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Marc J. Pernick has a complex commercial litigation practice, with particular expertise in intellectual property litigation. He has represented clients in patent litigation in the computer graphic chip, semiconductor, DVR, credit card fraud, wireless communication, ultrasound contrast agent, DNA microarray, water filtration and consumer products industries. Marc has worked on patent cases in federal courts throughout the country, including several in the Eastern District of Texas, the Northern District of California, and the District of Delaware, and he has led client efforts on reexaminations in the PTO as well.

Mr. Pernick has also represented clients in several trade secret cases, as well as in litigation regarding patent licensing disputes, copyright ownership disputes, and software copyright infringement. Outside of the intellectual property arena, he has represented clients in a variety of commercial disputes, including indemnification litigation, insurance coverage litigation, class action fraud litigation, breach of fiduciary duty litigation and breach of contract cases.

Mr. Pernick joined Morrison & Foerster’s Palo Alto office in 1992 and became a partner in 2000.

From December 2001 to February 2002, Mr. Pernick worked as a Deputy District Attorney for Santa Clara County. He tried three domestic violence cases to verdict during that stint.

Mr. Pernick received his Bachelor of Science in Engineering from The Cooper Union for the Advancement of Science and Art in 1989, with concentrations in both mathematics and computer engineering. He received his J.D. degree from New York University School of Law in 1992, and joined Morrison & Foerster’s Palo Alto office later that year. He became a partner of the firm in 2000.

Mr. Pernick also writes and speaks frequently on patent law issues. He has additionally led Firm efforts to comment on the Model Patent Jury Instructions and the Patent Local Rules for the Northern District of California.

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Representative Matters

• Mr. Pernick is part of the Novell defense team in SCO Group v. Novell, which is currently embroiling the Linux industry. SCO sued Novell for "slander of title" based on Novell's contention that ownership of UNIX copyrights did not transfer to SCO. We recently obtained a favorable ruling from the Court establishing that Novell is the owner of the UNIX copyrights, resulting in the dismissal of the bulk of SCO's claims. See The SCO Group v. Novell, 2007 U.S. Dist. LEXIS 58854 (D. Utah August 10, 2007).
• Mr. Pernick defended SDL against Rockwell in patent infringement case regarding laser diode manufacturing process in the Northern District of California and the U.S. Court of Federal Claims, as well as in the Federal Circuit. We obtained summary judgment dismissing Rockwell’s lead damages theory, and the case settled.
• Mr. Pernick represented the University of California against plaintiff professors’ challenge to the University’s decision to license its patent involving imaging agents used in MRI procedures. We obtained summary judgment dismissing plaintiff’s claims. See Kucharczyk v. Univ. of California, 48 F. Supp. 2d 964 (N.D. Cal 1999).