Mark T. Goracke

Mark Goracke is a Boston intellectual property attorney who focuses his practice on all facets of IP litigation. Mr. Goracke represents clients in patent, copyright, trademark, trade dress 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, hospitality and hotels, unmanned aerial systems technology, sporting goods and apparel, and fast-moving consumer goods. He is well-versed in areas of intellectual property (IP) litigation, including pre-discovery identification and interviews of custodians and collection of documents, managing relationships and case development with e-discovery and managed document review vendors, drafting and filing successful petitions for inter partes review, fact and expert discovery, preparing for, defending, taking and otherwise participating in depositions, motion practice (in state court, federal district court and at the appellate level), oral argument, filings under the Hague Convention, summary judgment, trial, mediations and appeals. Mr. Goracke has also counseled clients in non-IP-related litigation matters, including claims of antitrust violations, breach of contract, breaches of fiduciary duties, and other various state law claims. Finally, Mr. Goracke also has experience preparing, filing and prosecuting trademark applications and counseling clients on obtaining and maintaining trademark registrations, as well as drafting and negotiating licenses and settlement agreements.

Mr. Goracke has also made public service and charitable work an important part of his practice. Beginning in 2022, Mr. Goracke began serving as the co-chair of the Boston office's Pro Bono and Charitable Services committee, helping to lead and coordinate the Boston office's pro bono and community service efforts. In addition, Mr. Goracke's 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 (ADA) and seeking equal treatment for disabled prisoners, as well as counseling clients on issues concerning immigration, asylum and assisting clients in successfully applying for/obtaining green cards and work permits, including representing clients at case management and status update hearings. 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 now-annual associate-driven Games for Toys Winter Charity Event, an event that raises funds for Boston-area nonprofit organizations. In addition, Mr. Goracke serves as a member of the Boston office's associate liaison committee and a founding member of the planning committee for the Boston office's annual Start Up the Summer associate marketing event, which gathers hundreds of young professionals spanning various industries from the greater Boston area. This event has been replicated at other Holland & Knight offices throughout the country.

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

• Representing a food and beverage manufacturer and national retail grocery chains against claims of patent infringement concerning the use of gravity feed soup can dispensers; the matter is pending
• Representing a national beverage manufacturer against claims of trademark and trade dress infringement, unfair competition under the Lanham Act, U.S.C. § 1051, et seq. and breach of contract; the matter is pending
• Funrise v. Hasbro (D.R.I).Representing Hasbro in royalty dispute with one of its licensees; the licensee manufactured and sold Hasbro's Tonka® line of products, and after an audit, Hasbro learned that the licensee had failed to pay a substantial amount of royalties over a number of years; the matter is pending
• Markham v. Hasbro Inc. (D.R.I.). Representing Hasbro in a dispute concerning The Game of Life®; the heirs of one of the purported inventors of the game sought to terminate the original transfer of copyrights associated with the creation of the game in 1959; after a five-day bench trial, the court entered judgment in favor of Hasbro and concluded that the plaintiff could not terminate the transfer, the U.S. Court of Appeals for the First Circuit affirmed the district court's judgment, and the matter is pending review upon the plaintiffs' petition for a writ of certiorari to the U.S. Supreme Court
• Arrows Up LLC v. Oren Technologies LLC. (PTAB). Represented petitioner Arrows Up, a bulk material logistics provider, in four related petitions for inter partesreview of patentee Oren Technologies' patents; the challenged patents concerned various methods of accomplishing the transfer of bulk materials; following institution, the PTAB issued a final written decision determining that substantially all of the challenged claims were invalid, including all of the challenged independent claims
• 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, as well as 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. Fla.).Defended Ericsson, a manufacturer and seller of telecommunications infrastructure equipment to all major cellular providers, 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 measurement and reporting of data usage; the parties reached a mutual settlement for all disputes prior to trial
• 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