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Mark Dunn Giarratana
Alternate image for Mark Dunn Giarratana

Mark Dunn Giarratana

Partner

860.275.6719
Hartford
mgiarratana@mccarter.com

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.

Representative Matters

PFM—Transaction

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. 

Various clients—Recent patent cases

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.

Numerous clients—Notable trademark cases

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.

Medical device manufacturer—Equity purchase and intellectual property license agreement

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.

Highlights

Recognitions

Recognition image 10959
Connecticut Super Lawyer, 2006–2019
Recognition image 10997
World Trademark Review 1000, Prosecution and Strategy, Enforcement and Litigation, New York, 2022
"Mark D. Giarratana focuses on patent and trademark litigation and is endorsed as a “responsive and engaging professional who is truly curious about clients’ businesses and products”.” –WTR 1000
Ranking Disclaimers: No aspect of this advertisement has been approved by the Supreme Court of New Jersey. For SuperLawyers methodology, see https://www.superlawyers.com/about/selection_process.html. For WTR 1000 methodology, see https://www.worldtrademarkreview.com/directories/wtr1000/info/methodology.

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Services

Intellectual Property
IP Litigation
Patents
Trademarks & Copyrights
Healthcare
Manufacturing
Cannabis

Education

University of Connecticut School of Law JD, with honors, 1987
Catholic University of America BS Mechanical Engineering, 1982

Bar Admissions

Connecticut
U.S. Patent & Trademark Office
Insights Speaking Hands
Events|Webinar
Trade Secrets on Trial: Navigating the Intricacies of Trade Secret Law in Litigation
McCarter & English CLE Virtual Series
12.1.2021
intellectual property
News|Recognition
Eleven McCarter Trademark Lawyers Named to the 2021 Edition of World Trademark Review’s WTR 1000: The World’s Leading Trademark Professionals
World Trademark Review
2.17.2021
Insights Speaking Microphone 2
Events|Webinar
Key Provisions in Technology-Related License Agreements
McCarter & English CLE Virtual Series
12.1.2020
Insights Speaking Hands
Events|Speaking Engagement
EP/US Comparative IP Law Seminar 2015 – Comparative Patent Practice Conference in Tokyo, Japan
CPPC Reception
11.17.2015
Insights Speaking Mic and Bottles
Events|Speaking Engagement
Recent Developments In United States Patent Infringement and Validity Case Law, PTO Guidance, and Expedited Prosecution, and Practice Tips
Osaka, Japan
11.11.2015
Insights Speaking Seminar
Events|Speaking Engagement
Recent USPTO Developments and Practice Tips
Osaka, Japan
6.3.2015
Insights Speaking Hands
Events|Speaking Engagement
New Developments in US Patent Litigation and Prosecution
Osaka, Japan
11.7.2014
Insights Speaking Microphone Women
Events|Speaking Engagement
How to Become an IP World Champion
Comparative Patent Practice Conference in Tokyo, Japan
11.4.2014
Insights News Courthouse Columns
Publications|Article
Losing The Home-Team Advantage – The Supreme Court’s Narrowing of the Doctrine of General Personal Jurisdiction and its Impact on Patent Declaratory Judgment Actions
Intellectual Property & Technology Law Journal
9.19.2014
Insights Speaking Panel Mics
Events|Speaking Engagement
Metal Additive Manufacturing Workshop
University of Connecticut
4.17.2014
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