Matuschak, Mark G.

Mark G. Matuschak

Mark Matuschak is a partner in the firm's Litigation/Controversy Department, and a member of the Intellectual Property Litigation and Appellate and Supreme Court Litigation Practice Groups. He joined the firm in 1985.

Practice

Mr. Matuschak is an experienced trial lawyer who focuses on patent, trademark and trade dress litigation. He has often been brought in shortly before trial as lead counsel to craft winning strategies in difficult-to-win cases and jurisdictions and on appeals. Mr. Matuschak obtained the first-ever jury verdict of patent invalidity in the Eastern District of Texas.

Professional Activities

Mr. Matuschak is a master member in the Honorable William C. Conner Inn of Court for 2015 - 2017.

Mr. Matuschak is a member of the Boston Bar Association, the American Intellectual Property Law Association, the Dartmouth Lawyers Association and the New York Intellectual Property Law Association.

Experience

    • Successfully invalidated all 371 claims of 10 patents asserted against a major consumer products company in one of the largest IPR proceedings ever brought, thereafter affirmed by the Federal Circuit on all issues. Prior to obtaining a stay of the underlying district court action, also obtained summary judgment of noninfringement of all of the client's commercial products.
    • Successfully obtained reversal on every issue in a Second Circuit trademark litigation after being retained to handle an appeal of adverse summary judgments on descriptiveness, secondary meaning, infringement and validity, including an adverse award of more than $1 million in attorneys' fees, for a NYC-based digital advertising startup. 
    • Successfully resolved a major patent infringement case for a semiconductor company after prevailing on all key arguments in claim construction in the Eastern District of Texas
    • Retained one month before trial, obtained judgment of non-infringement in a four-year-old patent case following a month-long jury trial in the Northern District of California for a leading smartphone manufacturer.
    • Obtained the first-ever jury verdict of patent invalidity (and noninfringement) in the Eastern District of Texas.
    • Obtained a jury verdict of trade dress validity and infringement for a Japanese manufacturer involving the design of an engine against a local company in the Northern District of Mississippi, having been retained the month before trial.
    • Obtained a jury verdict of patent infringement under the doctrine of equivalents for a major medical device company when literal infringement had been precluded by claim construction.
    • Obtained a jury/bench verdict in a trademark case for a major paper manufacturer involving the mottled design of notebook covers in a small upstate New York town where the defendant was headquartered.
    • Prevailed in a bench trial involving competing claims by two significant banks to the same trademark, even where the opposing bank had begun use of the trademark first.
    • Succeeded in obtaining a complete appellate reversal of a bench trial verdict against a major financial services client pursuing a trademark infringement case, despite having been retained less than a month before the appellate briefs were due.
    • Obtained dismissal, and affirmance of that dismissal on appeal, of all copyright claims against a large auto company involving its use of the Linux operating system.
    • Successfully defended a major financial services company facing the threat of a preliminary injunction for trademark infringement in the midst of a major nationwide advertising campaign.

Recognition

  • Mr. Matuschak was a featured member of the WilmerHale IP litigation team when WilmerHale was chosen as IP Litigation Department of the Year by the American Lawyer
  • Named a “New England Super Lawyer” by Boston Magazine every year since 2004 
  • Selected by his peers as one of the 2014-2018 Best Lawyers in America in the area of intellectual property litigation
  • Named a leading practitioner in patent law by IAM Patent 1000 in 2013-2017

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Credentials