Marc Kaufman

Partner

(202) 459-9882

Practice Groups and Client Sectors:

Intellectual Property

Areas of Focus:

Patent Counseling and Prosecution, Intellectual Property Transactions and Due Diligence, Blockchain and Cryptocurrencies, FinTech, China, Europe
Marc Kaufman

Education

Catholic University School of Law

J.D.

Boston University

M.S., Mechanical Engineering

Previous Experience

  • Reed Smith (Equity Partner)
  • Nixon Peabody (Partner, Patents Practice Group Leader)

Bars & Courts

  • U.S. Court of Appeals - District of Columbia Circuit
  • U.S. Court of Appeals - Federal Circuit

PROFESSIONAL ADMISSIONS / QUALIFICATIONS
  • District of Columbia
  • U.S. Patent and Trademark Office

Professional Experience

Marc Kaufman concentrates his practice in the area of patent strategy, in particular, advising clients in protecting, managing and monetizing their intellectual property assets. He has represented clients in defending against patent assertions in district courts and through post-grant administrative proceedings in the U.S. Patent Office, such as Inter Partes Reviews. Mr. Kaufman has been active in creating procedures to secure and enforce intellectual property rights, as well as structuring and negotiating intellectual property transactions.

Working extensively in the space of Fintech, Mr. Kaufman also has experience in the media and advertising space, and software generally. His technical work includes distributed ledger technology (DLT) and crypto currency, securities trading exchanges content aggregation and targeting, digital rights management, database technology, search engine technology, and data mining.

Enhancing a reputation as a leading voice in the area of Fintech and intellectual property matters, Mr. Kaufman has spoken across the country, authored several articles, and been quoted in notable publications such as the New York Times, the Boston Globe, Forbes, Newsweek, and the Patent Trademark & Copyright Journal. Mr. Kaufman has served as a chair of the Law Seminars International Conferences on patent monetization, which are held across the U.S. to provide education and industry insights to business consultants and in-house counsel alike. Mr. Kaufman has been named to the IAM 350 Top Patent Strategists every year since its inception.

Prior to joining Rimon, Mr. Kaufman was a partner at Reed Smith. Mr. Kaufman received his J.D. from The Catholic University of America School of Law. He received his B.S. from Boston University, where he studied Mechanical Engineering.

 

Publications

  • Patent Office Institutes Post-Prosecution Patent Program, Co-Author(s): Gerard M. Donovan, 18 July 2016
  • Federal Circuit's Enfish is an Important 101 Decision, Co-Author(s): Gerard M. Donovan, Amardeep (Sonny) Grewal, 18 May 2016
  • Beyond Bitcoin: Blockchain, Co-Author(s): Ranajoy Basu, Paul Bond, Edward J. Estrada, Anthony J. Ford, Jacqui Hatfield, Tyree P. Jones, Jr., Mark S. Melodia, J. Andrew Moss, Cynthia O'Donoghue, Carolyn H. Rosenberg, Evan Thorn, Stephen I. Winter, 11 May 2016
  • New Patent Office Memo to Examiners Raises The Bar For § 101 Rejections, Co-Author(s): Gerard M. Donovan, 9 May 2016
  • Supreme Court: Should Appeal Give Deference to Lower Courts on Claim Construction? Co-Author(s): Robert R. Riddle, 17 October 2014
  • The U.S. Patent Minefield Network Interference: A Legal Guide to the Commercial Risks and Rewards of the Social Media Phenomenon (3rd Edition), 22 April 2014
  • Effective Patent Monetization Strategy IP Monetization 2012: Maximize the Value of Your IP Assets, 9 May 2012
  • Patent Monetization Cookbook: A Structured Approach to Monetizing Patents, 2012 
  • Building & Enforcing Intellectual Property Value, IP Value 2012
  • Efficient Execution of an IP Strategy IAM Magazine, 6 February 2006

Speaking Engagements

  • Questel Seminar - Is the Blockchain still open source? Radisson Blu Portman Hotel, London,1 December 2016
  • Is the Blockchain Still Open Source? The Emerging Patent Landscape Surrounding Distributed Ledger Technology, CLE / CPD, Webinar, 28 June 2016
  • Blockchain and Digital Currency: The Emerging Patent Landscape, Webinar, 8 March 2016
  • Best Practices in Patent Monetization, "From the Nation's Capitol: A Big Year for Changes in Patentability", San Francisco, CA, Seminar / Webinar, 26-27 March 2015
  • Calculating & Proving Patent Damages: Strategic issues for proving and refuting damages claims, 18-19 September 2014
  • "Patent Valuation: Lessons from Recent Transactions in the Patent Monetization Marketplace", Twelve & K Hotel, Washington, D.C., Seminar
  • Law Seminars International Presents: Best Practices in Patent Monetization, University Club of San Francisco, San Francisco, CA, 6-7 March 2014
  • 2013 ANA Ad Law & Public Policy Conference, Four Seasons Hotel, Washington, D.C., 19-20 March 2013
  • IP Monetization 2012: Maximize the Value of Your IP Assets, "Implementing a Successful IP Monetization Program", PLI New York Center, New York, NY, 9 May 2012
  • Law Seminars International Presents: Best Practices in Patent Monetization, San Francisco, CA, CLE / CPD, 6 February 2012
  • Law Seminars International Presents: Best Practices in Patent Monetization - Strategies for Getting Value from Patents in the Corporate World, San Francisco, CA, 21 February 2011

HONORS & AWARDS

  • Named to Intellectual Asset Management's IAM 250 - A Guide to the World's Leading IP Strategists, in 2010 and 2011
  • Named to the Intellectual Asset Management's IAM 300 - A Guide to the World's Leading IP Strategists (2012 - 2016)
  • Recognized in Client Service All-Star national survey by the BTI Consulting Group, Inc.

PROFESSIONAL AFFILIATIONS

Mr. Kaufman currently serves as Pro Bono Counsel of the Center for Transformative Teaching & Learning.


NOTABLE QUOTES

 "Then Came the Hedge Funds: Patent Death Squad Causes a Ruckus" Bloomberg, 4 June 2015