Mark A. Jotanovic
Patent Litigation & Patent Prosecution
Michigan OfficeP (248) 226-2722mjotanovic@brookskushman.com
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.
Representative Matters
Maxchief v. Plastic Development Group (Settlement – E.D. Michigan): Lead counsel for Defendant, Plastic Development Group (PDG) in a patent infringement matter regarding blow-molded tables. Successfully transferred the case to E.D. Michigan shortly after the Supreme Courts decision in TC Heartland. Also served as counsel to PDG during inter partes review proceedings to challenge the asserted patents validity. The Patent Trial and Appeal Board instituted on all grounds for all challenged claims. The case settled favorably shortly after transferring to PDG’s home forum and institution of the inter partes review. Case No. 2:17-cv-12662
WP Banquet, LLC et al. v. Target Corporation et al. (Settlement – C.D. California): 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. Case No. 2:16-cv-02082
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
GeoTag, Inc. v. Domino’s Pizza Inc. (Summary Judgment – E.D. Texas): Successfully defended Domino’s Pizza in a patent infringement action in East Texas which also involved over 600 defendants. 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 different grounds. Case No. 10-cv-0572
ElectroJet Technologies, Inc. v. STIHL Incorporated (E.D. Virginia): Representing Electrojet in patent lawsuit relating to engine timing control. Case No. 2:17-cv-00224
STIHL Incorporated et al v. ElectroJet Technologies, Inc. (PTAB): Defending Electrojet relating to inter partes review petitions filed by STIHL. Case No. IPR2018-00018, IPR2018-00020
DietGoal, Inc. v. Domino’s Pizza, Inc. (E.D. Virginia): Successfully defended Domino’s in patent infringement action. Patent declared invalid as not directed to patentable subject matter. Case No. 2:12-cv-430
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
Press Releases
Brooks Kushman Attorneys Helping Students Learn to Draft Patent Applications at the Annual International Patent Drafting Competition
Six Brooks Kushman Lawyers Named To 2019 Super Lawyers List; Seven Attorneys Honored as Rising Stars
Twelve Brooks Kushman Lawyers Named To 2018 Super Lawyers List; Eight Attorneys Honored as Rising Stars
Twelve Brooks Kushman Lawyers Named To 2017 Super Lawyers List; Ten Attorneys Honored As Rising Stars
Eight Brooks Kushman Lawyers Named To 2016 Super Lawyers List; Eight Attorneys Honored As Rising Stars
Brooks Kushman Successfully Defends Patent Infringement Case for Domino's Pizza in Landmark Patent Litigation Case
Publications
Co-Author, “ChargePoint Seeks Supreme Court Review of Patent Ineligibility Ruling in ChargePoint, Inc. v. SemaConnect, Inc. Litigation,” Blog Post, October 2019