Fleming_Mark

Mark C. Fleming

Fleming_Mark

Mark C. Fleming

Partner

  • Vice Chair, Appellate and Supreme Court Litigation Practice

Mark Fleming is vice chair of WilmerHale's Appellate and Supreme Court Litigation Practice. Mr. Fleming has appeared in more than 200 appellate cases and personally presented oral argument in 46 of them, including six before the Supreme Court of the United States and 19 before the US Court of Appeals for the Federal Circuit, including three in the same week. He has also argued before the First, Second, Third, Eighth, Ninth, Tenth and District of Columbia Circuits and the Massachusetts Supreme Judicial Court and Appeals Court.

Mr. Fleming’s broad-based appellate experience covers numerous subject areas, ranging from patent law, securities, and complex business disputes to real estate, antitrust, and tax. His clients include leading companies in the fields of medical devices, biotechnology, and pharmaceuticals, as well as high-technology industries including semiconductors, smartphones, online storage and processing, and connectivity. He also maintains an active pro bono practice, particularly in matters involving immigration law, where he has argued and won several high-profile Supreme Court cases.

Mr. Fleming previously served as a law clerk to the Honorable David H. Souter of the Supreme Court, the Honorable Michael Boudin of the First Circuit, and the Honorable John C. Major of the Supreme Court of Canada. Mr. Fleming also served as an associate legal officer in the Appeals Chamber of the International Criminal Tribunal for the former Yugoslavia.

  • Mark Fleming’s Three Federal Circuit Arguments in Four Days Underscore WilmerHale’s Appellate Strength

    Mark Fleming argued three unrelated cases before the US Court of Appeals for the Federal Circuit in Washington DC in four days, including arguing for the appellee in Verinata Health Inc. v. Ariosa Diagnostics Inc., et al. in a patent fight over prenatal DNA testing technology; representing the appellant in Warsaw Orthopedic, Inc. v. Sasso, et al., arguing in a fight over jurisdiction that the proper venue for the underlying patent royalty dispute is federal court, not Indiana state court; and arguing for the appellee in Crane Security Technologies v. Rolling Optics AB.

    November 15, 2019
    Read More

Experience

  • Supreme Court

    A former Supreme Court clerk, Mr. Fleming has filed briefs in over 50 Supreme Court cases on wide-ranging topics including patent law, immigration, criminal law and constitutional law. He has personally argued six Supreme Court cases, including: 

    • Mathis v. United States (2016): Mr. Fleming argued and won a major criminal sentencing case in the Supreme Court, which also has important consequences for immigration law. He had previously argued and won the same issue in the en banc Ninth Circuit (Almanza-Arenas v. Lynch (2015)). Transcript of oral argument available here.
    • Reyes Mata v. Lynch (2014): Mr. Fleming argued and won a significant Supreme Court immigration case that confirmed the right of noncitizens to seek equitable tolling of the time for moving to reopen a removal proceeding due to ineffective assistance of counsel. Transcript of oral argument available here.
    • Stanford University v. Roche Molecular Systems (2011): Mr. Fleming argued and won a closely-watched Supreme Court case regarding the effect of the Bayh-Dole Act on patent assignments. In an opinion by Chief Justice Roberts, the Court ruled 7-2 in favor of our client Roche. This is the first time that the Supreme Court has affirmed the Federal Circuit's judgment in a patent case when the United States government has urged reversal. Transcript of oral argument available here.
    • Judulang v. Holder (2011): Mr. Fleming argued and won a Supreme Court case challenging a policy of the Board of Immigration Appeals (BIA) denying certain lawful permanent residents the opportunity to seek relief from deportation. Although all but one federal court of appeals had upheld the BIA's policy, the Supreme Court, in a unanimous decision, described the BIA's approach as "headscratching," compared it to a "coin flip," and invalidated it as "arbitrary and capricious" - an unprecedented result in an immigration case. Transcript of oral argument available here. The American Immigration Lawyers Association awarded Mr. Fleming its 2012 Jack Wasserman Memorial Award for Excellence in Litigation in the Field of Immigration Law for his work on this matter.
  • US Court of Appeals for the Federal Circuit and Other US Court of Appeals Cases

    Mr. Fleming argues frequently in the Federal Circuit in patent cases involving varied technologies and legal issues. In November 2019, he argued three complex Federal Circuit appeals for different clients in a single week. His recent patent appeal experience includes:

    • Intellectual Ventures v. Unified Patents (2020): Mr. Fleming argued and won a patent appeal involving database caching technology, in which the court affirmed the unpatentability of patent claims asserted by Intellectual Ventures.
    • Crane Security Technologies v. Rolling Optics (2019): Mr. Fleming argued and won an appeal in a complex patent case involving anticounterfeiting technology in currency.
    • Slot Speaker Technologies v. Apple (2019): Mr. Fleming argued and won an appeal in a patent case involving the design of speakers in smartphones.
    • Medtronic, Inc. v. Barry (2018): Mr. Fleming argued and won an appeal in which the Federal Circuit, in a published opinion, remanded a decision of the Patent Trial and Appeal Board regarding a reference’s public availability as invalidating prior art in an inter partes review involving spinal surgery techniques.
    • 01 Communique Laboratory v. Citrix Online (2018): Mr. Fleming won a case involving remote access technology, in which the Federal Circuit clarified that a defendant in a patent infringement case may permissibly argue that, if the patent covers the accused technology, it must also cover the prior art.
    • Braintree Laboratories v. Breckenridge Pharmaceutical (2017): Mr. Fleming argued and won a significant victory for Braintree Laboratories, when the Federal Circuit reversed a district court's grant of summary judgment of noninfringement for Breckenridge Pharmaceutical and remanded with instructions to enter judgment in Braintree's favor. This Hatch-Waxman matter involved a patent owned by Braintree pertaining to its product SUPREP, a highly successful product designed to cleanse the colon safely before a colonoscopy.

    Mr. Fleming has also argued federal appeals in the First, Second, Third, Eighth, Ninth, Tenth and District of Columbia Circuits on various topics. Recent highlights include:

    • L.S. v. Webloyalty.com, Inc. (Second Circuit, 2020): Mr. Fleming argued and won a Second Circuit decision raising an issue of first impression in any court of appeals: interpretation of the Electronic Fund Transfer Act’s requirement that e-commerce companies provide a “copy” of a customer’s “authorization” for an electronic transfer of funds.
    • Lenox MacLaren Surgical v. Medtronic, Inc. (Tenth Circuit, 2017): Mr. Fleming argued and won a Tenth Circuit appeal involving antitrust claims brought against Medtronic by a former supplier. 
    • Almanza-Arenas v. Lynch (en banc Ninth Circuit, 2015): Mr. Fleming argued and won an important immigration case, in which the en banc Ninth Circuit ruled unanimously that a lawful permanent resident was eligible for cancellation of removal because a criminal conviction did not disqualify him under the “categorical approach.” The following year, Mr. Fleming convinced the Supreme Court to adopt the Ninth Circuit’s rule in Mathis v. United States (2016), which changed the law applicable to hundreds of criminal sentencing cases and immigration cases.
  • Massachusetts Appeals

    Mr. Fleming also has significant experience in the Massachusetts Supreme Judicial Court and Massachusetts Appeals Court. Recent highlights include:

    • Hatt v. McGraw (Mass. App. Ct. 2018): Mr. Fleming successfully defended a museum’s board against an effort by museum members to overturn the board’s decisions regarding museum governance.
    • New England Biolabs v. Picone (Mass. App. Ct. 2015): Mr. Fleming successfully defended the executives of a Massachusetts startup against accusations of trade secret misappropriation.
    • White v. Hartigan (Mass. Supreme Judicial Ct. 2013): Mr. Fleming successfully argued an appeal of a Land Court decision regarding rights to a beach on Martha’s Vineyard.
    • Brewster Wallcovering v. Blue Mountain Wallcoverings (Mass. App. Ct. 2007): Mr. Fleming argued and won an appeal by a Canadian wallpaper manufacturer from one of the largest jury verdicts in Massachusetts in 2003.

Recognition

  • Award Text

    Fellow

    American Academy of Appellate Lawyers

    2016–present

  • Award Text

    Champion of Justice Award

    Immigrant Defense Project

    2018

  • Fellow, American Academy of Appellate Lawyers
  • Member, American Law Institute
  • Member, International Association of Defense Counsel
  • Chair, Boston Bar Association Council Nominating Committee (Member 2016) 
  • Member, Boston Bar Association Member of Council (2015–present)
  • Member, Boston Bar Association Finance Committee (2015–present)
  • Named a "New England Super Lawyer" for appellate litigation in Boston Magazine (2016–2019), and was previously recognized as a "Rising Star" (2007–2013)
  • Recognized along with the firm with the Immigrant Defense Project’s Champion of Justice Award for work in the area of immigrant rights, including on pro bono cases Judulang v. Holder and Mathis v. United States (2018)
  • Recommended by The Legal 500 United States for his appellate practice (2016–2018)
  • Selected by Benchmark Litigation as a "Future Star" (2011, 2012, 2013, 2017)
  • Chair, Boston Bar Association Amicus Committee (Chair 2013–2015; Member 2006–2013)
  • Adviser, American Law Institute for Restatement of the Law Third, Conflict of Laws Project (2015)
  • Named a "Rising Star" in appellate law by Law360 (2013), and selected to its list of "10 appellate lawyers under 40 to watch" (2010)
  • Recipient of the American Immigration Lawyers Association's Jack Wasserman Memorial Award for Excellence in Litigation in the Field of Immigration Law in recognition of Judulang v. Holder (2012)
  • Recognized by Law360 as an “MVP of the Year” with distinction in Appellate law (2011)
  • Named National Law Journal's Appellate Lawyer of the Week (2011)
  • Member, Boston Bar Association Task Force on the Judiciary Budget (2009–2010)
  • Co-Chair, Boston Bar Association International Law Section (2007–2009)
  • Co-Chair, Subcommittee on International Alternative Dispute Resolution of the American Bar Association (2007–2009)
  • Recipient of the Boston Bar Association's "President's Award" in recognition of representation of Guantanamo Bay prisoners (2007)
  • Co-Chair, Alternative Dispute Resolution Committee of the Boston Bar Association (2005–2007)
  • Named "Pro Bono Attorney of the Year" by the Political Asylum/ Immigration Representation Project (2001)

Insights & News

Credentials

  • Education

    • JD, Harvard Law School, 1997

      magna cum laude Executive Editor and Editor, Harvard Law Review
    • BA, English and German, University of King's College, Dalhousie University, 1994

      with honors
  • Admissions

    • Massachusetts

    • US Supreme Court

  • Clerkships

    • The Hon. David H. Souter, US Supreme Court, 2002 - 2003

    • The Hon. John C. Major, Supreme Court of Canada, 1999 - 2000

    • The Hon. Michael Boudin, US Court of Appeals for the First Circuit, 1997 - 1998

Credentials