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 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

Organizations and Affiliations

State Bar of Michigan

Federal Circuit Bar Association

Recognitions

“Rising Star,” Michigan Super Lawyers, Intellectual Property, 2016-2019

Press Releases

    Webinars

      Publications

      Co-Author, “ChargePoint Seeks Supreme Court Review of Patent Ineligibility Ruling in ChargePoint, Inc. v. SemaConnect, Inc. Litigation,” Blog Post, October 2019

      Presentations

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

      Education

      J.D., University of Detroit Mercy

      B.S., Electrical Engineering, Wayne State University

      Practice Area and Industries