J. Mark Holland & Associates - Intellectual Property Attorneys

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Our Firm:

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J. Mark Holland and Associates is a full service intellectual property law firm located in Newport Beach, California. We offer services in obtaining and enforcing intellectual property such as patents, trademarks, copyrights, and trade secrets. We can assist with all areas of intellectual property including licensing, agreements, prosecution (obtaining patents or other registrations of your intellectual property) and litigation (domestically and abroad).

Our firm has more than 25 years' experience providing quality legal counsel on intellectual property issues. We advise and represent clients of all sizes, from large multi-national corporations to small businesses and individuals.

We strive to provide top quality services to our clients, at affordable prices. Our firm focuses on maintaining the highest standards, and is committed to delivering practical, cost-effective advice to our clients. Our patent attorneys and agents are registered to practice before the United States Patent and Trademark Office, and all our attorneys are admitted to practice in both the Federal and State Courts of California.



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Our Professionals:

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J. Mark Holland

3 San Joaquin Plaza, Suite 210
Newport Beach, CA 92660
P: 949-718-6750
F: 949-718-6756
E: mholland@jmhlaw.com

Legal Areas of Emphasis

Intellectual Property Litigation, including Appeals
Patent, Trademark and Copyright Registration, Prosecution, and Protection
Administrative Proceedings, including Trademark Oppositions and Patent Appeals and Interferences
Alternative Dispute Resolution
Client Counseling and Intellectual Property Strategy
Negotiation and Licensing
Trade Secrets
Intellectual Property related Due Diligence
Infringement and Validity Investigations
Expert Witness Regarding Intellectual Property Matters

Professional Profile

J. Mark Holland has been in private practice of intellectual property law for nearly 25 years. In that time, Mr. Holland has represented clients in a wide variety and large number of litigation and prosecution matters, achieving a number of very creative results for his clients.

Early in his career, Mr. Holland clerked and was an associate (respectively) for the largest IP law firm in Oklahoma City, and one of the two largest in Dallas. During approximately two years with each of those firms, Mr. Holland focused on IP litigation, including sitting second chair in numerous depositions and in two separate multi-week trials.

During the second of those cases, co-counsel asked Mr. Holland to join his practice in Newport Beach, California. Mr Holland did so in 1988, continuing his litigation and related dispute resolution practice, and also receiving extensive daily mentoring regarding IP prosecution, client counseling, and related matters. Seven years later, Mr. Holland started his own firm, where he has continued assisting clients with a wide variety of IP litigation, prosecution, and related matters. Mr. Holland also has served as an expert witness in IP litigation, and has testified as a fact witness in a client's successful assertion of its patent.

Prior to law school, Mr. Holland worked as a Research Engineer for Halliburton Services in Duncan, Oklahoma. In addition to being certified as an Engineer-in-Training, Mr. Holland was responsible for formulating and executing numerous R&D projects relating to safety and improved products and services for Halliburton. During college, Mr. Holland also worked for TXO Production Corporation in Wichita, Kansas, as a Petroleum Engineering Intern, assisting with various analysis, planning, drilling, and oil and gas production duties.

Education

University of Oklahoma College of Law (J.D., 1986)
Dean's Honor Roll, College of Law
Phi Delta Phi Legal Honor Fraternity

University of Oklahoma College of Engineering (B.S.M.E., 1982)
Dean's Honor Roll, College of Engineering
Tau Beta Pi National Engineering Society
Pi Tau Sigma Mechanical Engineering Honor Fraternity
Phi Kappa Phi Honor Society

Representative Matters

DoorKing, Inc. v. Sentex Systems, Inc. (nonprecedential), Nos. 00-1439, -1490, (Fed. Cir. 2001). The U.S. Central District of California had granted summary judgment of non-infringement of client DoorKing's patent on a secure access communication system (DoorKing, Inc. v. Sentex Sys., Inc., No. CV-98-372 (C.D. Cal. Jan. 20, 2000 and May 12, 2000; in part by Hon. Richard Paez, now sitting on the 9th Circuit) (DoorKing II and DoorKing III)), but had denied Sentex's motion for attorneys' fees. DoorKing, Inc. v. Sentex Sys., Inc., No. CV-98-372 (C.D. Cal. June 28, 2000) (DoorKing IV). After comprehensive briefing and oral argument, the Federal Circuit ruled completely in client's favor (reversed the grant of summary judgment and remanded for district court to determine whether the accused devices infringed client's patent, and affirmed the denial of attorney fees to Sentex).

Cybor Corp. v. FAS Technologies, Inc., 138 F.3d 1448, 46 U.S.P.Q. 1169 (Fed. Cir. 1998). Cybor sought a declaratory judgment that its pump product did not infringe client's patent. Mr. Holland had prosecuted and issued the patent-in-suit (and eventually issued 5 further related continuation patents on the client's invention), and testified at trial. The Federal Circuit en banc affirmed the jury's verdict that Cybor's device literally infringed.

E-Z Lettering Service v. Nationwide Pennant and Flag Mfg., Inc., et al., No. CV 08-00368 (C.D. Cal. May 27, 2009). Client sued defendants for Lanham Act and related violations. After taking expedited discovery regarding defendant's motion to dismiss, Mr. Holland obtained an attorney fee award against defendant's counsel, in the amount of $120,877.86. The case settled shortly thereafter.

Car Sound Exhaust v. Minassian, et al., No. 2:03-CV-06218 (C.D. Cal. October 9 and November 3, 2003). Mr. Holland obtained a temporary restraining order and preliminary injunction against defendants who had copied his client's catalytic converters and packaging. The case settled shortly thereafter.

Ropak Corp., et al. v. IPL, Inc., No. 04-CV-5091 (N.D. Ill. 2004). Mr. Holland's client Ropak sued IPL for patent infringement. Early in the lawsuit, the parties negotiated a settlement favorable to his client.

Ropak Corp. v. Lowe's Companies, et al., No. 02-1753 (C.D. Cal. 2002). Mr. Holland's client Ropak sued Lowe's for patent infringement. Early in the lawsuit, the parties negotiated a settlement favorable to his client.

Silicon Knights, Inc. V. Crystal Dynamics, Inc., et al., No. 97-20586 (N.D. Cal. 1997). Mr. Holland's represented Silicon Knights, a small video game developer, in one of the industry's first challenges by a game developer against a game distributor. After extensive discovery regarding its allegations (of breach of contract; fraud; negligent misrepresentation; intentional interference with contract; intentional and/or negligent interference with prospective economic advantage, statutory and common law unfair competition, defamation and commercial disparagement, false designation of origin under 15 U.S.C. Sec. 1125, and others), the parties settled on terms very favorable to Mr. Holland's client.

Cobra Golf Inc. v. Cliff Cook Golf, Inc., et al., No. 95-1161 (S.D. Cal. 1995). Mr. Holland defended two companies accused of importing, selling, and/or distributing counterfeit and infringing knock-off copies of Cobra Golf's King Cobra(R) and Lady Cobra(R) golf clubs. Just weeks before Mr. Holland was retained by defendants, Cobra had obtained temporary restraining orders in four other lawsuits (one of which is the next entry below). Although all four of those earlier TROs were issued by the same judge that was presiding over this case, Mr. Holland successfully defended his clients against Cobra's similar efforts at obtaining a TRO and preliminary injunction, and eventually even persuaded the Court to allow his client's RICO charge against Cobra AND its attorneys. The case settled shortly thereafter.

Cobra Golf Inc. v. J.K. Golf Inc., No. 95-1886 (S.D. Cal. 1995). Mr. Holland defended J.K. Golf against claims regarding allegedly counterfeit and infringing copies of Cobra Golf's King Cobra(R) and Lady Cobra(R) golf clubs. Mr. Holland was retained AFTER a TRO had been issued against J.K. Golf, and Mr. Holland assisted his client in reaching settlement.

Xytec Plastics, Inc. v. Ropak Corp., et al., No. 90-CV-72072 (E.D. Mich. 1990). Xytec sued Mr. Holland's client Ropak for patent infringement regarding a collapsible plastic pallet. Mr. Holland second-chaired all aspects of the case, and also argued a number of the critical motions in the case. Early in the case, after a multi-day hearing (with Mr. Holland as second chair), the Chief Judge for the Eastern District issued a preliminary injunction against Mr. Holland's client Ropak. However, Mr. Holland hurriedly filed a motion to stay the injunction, flew to Detroit and sat outside the court's chambers until the motion could be heard, and at oral argument, was able to persuade the court to take the very unusual step of staying that injunction pending appeal (conditioned on Ropak posting bond). Among other things, this provided time for Mr. Holland's client Ropak to design a work-around (that eventually was held to not violate the court's preliminary injunction) without suffering any interruption in business. In addition, early in the case, Mr. Holland filed a protest in Xytec's pending reissue application, which eventually led to the patent being withdrawn by the Patent Office as not being patentable. Prior to that Patent Office decision, however, and on the eve of trial, the parties settled.

Precision Dynamics v. Glitsch, et al. (N.D. Texas 1988). Mr. Holland's client Precision sued competitor regarding hospital ID band products, alleging trade secret misappropriation, trademark and trade dress infringement, contract breach, and antitrust violations. Mr. Holland second-chaired this lawsuit from its filing through trial. Case was tried for one month and then settled.

AZ Designz Pty, Ltd. v. Lough, No. 91186314 (U.S. Patent and Trademark Office's Trademark Trial and Appeal Board Opposition 2008). Mr. Holland successfully negotiated Opposer's withdrawal of opposition against his client Ms. Lough's logo/design mark.

Qwest Communications v. The Quest Group, No. 91183275 (U.S. Patent and Trademark Office's Trademark Trial and Appeal Board 2007). Mr. Holland successfully negotiated the withdrawal of Qwest's opposition to his client's application to register WIREQUEST.

Apple Inc. v. Haas (No. 91170004), and Apple Inc. v. Axiotron, Inc. (No. 91174587) (U.S. Patent and Trademark Office's Trademark Trial and Appeal Board 2006). Apple filed an opposition to his client's trademark application. By suggesting and then negotiating a very creative resolution, Mr. Holland persuaded Apple to allow Mr. Holland's client to register its mark TABLETMAC.

Ex parte Luburic et al., No. 1997002712 (U.S. Patent and Trademark Office's Board of Patent Appeals and Interferences 1998). The Patent Examiner had rejected Mr. Holland's client's patent claims as being obvious. Based on the appeal briefs filed by Mr. Holland, the Board reversed all of the rejections.

Admissions/Qualifications

State Bar of California
State Bar of Texas
Oklahoma Bar Association
U.S. Supreme Court
U.S. Court of Appeals (for the Federal Circuit, Fifth Circuit, and Ninth Circuit)
U.S. Claims Court
U.S. District Courts in California, Michigan, Texas
Registered to practice before the U.S. Patent and Trademark Office

Professional Memberships & Affiliations

Orange County Patent Law Association (President 1999, Director 1993 - 2000, Chairman Trade Secrets Committee 1990-1993)
American Bar Association
Orange County Bar Association
Dallas Bar Association (1986-88)

Other Awards & Honors

Rhodes Scholar Nominee
Letzieser Award (Top Ten University Graduates)
National Merit Scholar
University Scholar
Sigma Phi Epsilon Social Fraternity (President, Vice President; Fraternity's Regional Outstanding Member)
Intramural Basketball Champions (including co-coaching one championship team)

Other Activities

Homeowners' association Board of Directors (1997 - present)
Coaching/refereeing kids' soccer/basketball
Computer website and database support for homeowners' association and fraternity alumni groups



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Alison L. Vass

3 San Joaquin Plaza, Suite 210
Newport Beach, CA 92660
P: 949-718-6750
F: 949-718-6756
E: avass@jmhlaw.com

Education

University of California, Irvine (B.S. Biomedical Engineering, 2006; M.S. 2007)

Admissions/Qualifications

Registered to practice before the U.S. Patent and Trademark Office

Professional Memberships & Affiliations

Orange County Patent Law Association