Translating Patents to Dollars
Marcus J. Millet, Of Counsel, has built patent portfolios which have been the basis of substantial and successful business ventures, and which have been successfully enforced to earn royalties of billions of dollars and supported initial public offerings. His practice encompasses all aspects of intellectual property with a particular emphasis on patent preparation, patent prosecution patent portfolio management and patent validity disputes. His practice includes diverse fields of technology including electronics, medical devices, mechanical systems and optical arts. He is experienced in domestic and foreign patent prosecution. He has successfully represented both patent owners and parties challenging validity of domestic and foreign patents in inter partes post-grant proceedings. He also has experience in the intellectual property aspects of corporate mergers and acquisitions. Mr. Millet has extensive experience in engineering and is a Licensed Professional Engineer in the State of New Jersey. He is also a named inventor in twelve United States patents.
Academic Depth
Mr. Millet is a former Adjunct Professor at Seton Hall University School of Law where he taught the art of patent claim drafting. He has also contributed extensively to the literature, and has been a contributor to various intellectual property journal and trade publications. He has also authored comments on patent office regulations which have been adopted by national intellectual property organizations.
Marcus J. Millet is a partner in the firm. Mr. Millet has built patent portfolios which have been the basis of substantial and successful business ventures, and which have been successfully enforced to earn royalties of billions of dollars and supported initial public offerings. His practice encompasses all aspects of intellectual property with a particular emphasis on patent preparation, patent prosecution patent portfolio management and patent validity disputes. His practice includes diverse fields of technology including electronics, medical devices, mechanical systems and optical arts. He is experienced in domestic and foreign patent prosecution. He has successfully represented both patent owners and parties challenging validity of domestic and foreign patents in inter partes post-grant proceedings. He also has experience in the intellectual property aspects of corporate mergers and acquisitions. Mr. Millet has extensive experience in engineering and is a Licensed Professional Engineer in the State of New Jersey. He is also a named inventor in twelve United States patents.
1987, New Jersey 1978, New York
J.D., Brooklyn Law School, cum laude, 1977 Rutgers University B.S., Mechanical Engineering, Polytechnic University, 1968; Member, Pi Tau Sigma honorary society
On November 9, 2012, the United States Patent and Trademark Office granted Bell'O International Corp.'s request for inter partes reexamination of U.S. Patent Nos. 8,079,311 ("the '311 Patent") and 8,191,485 ("the '485 Patent"), and also issued office actions rejecting all claims of the '311 and '485 patents at issue in the reexamination proceedings. The '311 and '485 Patents are the subjects of a patent suit filed by Whalen Furniture Mfg., Inc. against Bell'O International Corp. on December 21, 2011 in the United States District Court for the Southern District of California, civil action no. 3:11-cv-02988-H-DHB. The '311 and '485 Patents are related to television stands for flat panel televisions. In particular, Whalen has alleged that its '311 and '485 patents cover television console kits that permit flat panel televisions to be mounted in any one of three configurations (on the console, on a pole secured to the back of the console, and on a wall above the console). Marc Sculler, CEO, of Bell'O International, commented that "we are very pleased that the United States Patent and Trademark Office has adopted our arguments and has rejected all of Whalen's asserted '311 and '485 patent claims in the reexamination proceedings. Bell'O has not infringed any of Whalen's alleged patent rights and will continue to vigorously defend against Whalen's allegations of patent infringement. Bell'O will continue to pursue invalidity of the '311 and '485 patents via the PTO reexamination proceedings and in the lawsuit." Copies of the PTO's Orders granting Bell'O's reexamination requests and corresponding Office Actions can be accessed through the link below. Office Action '311 Patent Order Granting Reexam Request '311 Patent Official Action '485 Patent Order Granting Reexam Request '485 Patent.
WADDINGTON NORTH AMERICA, INC. v. SABERT CORPORATION. After assisting our client Waddington in obtaining a successful reexamination of its patent on metallized cutlery, we filed an infringement action in the District of New Jersey against its competitor, Sabert. In various pretrial rulings, we obtained dismissal of Sabert's inequitable conduct defenses (2010 WL 3907036); several favorable claim construction rulings (2010 WL 4363137); summary judgment of literal infringement as to one of Sabert's products (2011 WL 1098998); and summary judgment on one of Sabert's defenses alleging lack of written description support (2011 WL 1098996). After a trial in which a jury rendered a verdict adverse to our client, we obtained judgment as a matter of law on Sabert's remaining written description defense, and a new trial on all other issues based upon opposing counsel's trial misconduct (2011 WL 3444150). Prior to the scheduled retrial, the case was settled with the entry of a consent judgment acknowledging that our client's patent was valid and enforceable, and with Sabert taking a license under our client's patent.
“Patent Reexamination Reexamined: Recent Statutory Changes May Alter the Landscape” by Marcus J. Millet published in New Jersey Lawyer Magazine on October 2003
Lerner David Receives Top Honors in New Jersey For Intellectual Property Litigation
Lerner David Hits Top 40 Patent Law Firm
American Bar Association Past Chairman, Intellectual Property Section, New Jersey State Bar Association American Intellectual Property Law Association Past Chairman, USPTO Affairs & Liaison Committee, New Jersey Intellectual Property Law Association