in the United States District Court for the Eastern District
of Texas. Mark has a Bachelor of Science degree in Computer Engineering from the
University of Illinois Department of Electrical and Computer Engineering
Education
University of Illinois (J.D., magna cum laude, with pro bono notation, 2009)
• Dean's List; Lamet Scholar, Civil Litigation Clinic; Member & Administrative
• Editor, Journal of Law, Technology & Policy
University of Illinois (B.S., 2006)
• Computer Engineering
Bar Admissions
• Illinois, 2010
• Admitted to practice before the United States Patent and Trademark Office, 2012
Court Admissions
• U.S. District Court, Eastern District of Texas
• U.S. District Court, Northern District of Illinois
• U.S. Court of Appeals, Federal Circuit
• U.S. Court of Appeals, Seventh Circuit
Memberships
• Federal Circuit Bar Association
Recognition
• Selected for inclusion in Best Lawyers in America® for Litigation - Intellectual Property,2023-2025
• Judicial Clerk to the Honorable Michael H. Schneider, U.S. District Court, Eastern District of Texas, 2010-2011
• Judicial Clerk to the Honorable John D. Love, U.S. Magistrate, Eastern District of Texas, 2009-2010
Matters
• Represents brand, generic, and specialty pharmaceutical companies in Hatch Waxman Act cases, including first-filer, subsequent filer, and large multi-defendant NCE-1 cases.
• Regularly appears before Trademark Trial and Appeal Board on behalf of both opposers/petitioners and applicants/registrants in opposition and cancellation proceedings.
• Defends clients accused of patent infringement by non-practicing entities and patent assertion entities.
• Represents both plaintiffs and defendants in trademark, trade dress, and unfair competition cases.
• Advises clients on freedom to operate searches, marketing and branding initiatives, and policing to protect national and international brands.
• Prosecutes patent infringement actions on behalf of patentees and patent owners.
• Drafted Markman briefs and argued Markman hearings that resulted in favorable, case dispositive claim construction decisions.
• Obtained early dismissal of all asserted patents under Alice and successfully defended district court’s determination on appeal.
• Successfully defended Alice challenges on behalf of patentees.
• Drafted successful appellate briefs and second-chaired appellate arguments in the Federal Circuit and Seventh Circuit.
• Prosecuted and defended inequitable conduct claims, including related Walker Process action, on behalf of plaintiffs and defendants.
• Obtained personal jurisdiction dismissals for clients sued in federal district courts in California.
• In Eastern District of Texas, District of Delaware, and District of New Jersey, obtained stays of patent litigations pending resolution of related IPRs.
• Successfully transferred patent infringement action from a rocket docket to a more convenient venue
Publications
May 2024
Patent Basics for Biotech Counsel
Co-Contributor, Bloomberg Law
May 27, 2021
China’s Patent Law Revamp Promises New Protections for Drugmakers
Quoted, Bloomberg Law
January 27, 2021
Biden administration promises hard stance against Chinese IP abuses
Author, IA
Capabilities
• Biosimilars
• Hatch-Waxman & Biologics
• Intellectual Property
• Intellectual Property Litigation
• Litigation
• Patent Litigation
• Restrictive Covenants & Trade Secrets Litigation
• Trademark, Copyright & Branding
• Trademark, Copyright & Branding Litigation