Marc Lorelli

Co-Chair Litigation

Michigan OfficeP (248) 226-2949

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Marc is the Co-Chair of Brooks Kushman's intellectual property litigation practice. He has been instrumental in building, developing, and growing the team. Throughout his career, Marc has successfully tried patent, trademark, trade secret and copyright cases in Federal Courts nationwide.

Marc has successfully argued appeals before the Federal Circuit including a leading decision on 101 jurisprudence, Ancora Techs., Inc. v. HTC Americas, Inc., 908 F.3d 1343 (Fed. Cir. 2018). Marc, as lead counsel, has also been prevailed in several investigations as both Complainant and Respondent in the International Trade Commission.

He does a fantastic job putting cases together and delivers superb cross-examinations at trial. He really fights for his clients. – IAM Patent 1000

Marc has extensive litigation experience from jury selection; presenting opening statements; examining (direct and cross) fact and expert witnesses; giving closing arguments; conducting Markman hearings; successfully arguing preliminary injunction motions; drafting successful discovery briefs, claim construction briefs, summary judgment briefs, and appeal briefs; managing electronic discovery activities; coordinating large document productions; and negotiating settlement, licensing and acquisition agreements.

Marc’s current practice includes experience with Post-Grant Proceedings before the U.S. Patent and Trademark Office. He has counseled clients in over 50 proceedings, and these proceedings continue to play major role in his patent litigation strategy.  Marc has also been involved in several re-examination requests and the associated prosecution relating to patents in litigation. 

Marc graduated from the University of Detroit Mercy School of Law in 2001. Marc was the valedictorian of his graduating class and was an editor of the Law Review. Marc has a Master’s Degree in Mechanical Engineering from the University of Michigan, and an undergraduate degree in Chemical Engineering from the University of Notre Dame, where he graduated magna cum laude. Marc’s degrees and work experience in both mechanical and chemical engineering allow him to handle cases involving many different technologies.

Prior to joining Brooks Kushman, Marc Lorelli was a patent agent at an automotive corporation. During his three years in that role, he gained extensive experience in preparing and prosecuting chemical, mechanical and electrical patent applications. Marc understands how to meet his clients’ patent prosecution needs, since he was a client himself.  Marc learned first-hand about client expectations and how best to service clients. This experience is invaluable to Marc’s current practice, which involves a great deal of client counseling in both prosecution and litigation matters.

Outside of the office, Marc enjoys family ski vacations out west, but otherwise stays busy with his three daughters who all play hockey. Marc plays hockey himself, and tries to catch the occasional round of golf in what little free time he has.

Representative Matters

Terex South Dakota, Inc. et al v. Sinoboom North America, LLC – (Preliminary Injunction and Consent Permanent Injunction – S.D. Texas) – Represented Terex Corporation in a trademark infringement matter regarding the sale of BLUE mobile elevating work platforms (“MEWPs”). After learning of a Chinese manufacturer attempting to enter the U.S. market, Marc filed a lawsuit and preliminary injunction motion to stop defendant’s sale of Blue MEWPs. The Court granted a preliminary injunction in favor of plaintiff’s motion and halted the sale and use of Sinoboom’s BLUE MEWPs. The case shortly settled in favor of our client, Terex Corporation. This decision is the only preliminary injunction decision involving a product coloring.  This is the first known preliminary injunction granted for a single-color trademark.

Ford Motor Company v. TMC Fuel Injection, LLC (PTAB) – Representing Ford as a defendant in a patent lawsuit involving fuel injection technologies.  BK employed IPR proceedings to obtain admissions regarding claim scope that led the district court to grant summary judgment of non-infringement, which the Federal Circuit affirmed.

Ford Global Technologies, LLC v. New World International, Inc. (Jury Trial – N.D. Texas): Trial counsel for plaintiff Ford in a patent lawsuit involving thirteen design patents. Obtained favorable summary judgment, claim construction, and other pre-trial rulings. The jury found willful infringement of all thirteen patents and against all invalidity challenges and awarded Ford the defendants’ total profits from the infringement. Obtained an award of almost $3 million in profits and attorneys’ fees as well as the entry of a permanent injunction. The judgement was affirmed on appeal. Case No: 3:17-cv-03201-N

JM Enterprises, Inc. V. The Ames Companies, Inc. (Summary Judgment – M.D. Pennsylvania): Counsel for Defendant The AMES Companies in a patent infringement action brought by JM Enterprises, Inc. The plaintiff alleged that AMES’ shovel products infringed a patent covering technology for attaching handles to shovel blades. Obtained summary judgment of non-infringement for client within four months. Case No: 1:17-cv-01118

Automotive Body Parts Assoc. v. Ford Global Technologies, LLC (Summary Judgment – E.D. Michigan): Obtained summary judgment for Ford Global on plaintiff’s declaratory judgment claims concerning Ford Global’s design patents. Case No. 2:15-cv-10137

In re Certain Hybrid Electric Vehicles (ITC):  Trial counsel for Ford Motor Company in multi-patent investigation directed to hybrid electric vehicles. Settlement after trial. Inv. No. 337-TA-1042

TMC Fuel Injection System, LLC v. Ford Motor Company (Summary Judgment – E.D. Pennsylvania) Lead counsel for defendant Ford in a patent infringement action involving automotive fuel injection systems. Lead counsel for numerous inter partes reviews filed by Ford based on obviousness. Ford used the proceedings before the Patent Office to encourage the district court to construe the claims similarly and grant summary judgment in Ford’s favor. Obtained affirmance on appeal to the Federal Circuit. Case No. 2:12-cv-04971

Innovation Ventures, LLC d/b/a Living Essentials, v. N.V.E., Inc. (Jury Trial – E.D. Michigan): Represented Plaintiff Living Essentials in trademark infringement action involving plaintiff’s 5-Hour ENERGY trademark. The jury found that Defendant N.V.E.’s sale of a competing product named “6 Hour Power” infringed Plaintiff’s trademark and awarded $10.6 million in damages. The jury also awarded an additional $11.5 million in disgorgement of N.V.E.’s profits and fully rejected N.V.E.’s $60 million false advertising claim. Case No: 4:08-cv-11867

In re Certain Wiper Blades (D. Nevada; E.D. Michigan; ITC): Trial counsel for Corea Autoparts (CAP) in multiple patent infringement actions concerning “bracket-less” or “beam” style wiper blades. Obtained settlement prior to trial. lnv. No. 337-TA-816

Ancora Technologies, Inc. v. HTC America, Inc. (W.D. Washington; Federal Circuit): Counsel for plaintiff Ancora Technologies in a patent infringement action concerning computer software. Obtained reversal by the Federal Circuit of a decision by the district court invalidating the asserted patent under 35 U.S.C. § 101. Case No. 2:16-cv-01919; 18-cv-1404

Lumalier Corp., v. Infection Prevention Technologies LLC (Federal Circuit.): Counsel for Infection Prevention Technologies in declaratory judgment action concerning multiple patents for ultraviolet sterilization devices used in hospitals. Obtained summary judgment ruling of non-infringement. Obtained affirmance in an appeal to Federal Circuit.
Case No. 2:14-cv-0138

Ancora Techs. v. Apple, Inc. (Federal Circuit): Counsel for Ancora Technologies patent infringement action concerning computer software. Obtained a positive claim construction ruling for the patent holder on appeal to the Federal Circuit. Case No: 744 F.3d 732

Robert Bosch LLC v. Corea Autoparts Producing Corporation et al. (Settlement – E.D. Michigan & ITC) – In re Certain Wiper Blades, lnv: Lead trial counsel for Corea Autoparts (CAP) in multiple patent infringement actions concerning “bracket-less” or “beam” style wiper blades. Favorable settlement was reached prior to trial. Case No: 2:11-cv-14019; lnv. No. 337-TA-816

Living Essentials v. N2G (Jury Trial – E.D. Michigan) – Represented Plaintiff Living Essentials in a trademark infringement action involving plaintiff`s 5-Hour ENERGY trademark. The Court granted Plaintiff summary judgment on secondary meaning and copyright infringement. At trial, the jury found for the Plaintiff on trademark and trade dress infringement and awarded Plaintiff $1,750,000 in damages and attorney fees. Case No. 2:08-cv-10983

Infection Prevention Technologies LLC v. Lumalier (Summary Judgment – E.D. Michigan): Lead counsel for plaintiff in patent infringement action involving room disinfection patents where reflected ultraviolet radiation is the method by which the room is disinfected. The Court granted plaintiff`s summary judgment motion and found that plaintiff did not infringe Lumalier’s patents. Case No. 2:10-cv-12371

Digitech Information Systems, Inc. v. Ally Financial, et al. (Summary Judgment – E.D. Michigan): Counsel for defendant in this patent infringement action. The patent-in-suit was held invalid as not meeting the statutory requirements of 35 U.S.C. § 101. Decision was upheld in an appeal to the Federal Circuit. Case No. 2:11-cv-13999

P&M Services, Inc. v. Martin Gubb (Jury Trial – E.D. Michigan): Lead trial counsel for defendant in patent infringement action concerning paper converting technology. Plaintiff was seeking $7.2 million in damages for infringement of multiple patents. After a three week trial, a favorable jury verdict of $14,167 was obtained for our client. Obtained affirmance of the judgment on appeal at the Federal Circuit. Case No. 04-cv-72432

Magnadyne Corp. v. Best Buy, et. al. (Settlement – C.D. California): Lead trial counsel for plaintiff Magnadyne in a patent infringement action involving the design of cellular phone chargers. Obtained a positive claim construction ruling for the patent holder as well as positive summary judgment result. This success led to the settlement of the matter just prior to trial. Case No. 09-cv-1763; 09-cv-1937

Elmotec Statomat, Inc. v. Visteon Corp. (Summary Judgment – E.D. Michigan): Counsel for defendant in a matter involving breach of contract, correction of inventorship of several patents, and related claims concerning alternator technologies. Obtained a favorable summary judgment dismissing plaintiff’s claims. Case No. 07-cv-13884

In the matter of Certain Automotive Parts (ITC): Trial counsel for Ford Motor Company in a design patent lawsuit directed to vehicle replacement parts. Obtained infringement finding and upheld validity of seven design patents and obtained a General Exclusion Order preventing any infringing parts from entering the United States. Investigation No. 337-TA-557

SPX Corp. v. Bartec USA, LLC, et. al. (Settlement – E.D. Michigan): Lead trial counsel for plaintiff in a patent infringement action. Obtained a positive claim construction ruling for the patent holder as well as an Order excluding evidence of certain prior art from the defendants. These successes led to the settlement of the matter. Case No. 06-cv-14888

Excellent Inventions, Inc. v. FKA Distributing, et al. (Settlement – S.D. Texas): Counsel for defendant in a patent infringement action with multiple patents concerning control schemes for personal wellness products. Successfully defended plaintiff`s claim for a preliminary injunction. Successfully argued at the Markman hearing for a claim scope that rendered the patents invalid. Our success at the Markman hearing led to a favorable settlement for our client. Case No. H-04-4543

Ultra-Precision Manufacturing v. Ford Motor Company (Jury Trial – E.D. Michigan): Trial counsel for defendant involving claims of breach of contract, unjust enrichment, commercial misappropriation and inventor fraud related to compressor technologies. Plaintiff was seeking tens of millions in damages. Through trial and multiple appeals, obtained and upheld a finding of no liability for our client. Case No. 01-cv-70302

General Motors Corporation, et al. v. Lanard Toys, Inc., et al. (Jury Trial – E.D. Michigan) – Represented Plaintiff in an action against a toy manufacturer for unfair competition, trademark infringement, and trade dress infringement. Obtained over $1 million-dollar judgment, which included disgorgement of Defendant’s profits and royalties to General Motors, as well as $1 million in attorney’s fees. Affirmed in the Sixth Circuit Court of Appeals. Case No. 01-cv-71103; 03-cv-72731

Elite Logistics Services, Inc., et al. v. ATX Technologies, Inc., et al. (Summary Judgment – S.D. Texas): Counsel for defendant Ford in a patent infringement lawsuit concerning vehicle telematics. Successfully defended plaintiff`s claim for a preliminary injunction and claim for tens of millions in damages. Obtained summary judgment ruling of non-infringement for our client. Case No. 02-866

Scott Clare, et al. v. Ford Motors Company, et al. (Settlement – E.D. Texas): Counsel for defendant Ford Motor Company concerning pick-up truck designs. Obtained favorable settlement for our client prior to trial. Case No. 02-325

Hilgraeve Corporation v. Symantec Corporation (Settlement – E.D. Michigan): Counsel for plaintiff in a patent infringement action involving anti-virus software. Secured a $62.5 million settlement for our client on the eve of trial. Case No. 97-40370

Richard J. Ditzik v. Viewsonic Corporation, et al. (E.D. Michigan): Counsel for individual/sole proprietorship patentee in lawsuit against large computer monitor manufacturers for infringement of multiple patents. Case No. 03-74043

In the matter of Certain Automotive Parts (ITC): Trial counsel for Ford Motor Company in a design patent lawsuit directed to vehicle replacement parts. Obtained infringement finding and upheld validity of seven design patents and obtained a General Exclusion Order preventing any infringing parts from entering the United States. Investigation Nos. 337-TA-557, 337-TA-651

Organizations and Affiliations

Intellectual Property Owners (IPO) Association – Industrial Designs Committee 

State Bar of Michigan

Michigan Intellectual Property Law Association, Board of Directors, Past-President 2009-2010.

American Intellectual Property Law Association

American Bar Association

Federal Bar Association

Federal Circuit Bar Association

Recognitions

“IAM Patent 1000 Recommended Individual,” Intellectual Asset Management, 2019 – 2021

“Patent Star,” IP Stars, Managing Intellectual Property, 2020-2022

“Outstanding Litigator of the Year – Michigan”, Managing Intellectual Property, 2020

Lawyer of the Year, Litigation – Intellectual Property, Best Lawyers, 2019

Michigan Super Lawyers, Intellectual Property, 2017-2021

“World Trademark Review 1000 Recommended Individual,” Intellectual Asset Management, 2015-2019

Best Lawyers in America, 2015-2022

“Rising Star,” Michigan Super Lawyers, Intellectual Property, 2012-2014

“Top Lawyer,” DBusiness Magazine, 2013, 2015 – 2016, 2019-2022

“Up & Coming Lawyer,” Michigan Lawyers Weekly, 2009

Press Releases

    Client Alerts

      Webinars

        Media Coverage

        Featured, “Federal Circuit Court Won’t Revisit Design Patent Decision and Affirms Decision in Favor of Brooks Kushman Trial Victory,” Law360, September 2020

        Featured, “Fed. Circ. Won’t Rethink Upholding Ford F-150 Design Patents,” Law360, September 2019

        Featured, “Open Source Software: Great for Engineers, Tougher for In-House Attorneys,” Corporate Counsel, June 2018

        Featured, “2015 Best Lawyers in America,” Best Lawyers, August 2014

        Featured, “Patent trolls take their toll,” Crain’s Detroit Business, June 2014

        Featured, “2013 Rising Stars List,” Super Lawyers, September 2013

        Featured, “Top Verdicts, Settlements of 2011,” Crain’s Detroit Business, February 2012

        Publications

        Book Chapter Author, “The Evolution of United States Patent Law Under the America Invents Act,” Intellectual Property Law 2013 Aspatore Thought Leadership series, March 2013

        Book Chapter Author, “New Challenges for Today’s Lawyers in Litigation Patent Cases,” Insides the Minds: Litigation Strategies for Intellectual Property Cases, June 2011

        Author, “How to Manage an Intellectual Property Litigation,” Institute of Continuing Legal Education, February 2004

        Co-author, “Trademark and Trade Dress Fundamentals,” On behalf of Michigan Intellectual Property Law Association to members of the US District Court for the Eastern District of Michigan, January 2006

        Author, “Overview of Claim Interpretation Under Markman,” Intellectual Property Law Institute Judge’s Seminar, January 2002

        Author, “How Trademark Litigation Over Internet Domain Names Will Change After Section 43(D) of The Lanham Act,” University of Detroit Mercy Literary Review, January 2000

        Presentations

        Speaker, “The ‘Other’ Judicially Created Patentability Exception: Design Patent Functionality,” Michigan Intellectual Property Association (MIPLA), January 2020

        Panelist, “IAM Boardroom: PTAB,” Intellectual Asset Management, Chicago, IL, May 2018

        Panelist, “Protecting Your Client’s IP,” Association of Corporate Counsel’s (ACC) Corporate Counsel University, 2014 – 2018, 2021

        Panelist, “Post-grant patent proceedings under the new American Invents Act (AIA),” Toledo Intellectual Property Law Association, March 2014

        Speaker, “Intersection of Trademark & Design Patent Law,” Federal Bar Association Law Clerk Program, October 2011

         

        Education

        J.D., University of Detroit Mercy, summa cum laude, Associate Editor, University of Detroit Mercy, Law Review, Frank Murphy Honor Society, Alpha Sigma Nu Honor Society

        M.S., Mechanical Engineering, University of Michigan

        B.S., Chemical Engineering, University of Notre Dame, magna cum laude, Tau Beta Pi Honor Society

        Practice Area and Industries