Overview

Mark Goracke is a Boston intellectual property attorney who focuses his practice on all facets of IP litigation. He represents clients in patent, copyright, trademark and trade secret disputes as well as various related contractual matters and state law claims. Mr. Goracke has counseled clients in a variety of industries, including telecommunications, telephony, application performance management software, gaming and children's toys. He is well-versed in areas of intellectual property litigation, including pre-discovery identification and interviews of custodians, fact and expert discovery, motion practice, filings under the Hague Convention, summary judgment, trial, mediations and appeals.

Mr. Goracke has also made public service and charitable work an important part of his practice. His pro bono work includes representing an inmate housed in the Health Services Unit of a Massachusetts prison making a claim under the Americans with Disabilities Act and seeking equal treatment for disabled prisoners. He served as the co-captain of Holland & Knight's Greater Boston Legal Services Associate Fundraiser Team, as well as conceived and led the Boston office's first associate-driven Games for Toys Winter Charity Event.

In addition, Mr. Goracke serves as a member of the Boston office's associate liaison committee and the planning committee for the Boston office's annual Start Up the Summer associate marketing event.

While attending law school, Mr. Goracke was an article editor for the Journal of Science and Technology Law, a judicial intern for Judge Alexander H. Sands III at the Massachusetts Land Court and an intern for the Volunteer Lawyers for the Arts. He was designated an Edward F. Hennessey Distinguished Scholar during his third year of law school and graduated with honors in the Boston University School of Law's Intellectual Property Law Concentration.

Representative Matters

Shapiro v. Hasbro, Inc. (C.D. Cal.). Represented Hasbro in an inventor dispute regarding the design of certain dolls in Hasbro's My Little Pony line. The case included claims for trade secret misappropriation under both the California Uniform Trade Secret Act and the Defend Trade Secrets Act of 2016, breach of contract and breach of the duty of good faith and fair dealing. After securing summary judgment on the primary trade secrets claims, the case was settled prior to trial.

Cellular Communications Equipment LLC v. AT&T Inc., et. al. (E.D. Tex.). Defended Ericsson, a manufacturer and seller of telecommunications infrastructure equipment to all major cellular providers, in a telecommunications patent dispute involving Ericsson's 4G-Long-Term Evolution Advanced (LTE-A) radio base stations. The technology in dispute included LTE-A's Carrier Aggregation and Power Headroom Reporting features, among others. The parties reached a mutual settlement after Ericsson filed offensive inter partes review petitions and obtained a favorable claim construction ruling.

Avaya Inc. v. SNMP Research, Inc. (D. Del.; Bankr. D. Del.). Represented Avaya, a leading provider of business communication solutions, in copyright infringement, breach of contract and trade secret misappropriation suits against SNMP Research Inc. and SNMP Research International Inc. The case concerned whether Avaya Inc. infringed SNMP Research's copyrights and whether the success of Avaya's products and services was attributable to the alleged infringement. The parties reached a mutual settlement for all disputes prior to trial.

Wi-LAN Inc. v. Ericsson Inc. (S.D.F.L.). Defended Ericsson in a telecommunications patent dispute involving 4G Long-Term Evolution (LTE) radio base stations. The case implicated LTE wireless standards relating to connection maintenance between base station and in-transit user equipment as it was "handed off" from one base station to another. The case also involved the user equipment's measurement and reporting of data usage. Holland & Knight won summary judgment of non-infringement and invalidity on behalf of Ericsson.

CA, Inc. v. AppDynamics Inc. (E.D.N.Y.; N.D. Cal.). Represented CA Inc. in patent infringement and trade secret misappropriation suit against AppDynamics' application performance monitoring software. The case involved dynamic instrumentation and monitoring of compiled software byte code. Also represented CA in a related case involving a number of state law tort claims in the U.S. District Court for the Northern District of California in which the parties reached a mutual settlement prior to dispositive motions

Roth v. Hasbro, Inc. (C.D. Cal.). Obtained favorable summary judgment for the defendant, Hasbro, on all counts in an inventor dispute over a propulsion system used for Nerf blasters. The case included claims for breach of contract, trade secret misappropriation and common law torts.

Airvana Network Solutions, Inc. v. Ericsson AB and Ericsson (N.Y. Sup. Ct.). Represented Ericsson against a supplier in a breach of contract, theft of trade secret and unfair competition action brought in the Commercial Division of the New York State Supreme Court. The dispute related to integrated circuit design and whether such design was "based on" the plaintiff's design from 2000. The plaintiff brought two separate preliminary injunction motions to stop Ericsson from selling key hardware and software that is instrumental in sending data over code division multiple access (CDMA) wireless networks. The case settled favorably for Ericsson during a second hearing on preliminary injunction when it became clear that Airvana's motion was unlikely to succeed.

Credentials

Education
  • Boston University School of Law, J.D., cum laude
  • Canisius College, B.A., Political Science, summa cum laude
Bar Admissions/Licenses
  • Massachusetts
Memberships
  • Boston Bar Association
  • Federal Bar Association

Publications