Martin, Mackenzie

Mackenzie Martin

Partner
Baker & McKenzie LLP

Biography

Mackenzie Martin leads the Firm's Global Patent Prosecution Practice and is a member of the Firm's North American Intellectual Property & Technology Steering Committee. She focuses on intellectual property litigation, counseling, licensing and portfolio strategy matters. She has significant experience in patent and trade secret litigation actions in federal district courts, before the US International Trade Commission, and before the United States Patent and Trademark Office Patent Trial and Appeal Board.

Mackenzie was named as one of the “Lawyers on the Rise” by Texas Lawyer in 2016, was given the Rising Star Award for IP at Euromoney’s 2017 Americas Women in Business Law Awards, and was selected as a Rising Star for intellectual property litigation in Super Lawyers in 2017, 2018, and 2019.

Practice Focus

Mackenzie's practice focuses on litigating complex patent infringement and other intellectual property disputes. She also handles administrative hearings and trials before the ITC and USPTO. Mackenzie also prepares and prosecutes patents, advises clients regarding freedom-to-operate decisions, and provides infringement and invalidity opinions and advice. Mackenzie also has significant cross border litigation experience relating to standards essential patents and FRAND issues. Mackenzie is an electrical engineer and has experience in a variety of technical fields, including software, networks, communication systems, integrated circuits, semiconductor devices, computer memory technology, optics, stereographics, LEDs, solar cells, medical devices, financial systems, cloud computing, and display technology.

Representative Legal Matters

  • Secured a win for a leading 3D display provider as complainant at the US International Trade Commission, resulting in a final determination that all asserted claims of three patents-in-suit were valid and infringed by all five of the accused products, and providing for issuance of exclusion and cease-and-desist orders with a 100% bond against respondents.

  • Represented a leading 3D display provider as the patent owner in seven inter partes review proceedings filed with the USPTO Patent Trial and Appeal Board, resulting in complete wins in six proceedings and preservation of key infringed claims in one proceeding.

  • Represented a major automotive manufacturer as petitioner in numerous inter partes review petitions filed with the USPTO Patent Trial and Appeal Board, resulting in a favorable settlement of related patent litigation.

  • Defended a major US location services company in a patent infringement litigation pending in the Eastern District of Virginia, resulting in invalidation of all five asserted patent claims.

  • Secured a stay pending covered business method patent review for numerous financial institution defendants from 28 consolidated cases at the United States District Court for the Eastern District of Texas, even before issuance of any institution decision by the USPTO Patent Trial and Appeal Board.

  • Represented a major US bank and a major US provider of banking and payments technology in defense of multiple patent infringement litigation in the United States District Courts for the Eastern and Western Districts of Texas.

  • Represented multinational hotel and casino in trademark litigation pending in the United States District Court for the Northern District of Texas.

  • Represented manufacturer of housewares in trade dress and copyright litigation pending in the United States District Court for the Western District of North Carolina.

  • Represented multinational semiconductor polishing company in a patent litigation in the United States District Court for the District of Delaware, resulting in an unprecedented stay of proceedings.

  • Represented a medical diagnostics company as a defendant in a patent litigation in the United States District Court for the Central District of California, resulting in the invalidation of all claims.

Professional Associations and Memberships

  • Honorable Barbara M.G. Lynn American Inn of Court - Associate (2013-2015); Barrister (present)
  • State Bar of Texas - Member (2008-present)
  • American Bar Association - Member (2008-present)
  • PTAB Bar Association - Member (2016-present)
  • Dallas Bar Association - Member (2008-present)
  • Institute of Electrical and Electronics Engineers

Admissions

  • U.S. Patent and Trademark Office~United States (2019)
  • U.S. District Court, Western District of Texas~United States (2013)
  • U.S. Court of Appeals, Federal Circuit~United States (2013)
  • U.S. District Court, Eastern District of Texas~United States (2013)
  • U.S. District Court, Northern District of Texas~United States (2013)
  • U.S. District Court, Southern District of Texas~United States (2013)
  • U.S. Court of Appeals, Fifth Circuit~United States (2013)
  • Texas~United States (2008)

Education

  • Fudan University (2008)
  • Washington University (J.D.) (2008)
  • Nanjing University (2005)
  • Kansas State University (B.S. Electrical Engineering summa cum laude) (2003)

Languages

  • English
  • Mandarin

Previous Offices

  • Hong Kong
  • Shanghai
  • Taipei

Speeches and Presentations

  • Presenter, "Effectively Managing and Protecting Your Trade Secrets," Dallas Bar Association, August 2019

  • Presenter, "The Rising Importance of Safeguarding Trade Secrets in the Digital Age," Managing IP Innovation & Litigation Summit, San Francisco, June 2019

  • Presenter, "Artificial Intelligence & Intellectual Property," State Bar of Montana Webinar, May 2019

  • Moderator, "Protect and Innovate Your IP Portfolio," Managing IP International Women's Leadership Forum, Menlo Park, December 2018

  • Moderator, "Portfolio Management and Patent Prosecution: Going Beyond Quality," The Women's IP Strategy Summit, Silicon Valley, September 2018