Overview

Mark H. Whittenberger is a partner in Holland & Knight's Boston office and a member of the firm's Intellectual Property Group. He concentrates on all aspects of intellectual property (IP) with a primary focus on patent law.

Mr. Whittenberger counsels clients, both large and small, on protecting innovations and managing worldwide patent strategy in fields such as computer hardware, software, business methods/web-based applications, electrical circuitry, electronic design automation, artificial intelligence/machine learning, encryption, data storage devices, network processing, image processing, audio/video streaming systems, communications, optics, power distribution and generation, superconductivity, automated testing equipment, robotics, machine vision, social networking applications, personal media devices, music distribution systems, oil services, speech processing, and medical devices, as well as other electrical and mechanical technologies.

Mr. Whittenberger's practice focuses on the preparation and prosecution of patents. He is highly knowledgeable in patenting digital-related inventions and, in particular, in overcoming patentable subject matter rejections associated with 35 U.S.C. § 101. He is well-versed in the preparation of non-infringement, validity and clearance opinions, as well as various technology licensing agreements. Mr. Whittenberger has served as lead counsel in inter partes review (IPR) proceedings and regularly advises clients through various post-grant challenges. He has conducted due diligence investigations for a number of high-technology clients and is often called upon to assist in patent litigation.

While at Holland & Knight, Mr. Whittenberger has twice been selected by a publicly traded electronic circuit design company to act as in-house IP counsel. During this time, his responsibilities included reviewing all patent matters filed by the company's outside counsel, attending patent committee meetings, participating in patent harvesting meetings, as well as responding to specific IP-related inquiries from various members of the company. He regularly draws upon this experience to provide big-picture, business-oriented advice for his clients.

Prior to entering private practice, Mr. Whittenberger served as a part-time law clerk for the New Hampshire Superior Court System and worked as an engineer in the fields of semiconductor technology and environmental engineering.

Credentials

Education
  • University of New Hampshire School of Law, J.D.
  • University of New Hampshire, B.S., Civil Engineering
  • University of New Hampshire, B.S., Electrical Engineering
Bar Admissions/Licenses
  • Massachusetts
  • New York
Court Admissions
  • U.S. Patent and Trademark Office
Memberships
  • American Intellectual Property Law Association
  • Institute of Electrical and Electronics Engineers
  • Intellectual Property Owners Association-Patent Office Practice Committee
Honors & Awards
  • IDEA: The Journal of Law and Technology, Senior Editor: University of New Hampshire: Franklin Pierce School of Law
  • Teaching Assistant, Patent Practice and Procedure 1: University of New Hampshire: Franklin Pierce School of Law
  • Holland & Knight Pro Bono All-Star 2017

Speaking Engagements

News