Mark W. McDougall

Attorney Profile

Top Rated Intellectual Property Attorney in Cleveland, OH

Calfee, Halter & Griswold LLP
1405 East Sixth Street
Cleveland, OH 44114
Phone: 877-698-2527
Fax: 216-241-0816
Selected to Rising Stars: 2014 - 2016
Licensed Since: 2006
Practice Areas: Intellectual Property (40%), Intellectual Property Litigation (30%), Technology Transactions (30%)
Attorney Profile

Mark McDougall uses his consulting and engineering background to provide businesses pragmatic advice on intellectual property matters. Mark’s focus is primarily on complex litigation matters, patent counseling and strategy concerning the procurement of patents.

Co-Chair of the Intellectual Property practice group, Mark knows how to secure valuable rights that protect his clients’ investment and competitive advantage in the market. He also helps his clients monetize and enforce their intellectual property rights, and regularly defends clients against the risks associated with their competitor’s intellectual property. 

A substantial portion of Mark’s practice is devoted to litigation matters on behalf of both plaintiffs and defendants. He has experience in both state and federal court, including all facets of district court litigation and appeals to the Federal Circuit. Mark has been lead counsel in multiple patent cases securing favorable outcomes for his clients. He also regularly handles inter partes review proceedings before the Patent Trial and Appeal Board.

Mark’s experience helps him find creative business solutions to his client’s intellectual property related issues. He leans on his litigation experience when asked to provide counsel on patent clearance and due diligence matters, including patent portfolio analyses, validity and infringement opinions. Mark also utilizes his engineering experience to help businesses develop new products, strengthen their intellectual property positions for product lines and build the overall value of their portfolio.

Mark also enjoys providing counsel and strategy to clients on the procurement of intellectual property rights. He prepares and prosecutes patent applications on a diverse range of innovations in areas such as industrial and consumer products, electrical devices, building materials, medical devices and equipment, automotive and computer-related technologies. He works with clients to manage their worldwide patent portfolios and has experience with complex prosecution matters such as reexamination proceedings.

Mark received his law degree, cum laude, from Case Western Reserve University with honors in his concentration of law and technology.

Mark’s professional background working as a mechanical engineer for General Motors Corporation and as a business consultant at Accenture Ltd. helps shape his understanding of his clients’ business needs and ultimately contributes to finding unique solutions to support their goals. Mark joined Calfee in 2006, was elected Partner in 2015, and began serving as Vice Chair of the Intellectual Property practice group in 2020 and Co-Chair in 2021.

Practice Areas
  • 40%Intellectual Property
  • 30%Intellectual Property Litigation
  • 30%Technology Transactions
Focus Areas

Copyrights, Patents, Trademarks, Intellectual Property Law

Selections

3 Years Rising Stars
  • Rising Stars: 2014 - 2016

About Mark W. McDougall

Admitted: 2006, Ohio

Professional Webpage: https://www.calfee.com/professionals-mark-w-mcdougall

Bar/Professional Activity

  • Ohio  
  • U.S. Patent and Trademark Office
  • U.S. District Court for the Northern District of Ohio
  • U.S. Court of Appeals for the Federal Circuit

Newsletters

  • Although the Patent Office remains open for the electronic and physical filing of patent documents and the payment of patent-related fees during the current COVID-19 national emergency, the U.S. Patent and Trademark Office (USPTO) is using authority granted to it under the Coronavirus Aid, Relief, and Economic Security Act (CARES Act) to offer a waiver of certain filing and fee payment deadlines associated with obtaining and maintaining patent applications and issued patents., CARES Act May Offer Short-term Relief for Patent Owners on Certain Filing and Fee Deadlines in April 2020, Intellectual Property
  • On Monday, August 12, 2019, the Federal Circuit issued a precedential opinion on means-plus-function claims. The opinion serves as an important reminder to practitioners that generic claim terms lacking sufficiently definite structure may be subject to §112, ¶6 or §112(f).A copy of the Federal Circuit’s opinion can be found here., Calfee IP Group Wins Appeal – Federal Circuit Vacates PTAB Decision in Precedential Opinion, Intellectual Property
  • On June 14, 2019, the Federal Circuit issued a precedential opinion holding that state sovereign immunity does not apply to Inter Partes Reviews (IPR). Regents of the Univ. of Minn. v. LSI Corp., 2019 U.S. App. LEXIS 17887 (Fed. Cir. 2019). The Federal Circuit’s decision focused on the differences between IPRs and lawsuits, likening the Patent Office proceedings to federal agency enforcement actions. Thus, state entities, including public colleges and universities, cannot rely on sovereign immunity to shield their patents from IPRs., Federal Circuit Opinion Holds That State Sovereign Immunity Doesn't Apply In IPRs, Intellectual Property

Educational Background

  • J.D., cum laude, Case Western Reserve University School of Law, 2006
  • B.S. in Mechanical Engineering, cum laude, The Ohio State University, 1999

Honors/Awards

  • , Ohio Rising Stars, Ohio Super Lawyers, 2016

Industry Groups

  • Construction
  • Information Technology
  • Life Sciences
  • Manufacturing And Industrial
  • Medical Devices
  • Pharmaceuticals
  • Private and Family-Owned Businesses
  • Public Companies
  • Retail And Consumer Products
  • Software
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Office Location for Mark W. McDougall

1405 East Sixth Street
Cleveland, OH 44114

Phone: 877-698-2527

Fax: 216-241-0816

Last Updated: 6/21/2021

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