Mark Dunn Giarratana | McCarter & English, LLP

Mark's foundation in mechanical engineering serves his national patent litigation practice.

Mark Giarratana has represented businesses in patent and trademark litigation in federal courts throughout the country, for more than 25 years. He is a patent attorney litigator who has handled over 20 patent infringement suits as lead counsel through Markman and summary judgment. He has tried patent and trademark bench and jury trials in various federal courts, and argued appeals before the Courts of Appeals for the Second and Federal Circuits. Mark also has successfully litigated inter partes and ex parte reexamination proceedings concurrently with federal patent litigation. He also has litigated numerous trademark opposition and cancellation proceedings. Mark’s technical background is in mechanical engineering, and prior to law school, he worked as an x-ray engineer for an x-ray tube manufacturer. Mark has litigated numerous intellectual property cases involving a broad array of technologies, including optical fibers, lasers, computer-controlled cutting and measuring equipment, medical devices, telecommunications, and nutritional supplements.

Mark has developed and managed extensive patent and trademark portfolios involving hundreds of patents and trademarks throughout the world. In addition, he as represented clients in a wide variety of international, intellectual property licensing transactions that have generated cumulatively over $50 million in licensing fees.

Mark is registered to practice before the U.S. Patent & Trademark Office. He has authored papers and conducted seminars on various intellectual property topics, and was formerly chair of the Intellectual Property Law Section of the Connecticut Bar Association.

Represented the managing directors of PFM’s financial advisory business in connection with the closing of U.S. Bank’s acquisition of PFM’s asset management business and the spin-off of PFM’s financial advisory business to an entity owned by the managing directors of the same business. PFM is now a Philadelphia-based firm that focuses on financial advisory and consulting services within the public and non-profit sector.

Recent notable patent cases include conducting a Markman hearing and obtaining a non-infringement decision on summary judgment in a patent infringement case involving computer-controlled instruments for measuring the pitch of propeller blades. Mr. Giarratana successfully defended the decision before the Court of Appeals for the Federal Circuit. He has represented many other businesses in patent infringement disputes in various federal courts.

Notable trademark cases include successfully defending a registered trademark owner in a dispute with a foreign manufacturer over ownership of the company's house marks. Mr. Giarratana obtained a summary judgment decision affirming his client's ownership of the marks and successfully defended the decision before the Court of Appeals for the Second Circuit. He has represented numerous other businesses in trademark and unfair competition disputes in federal court, and in trademark disputes before the Trademark Trial and Appeal Board of the U.S. Patent & Trademark Office.

Additionally, Mr. Giarratana recently represented a medical device manufacturer in connection with an equity purchase and related intellectual property license agreement with a major pharmaceutical company. The pharmaceutical company purchased an equity interest in his client's business and Mr. Giarratana negotiated further development and license agreements whereby the parties jointly developed and manufactured the patented and patent-pending technologies.

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