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
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.
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
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
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
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
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
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
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
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
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.