Mark McDougall

Practice Areas

Intellectual Property

Intellectual Property Litigation

Patent Prosecution

Patent Litigation

Technology Transfer

Information Technology Litigation

IP and Technology Transactions

Trademark Law

Copyright Law

Information Technology Law

Career

Mark McDougall uses his consulting and engineering background to provide pragmatic advice on IP matters, focusing primarily on complex litigation matters, patent counseling and strategy concerning the procurement of patents.

Co-Chair of the IP practice, Mark secures valuable rights protecting clients’ investment and competitive advantage. He helps clients monetize and enforce IP rights and defends clients against risks related to competitors' 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 clients' 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.

Using his knowledge and experience, Mark also helps athletes establish, monetize and protect their Name, Image and Likeness (NIL).

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.

Expert in these Jurisdictions

Ohio

USPTO

Experience

Serving as global Intellectual Property Lead Counsel for an Asia-based manufacturer, representing the client in district court litigation matters and prosecuting patent applications. The patent work for this client includes patent infringement matters filed in district courts in two states and the Federal Circuit as well as in six inter partes reviews before the Patent Trial and Appeal Board. These actions are being heard in a variety of forums in four countries.

Education