Mark Vallone – IBM

IBM lawyer helps steer innovative patent strategy

In the summer of 2014, the Supreme Court issued a unanimous ruling that reshaped the patent landscape in the U.S. The case, Alice Corp v. CLS Bank International, involved patents for a computer system and program code designed to combat the risk that only one party in a financial transaction would follow through.

Alice Corporation had a handful of patents for that technology. CLS Bank sued Alice, calling those patents unenforceable and invalid. Alice countersued, accusing CLS of infringing on its patents. The case made its way to the Supreme Court, where the justices united to affirm a principle established by lower courts: Patent claims founded on an abstract idea are unenforceable.

Mark Vallone | Chief Patent Counsel, Americas | IBM

Mark Vallone | Chief Patent Counsel, Americas | IBM

That decision made the legal landscape in the U.S. a lot more challenging for people like Mark Vallone, chief patent counsel, Americas and manager of IBM’s Patent Center. As welcome as the ruling was for banks like CLS, which runs an international currency exchange network, it sowed ongoing confusion among technology and software companies like IBM over precisely which innovations are eligible for patent protection.

Today, Vallone and his team are finding ways to issue patents despite the “abstract ideas” doctrine. And he’s unabashedly proud of the work they’ve done on that front.

“It was really a situation that called the patentability of a lot of inventions that are implemented in software into question,” Vallone says of Alice v. CLS. “So, we’ve had to come up with strategies so that we can get patents to issue. My team, along with a greater part of the patent team at IBM, has done a really good job of providing guidance… and getting as many patents to issue as possible despite the very complex ‘abstract idea’ case law.”

Structuring guidance and studying up

After nearly three decades of U.S. leadership in patents, Vallone’s team is now focused on helping to build a patent portfolio that is both high-quality and increasingly global. They’ve embarked on that mission as the company shifts its focus to hybrid cloud and artificial intelligence technologies as well as leading-edge technologies such as quantum computing.

There is an undeniable logic behind the team’s new focus: A more international portfolio gives IBM wider freedom of action in these strategic spaces, including engaging others in licensing discussions. IBM doesn’t want disruptions to its business from infringement claims in the U.S., and Vallone says Alice v. CLS and the lower court cases that have followed it have raised doubts as to the validity of any U.S. patent that the United States Patent and Trademark Office grants.

“Laws have largely worked toward being more consistent across the world, but I think we’ve swung the pendulum pretty hard in the U.S., in this particular area, as compared to other jurisdictions,” he says.

That said, IBM still does a lot of patenting in the U.S., so Vallone’s team has implemented some best practices to help prosecute U.S. patent applications and overcome the challenges of the landscape—structuring the patent guidance process a certain way, for example.

There are multiple contributors to IBM’s guidance on how to prepare patent applications; Vallone and his colleagues have a lot of input into that process. Through research on case law, pooling their collective knowledge and information-sharing, they’ve managed to guide IBM around the legal hurdles in America.

Mark Vallone | Chief Patent Counsel, Americas | IBM

They’ve also come up with a universal strategy to satisfy many of the jurisdictions they’re filing for patents in, synthesizing the patchwork of international laws to devise guidance that helps patent applications get approved in multiple countries.

“Some of what we’re filing in the U.S. is also going to get filed in other jurisdictions, so how do we draft those patent applications so that they can issue in countries outside of the U.S.?” Vallone says. “Our U.S. team collaborated closely with colleagues across the globe on how to best do that. What’s really been interesting is the U.S. team is learning quite a bit about international patent laws and how to comply with them, rather than being as U.S.-focused as we have been in the past.”

Small teams, big work

In addition to structuring processes, Vallone has carefully structured his teams. His department operates in squads of four to five. Each team has an experienced leader responsible for ensuring the quality of the team’s work and compliance with the law and IBM procedures—and a paralegal. Supporting the team leads are specialists who not only file with the patent office, but also review for formalities and ensure paperwork is correct.

Vallone and his teammates do cross-team peer reviews not only designed to ensure quality but also to train reviewers to become team leaders in the future. And a smaller team of senior patent attorneys will review applications that have already been filed and give Vallone’s team members feedback on how they could improve further.

It’s important to Vallone that in addition to giving his team members feedback, he gives them broader experience in their field. For example, beyond drafting patent applications, they do patent analysis—defensive, if other parties are asserting a patent against IBM, and for licensing transactions, if they suspect others of infringing on their patents.

“That gives our team members an opportunity to understand how patent claims are read on products or services,” Vallone says. “They really learn from that process so that they don’t make those same mistakes when they’re doing their own work. So, it’s really important for them to see how patents work in a practical sense.”

Vallone’s team also uses automation tools to streamline patent proofreading. That has helped catch errors before filing and cleaned up their applications considerably, he says.

Coming full circle

A graduate of Penn State University, where he received his B.S. in computer science in 1998, and Syracuse University, where he earned his J.D. in 2006, Vallone is a registered patent attorney, a registered patent agent and a member of the New York State Bar.

Mark Vallone | Chief Patent Counsel, Americas | IBM

He launched his career at IBM in 1998 as a staff software engineer, winning the IBM First Patent Application Invention Achievement Award as an inventor. After leaving IBM to pursue his law degree, he clerked for a district court judge in New York and joined Levene, Gouldin & Thompson in 2006 as an attorney. That was followed by a stint at Marjama, Muldoon, Blasiak & Sullivan in early 2010 as a patent attorney. He was doing outside counsel patent work for IBM when a hiring manager reached out to him.

In late 2010, Vallone rejoined IBM, this time as an attorney in intellectual property law. He quickly rose through the ranks, going from attorney to manager and IP law counsel to patent center manager to IP law senior counsel to his current role. And he’s now able to draw on his technical expertise as well as his legal skills, bridging his two careers.

“It’s been a fantastic career here,” Vallone says. “I couldn’t ask for a better team or a better IP law organization to be a part of. We have a wonderful group, wonderful leadership, and I feel fortunate to be here.”

View this feature in the Vanguard Summer III 2023 Edition here.

Published on: July 7, 2023



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