Biography Photo of Mark Jotanovic

Mark Jotanovic

Member

Mark Jotanovic, a registered patent attorney, practices out of the firm’s Troy office. He focuses his practice on litigation and patent prosecution involving electrical, electro-mechanical, and software matters. His clients, which include companies of all sizes in a wide variety of industries such as automotive, computer software, consumer products, and retail, rely on Mark for guidance in all aspects of intellectual property litigation.

Mark has extensive experience handling appeals, having entered appearances as trial counsel before multiple Federal District courts throughout the country, including California, Michigan, Delaware, and Texas. His experience in patent prosecution and litigation positions Mark to successfully represent clients as lead counsel in inter partes review and post-grant proceedings. Mark has argued at the Federal Circuit. In addition to his litigation experience, Mark advises clients on the proper use of Open Source Software, helping them better understand complex software licenses and copyright matters.

Before beginning his legal career, Mark was a research and design engineer for Toyota Engineering & Manufacturing North America and AW Technical Center, developing and designing multimedia, navigation, and telematics systems for vehicles. While at Toyota, Mark assisted the legal team in patent infringement investigations. He is a named inventor on several patents related to his work in these roles.

Education & Credentials

Education

University of Detroit Mercy School of Law

J.D.

Wayne State University

B.S., Electrical Engineering
  • Presidential Scholar Recipient

Bar Admission

  • Michigan

Acknowledgements

  • Michigan Super Lawyers
    • “Rising Star,” Intellectual Property, 2016-2021

Prominent Assignments

  • 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
  • Hoya Corporation v. Inland Diamond Products (PTAB): Lead Counsel in defending Inland Diamond Products relating to inter partes review petitions filed by Hoya. Case No. IPR2018-00178, IPR2018-00596
  • 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

Professional Involvement

  • State Bar of Michigan
  • Federal Circuit Bar Association

Publications/Presentations

  • Co-Author, “ChargePoint Seeks Supreme Court Review of Patent Ineligibility Ruling in ChargePoint, Inc. v. SemaConnect, Inc. Litigation,” Blog Post, October 2019
  • Presenter, “Importance of Intellectual Property Law and How the America Invents Act (AIA) has Impacted the Industry,” University of Michigan – Dearborn, November 2014
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