MarkJotanovic3

Mark A. Jotanovic

Patent Litigation & Patent Prosecution

Michigan OfficeP (248) 226-2722

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Mark Jotanovic is a registered patent attorney and focuses his practice on litigation and patent prosecution in electrical, electro-mechanical, and software matters. Mark represents clients in a wide range of industries such as automotive, computer software, consumer products, and retail. His experience includes all aspects...

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Mark Jotanovic is a registered patent attorney and focuses his practice on litigation and patent prosecution in electrical, electro-mechanical, and software matters. Mark represents clients in a wide range of industries such as automotive, computer software, consumer products, and retail. His experience includes all aspects of intellectual property litigation; from the inception of a case through trial, including motion practice, discovery, depositions, and settlement negotiations. Mark also has extensive experience handling appeals, including briefing and arguing at the Federal Circuit. Due to his experience in both patent prosecution and patent litigation, Mark is uniquely positioned to successfully represent clients in inter partes review and post-grant proceedings.

Mark has represented clients from small to medium sized companies to Fortune 500 corporations. He has entered appearances as trial counsel before multiple Federal District courts throughout the country, including California, Michigan, and Texas.

In addition to his litigation experience, Mark also counsels client on the use of Open Source Software. He works with clients to better understand the complex software licenses and copyright matters.

Prior to coming to Brooks Kushman, Mark worked as a research and design engineer in the Electrical Systems Division for Toyota Engineering & Manufacturing North America and in the Navigation Division for Aisin AW, developing vehicle multimedia and telematics systems. Mark also worked together with Toyota`s legal department on patent infringement investigations as well as with Toyota`s sales division on next generation product improvements and business models. Mark is a named inventor on several patents related to his work with multimedia and telematics systems.

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Education

J.D., University of Detroit Mercy

B.S., Electrical Engineering, Wayne State University

Maxchief v. Plastic Development Group, Case No. 2:17-cv-12662-AC-DRG (E.D. Michigan 2017) – Lead counsel for Defendant, Plastic Development Group (PDG).  Plaintiffs brought a patent litigation suit against distributor of blow molded tables in the Eastern District of Tennessee.  Shortly after the Supreme Courts decision in TC Heartland, Brooks Kushman’s litigation team moved to dismiss for improper venue.  In a case of first impression applying TC Heartland to unincorporated entities, venue was deemed improper and transferred to Eastern District of Michigan – PDG’s home forum.  In parallel, PDG filed an inter partes review challenging the asserted patents validity.  The Patent Trial and Appeal Board instituted on all grounds for all challenged claims.  The case settled favorably shortly after the case transferring to PDG’s home forum and institution of the inter partes review.

WP Banquet, LLC et al. v. Target Corporation et al.  (C.D. California 2016) – Lead counsel for furniture manufacturer Plastic Development Group and retailer Target accused of infringing four patents.  Successfully moved to sever and stay the case for Plastic Development Group’s customer Target.  Managed to secure a favorable settlement on behalf of Plastic Development Group shortly thereafter.

Ancora v. Apple (2014) – Assisted on the appeal on behalf of Ancora reversing district court’s claim construction of term “program,” and affirming district’s court’s finding of no indefiniteness. Successfully briefed opposition to Apple’s petition for certiorari to U.S. Supreme Court.

GeoTag, Inc. v. Domino’s Pizza Inc, Case No. 10-cv-o572 (E.D. Tex 2014) – Successfully defended Domino’s Pizza in a patent infringement action in East Texas.  Plaintiff brought suit against over 600 defendants for patent infringement.  After the other defendants settled, Domino’s was sole defendant left in case.  Court granted summary judgment of non-infringement in favor of Domino’s on five difference grounds.

DietGoal, Inc. v. Domino’s Pizza, Inc., Case No. 2:12-cv-430-RAJ (E.D. Virginia 2014) – Successfully defended Domino’s in patent infringement action.  Patent declared invalid as not directed to patentable subject matter.

State Bar of Michigan

Federal Circuit Bar Association

“Rising Star,” Michigan Super Lawyers, Intellectual Property, 2016-2018

    • Strategies for Managing a Global Patent Portfolio
      Thursday, October 11, 2018

      Managing global patent portfolios is no small feat. Especially since certain emerging markets are becoming increasingly important and will play a vital role in your company’s IP strategy. In-house counsel, in cooperation with outside counsel, need to work together to accomplish your company’s business strategy and IP goals. During this webcast,...

      Presenter, “Importance of Intellectual Property Law and How the America Invents Act (AIA) has Impacted the Industry,” University of Michigan – Dearborn, November 2014