Mark P. Kesslen Partner and Chair, Intellectual Property Section of Tech Group, Co-chair, Intellectual Property Litigation Practice

New YorkNew Jersey
T 646.414.6793/973.597.2330 | F 973.597.2331



Mark Kesslen loves innovators but loathes patent trolls. He applies that passion to bringing much-needed critical strategic guidance to tech-based companies. Mark devotes his practice to clients engaged in creating businesses, launching new products, and conducting M&A and venture capital transactions.

Mark’s admiration for innovators was sparked during his years as a client of several law firms, including Lowenstein Sandler. He served as Chief IP, Technology & Sourcing Lawyer globally for JPMorganChase, a job he liked, but not as much as he likes working with startups and growth companies. During Mark’s eight years at JPMC, he settled multibillion-dollar patent litigation against trolls, handled multibillion-dollar outsourcing agreements, oversaw the merging of J.P. Morgan’s intellectual property portfolio with Chase Bank’s, and presided over the firm’s growing and ambitious patent portfolio.

During his tenure at JPMC, as finance and technology evolved, Mark helped develop a legislative agenda for IP issues involving the financial services industry. His testimony before Congress has influenced a number of patent laws enacted since 1999. In 2005, Mark realized that his greatest professional satisfaction came from serving as IP strategist for the tech companies created at Lab Morgan, JPMorganChase’s incubator (several of which had successfully gone public). In that role, he co-counseled with his friends at Lowenstein Sandler on an emerging tech company, Dialogic. Lowenstein Sandler ultimately represented the company in an IPO and then an $800 million sale to Intel. When Mark decided to return to a steady diet of tech startups, he spoke with only one law firm…and Lowenstein became his new home.

As chair of the firm’s IP group, Mark is heavily involved in issues relating to software, digital and social media, big data, fintech, open source, virtualization/cloud, collaborative consumption, SaaS, creative commons, enterprise, and hardware (including medical-related hardware). 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 also leads several groups focused on startups. He is co-founder and program chair of VentureCrushFG, which provides a formal mentoring program and peer group for high-potential tech entrepreneurs (read about it in the WSJ Accelerators here). He also co-founded GrapeArborVC, an angel investor team composed of friends who pool their personal finances and expertise to back promising tech startups. He is program chair of VentureCrushAV, a New York City group of founders, tech industry angels, venture capitalists, and senior executives with an interest in funding and supporting early-stage ventures.

An electrical engineer by training, Mark started his career at a shoe factory in New Hampshire, his home state, performing a series of jobs that subsequently moved offshore, underscoring the need for America to innovate.

Outside the office, Mark bikes as much as he can. He enjoys hiking, snowshoeing, jumping in lakes, 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 sometimes wishes he still could be)–and serves as a trustee of his alma mater, the School of Engineering at Tufts University. Go Jumbos!

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 Twitter. The investment required extensive IP diligence.
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Other Distinctions

  • IAM Patent 1000 - The World's Leading Patent Practitioners (2013) - Recognized among leading patent practitioners.  The publication notes "Mark Kesslen thrives at the intersection of technology and intellectual property. He acts as a counsellor to his clients, deploying his experience as a prosecutor and litigator to great effect."

  • 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 (2006-2013) – 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

Open Source Software A Core Competency For Effective Tech M&A
IP Watch, December 9, 2016
Mark Kesslen, John Wintermute
Ed Zimmerman & Mark Kesslen: When Patent Trolls Interrupt Your M&A or VC Deal
The Wall Street Journal- The Accelerators, October 17, 2013
Mark Kesslen
The Nuances of the America Invents Act of 2011
Metropolitan Corporate Counsel, June 2011
Mark Kesslen, David Toma
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Press Mentions

Mark Kesslen comments in Technology Transfer Tactics’ monthly newsletter on the various approaches TTOs may consider for managing patent annuity. , Technology Transfer Tactics , August 2017
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
Mark Kesslen comments on the escalation of the legal war over patents in the wireless industry in light of Motorola Inc.'s filing of a patent infringement complaint against Apple Inc. , Wall Street Journal, Fox Business, PCWorld, SmartMoney.com , October 6, 2010
In Wall Street Journal and UPI articles, Mark Kesslen comments on Microsoft Corporation's possible motivation behind suing Motorola Inc. for infringing nine patents in smart phones powered by Android software. , Wall Street Journal, UPI , October 3, 2010
Mark Kesslen comments on Apple Inc.'s attempt to maintain control over its products by suing companies that sell unauthorized electronic accessories such as chargers, speakers and cables for Apple's electronic devices. , Bloomberg (also published in The Boston Globe, San Francisco Chronicle and SNL Kagan Media & Communications Report) , July 28, 2010
Mark Kesslen comments on NTP's lawsuit against Apple, Google, HTC Corp., LG Electronics Inc., Microsoft Corp. and Motorola Inc. over eight patents related to the wireless delivery of email to cell phones. , Wall Street Journal , July 10, 2010
Mark Kesslen comments on HTC Corp's licensing deal to use Microsoft's patents in its Android phone and on the impact that deal has on Apple's patent-infringement lawsuit against HTC. , Wall Street Journal , April 28, 2010
Mark Kesslen comments on Apple Inc.'s suit of Taiwan-based HTC Corp. over alleged patent violations on smartphone technologies. , The Wall Street Journal , March 2, 2010
Lowenstein Sandler is highlighted for serving as primary legal advisor to ID Systems Inc. in its acquisition of Asset Intelligence LLC. The Lowenstein Sandler team consisted of Steven E. Siesser, Marissa L. Morelle, Kylie Cooper, Mark P. Kesslen, Lisa K. Schroeder, Andrew E. Graw and Richard J. Horne. , Metropolitan Corporate Counsel , February 1, 2010
Mark Kesslen comments on the increased use of the U.S. International Trade Commission by technology companies to quickly address patent disputes. , Wall Street Journal , January 22, 2010
Mark Kesslen comments on how recessions affect patent litigation, noting that in periods of economic downturn, "companies look for ways to produce royalty revenue or sue to protect their patents." , Washington Internet Daily , November 26, 2008
Mark Kesslen comments on how the current economy is impacting the generation of new patent applications in industries such as life sciences, Internet and telecom. , BlackEnterprise.com , June 23, 2008
Mark Kesslen comments on how the current economy is impacting the generation of new patent applications in industries such as life sciences, Internet and telecom. , New Jersey Business , June 2008
Mark Kesslen's selection as one of the nation's top 50 IP attorneys under age 45 is highlighted. , Metropolitan Corporate Counsel , June 2008
Mark P. Kesslen comments on how Qualcomm's failure to turn over hundreds of documents in the Broadcom case could impact them in future litigations. , Reuters , October 10, 2007
Mark P. Kesslen examines the Federal Circuit's ruling in the case of Paymentech LP v. BMC Resources Inc., relating to joint patent infringement and how recent Supreme Court patent decisions have impacted the financial services industry. , American Banker , September 28, 2007
Mark P. Kesslen comments on a possible injunction barring Vonage from offering Internet-based phone service, following the U.S. District Court ruling that found the company infringed Sprint patents relating to connecting Internet phone calls. , CNNMoney.com , September 25, 2007
Mark P. Kesslen comments on an amendment to the patent reform bill which could greatly broaden freedom over financial institutions' ability to infringe check-systems patents without penalty. , IP Law and Business , September 2007
In an article examining 2007 boardroom performances, Mark P. Kesslen discusses the potential for review of the Vonage-Verizon dispute, following the Supreme Court ruling on KSR v. Teleflex, which tightens restrictions on companies vying for patents. , Corporate Board Member Magazine , August 10, 2007
Mark P. Kesslen comments on Google's new software tool called Claim Your Content, which is filtering technology that enables copyright owners to police YouTube's site for improper content. , The Hollywood Reporter, Esq. , April 24, 2007
Mark P. Kesslen discusses an activist group's complaint alleging Viacom's improper request for the removal of a Comedy Central parody clip from YouTube Inc.'s website. , The Hollywood Reporter, Esq. , March 23, 2007
Mark P. Kesslen examines the $1 billion copyright infringement lawsuit brought by Viacom Inc. against Google and YouTube Inc., and what the suit means for other broadcasters whose copyrighted content is posted on You Tube's site. , The Hollywood Reporter , March 15, 2007
Mark Kesslen discusses implications placed on website content aggregators in the recent wake of Google's Belgium copyright lawsuit. , Red Herring , February 26, 2007
Mark P. Kesslen discusses the future use of copyrighted materials by search engines stemming from a court decision on Google's alleged misuse of copyrighted titles and summaries on its Belgian-based news site. , Business Week , February 13, 2007
Mark P. Kesslen examines the U.S. Patent and Trademark Office's role in the patent dispute between While Palm Inc. and NTP Inc. , Dow Jones , November 7, 2006
Mark P. Kesslen comments on Vonage's patent battle with Verizon, noting the precarious position Vonage and others are in as a result of "patent wars." , TheStreet.com , June 20, 2006
Mark P. Kesslen comments on The Supreme Court's decision to withhold injunction requirements following a court's finding of patent infringement. , TheStreet.com , May 15, 2006
In the article entitled "RIM eyeing court showdown," Mark P. Kesslen comments on the BlackBerry-maker patent litigation. , The Toronto Star , December 19, 2005
In the article entitled "BlackBerry Maker is Emboldened By Patent Office," Mark P. Kesslen comments on the BlackBerry-maker patent litigation. , The Star Ledger , December 18, 2005
In the article entitled "BlackBerry Nation; Patent conflict may trigger demise of wireless communication link," Mark P. Kesslen comments on the BlackBerry-maker patent litigation. , The Wall Street Journal , December 17, 2005

Related Areas

Corporate
Outsourcing
Patent Counseling & Prosecution
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 Program Chair of VentureCrushFG, 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
  • VentureCrushAV, 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