Mark P. Kesslen Partner

New York Roseland
T 646.414.6793/973.597.2330 | F 973.597.2331



Chair, Intellectual Property section of Tech Group
Co-chair, Intellectual Property Litigation Practice

Wherever IP intersects with technology, Mark Kesslen is in his element. Since entering the profession, he has been an active participant in virtually every type of intellectual property matter. He has tried cases, drafted patent applications by the hundreds, managed large IP portfolios and helped develop legislation to fight off patent trolls. Now, as chair of our IP group, he brings much-needed strategic guidance to tech-based companies engaged in creating businesses, launching new products, and conducting M&A and venture capital transactions.

The IP issues of technology businesses have been a recurring theme throughout Mark’s career. While in charge of IP worldwide at JPMorgan Chase from 1997 to 2005, he recognized early on that financial services companies had become, in effect, technology companies — and he took the lead in developing patent strategies that were adopted and applied throughout the industry. As the field and its technology evolved, he helped develop a legislative agenda for IP issues, and his testimony before Congress influenced a number of patent laws enacted between 1999 and 2012.

Mark is heavily involved in IP issues relating to software, digital and social media, big data, and fintech. He continues to manage and assess a wide range of process, software and business method patents, and provides strategic advice on issues ranging from litigation assessment to patent scope, open source, trademarks, privacy and ownership risks.

Mark is also an active mover in several interest groups focused on start-ups and early-stage companies. He is Co-founder and Program Chair of First Growth Venture Network, which provides a formal mentoring program and peer group for high-potential tech entrepreneurs. He is Co-founder as well of GrapeArborVC, an angel investor circle made up of friends who pool their personal finances and expertise to back promising tech start-ups. And he is on the Executive Committee of AngelVineVC, a New York City group of tech industry angels, venture capitalists, senior executives and entrepreneurs with an interest in funding and supporting early-stage ventures.

Outside the office, Mark can often be found on his bicycle. He enjoys hiking, snowshoeing and cooking with his family. He serves on the Board of Directors of Camp Belknap, a YMCA-affiliated summer camp in New Hampshire — where he was both a camper and a counselor — and recently joined the board for the School of Engineering at Tufts University.


Representative Engagements

Represented Knewton, a New York-based educational technology company, in a $33 million Series D round led by Founders Fund and an education publisher. Concurrently led the IP team in negotiating a complex commercial alliance between Knewton and Pearson for the commercialization of online educational products incorporating Knewton's technology in the North American higher education market.
Represented Buddy Media, Inc., in its sale to salesforce.com, inc. Led the transaction team in connection with various IP, open source and privacy issues.
Represented Insight Venture Partners in its investment in Flipboard. The investment required extensive diligence and creative problem solving with regard to certain IP disputes.
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Other Distinctions

  • IP Law & Business magazine (2008) – Named among the nation’s top 50 IP attorneys under age 45, for work on behalf of venture-backed companies: “...helping the little guy strike a great bargain.”

  • Chambers USA: America's Leading Lawyers for Business (2006-2012) – Recognized as a leading intellectual property attorney: "'Mark's pragmatism is key to his practice — he doesn't waste time dealing with theoretical concerns, he just gets issues resolved,' report clients."

Publications

The Nuances of the America Invents Act of 2011
Metropolitan Corporate Counsel, June 2011
Mark Kesslen, David Toma
What You Need to Know About the USPTO’s New Prioritized Patent Examination Process (“Track I”)
Patent Law Alert, April 19, 2011
Mark Kesslen, David Toma
Coming to a Website Near You: More Irrelevant Advertisements
AdExchanger.com, December 17, 2010
Mark Kesslen, David Leit, Matt Savare
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Press Mentions

In an article on CNET.comMark Kesslen comments on why Apple has brought patent lawsuits against Android handset manufactures rather than Android architect, Google., CNET , August 15, 2012
Mark Kesslen comments on the motivation behind Kickstarter's suit against ArtistShare to invalidate the patent behind their technology, which allows artists to connect with fans to participate in and fund their work., Crowdfunding 360 , February 6, 2012
In a CNET article, Mark Kesslen comments on the application of the "frand" principle in high-profile technology lawsuits, including those between Apple and various Android manufacturers., CNET , February 3, 2012
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Related Areas

Corporate
Intellectual Property & Patents
Outsourcing
The Tech Group
Trademark Prosecution and Enforcement

Education


Case Western Reserve University School of Law (J.D., 1989)
Tufts University (B.S., 1986) ,  Electrical Engineering

Bar Admissions


New York
New Jersey
United States Patent and Trademark Office

Affiliations


  • Member and Secretary of the Advisory Board of the Entrepreneurial Leadership Program at Tufts University, 2007-present
  • Member of the 2010 Editorial Advisory Board of IP Law360
  • Co-Founder and Executive Committee of First Growth Venture Network, 2009-present
  • Member, Grape Arbor VC, 2006 - present
  • Member of the Advisory Board of Pro Bono Partnership
  • National Venture Capital Association, Patent Group Advisory Board Member
  • President, Community Chest of Englewood, Englewood Cliffs and Tenafly, 2006-present and Member 2002-present
  • AngelVineVC, member/leadership team since 2006
  • Board Member, Intellectual Property Owner’s Association ("IPO"), 2000-2005
  • Chair, Patents Working Group, Financial Services Roundtable, 1999-2005
  • Board of Directors, YMCA Camp Belknap, Wolfeboro NH