Biography

Mark Leonardo’s practice encompasses all areas of intellectual property, including commercial exploitation and management of patent portfolios, patent and trademark procurement, and opinion counseling on complex legal and technical issues. He assists clients in developing comprehensive and strategic patent portfolios that maximize a company’s competitive advantage; negotiating technology development, licensing and technology transfer agreements; trade secret and unfair competition counseling; and conducting intellectual property portfolio reviews for technology-driven companies.

Mark has been able to bring a breadth of real world experience to his clients by routinely acting as "in-house" intellectual property counsel on an as needed basis. In doing so, Mark has been able to provide unique legal assistance in overseeing the development of intellectual property policies and strategies for client companies and individual business units, including interfacing with general counsel, division executives, and research and product development departments. As in-house intellectual property counsel, Mark routinely assists his clients with analyzing, negotiating and counseling on various transactions and agreements; analyzing competitor product lines including developing and implementing offensive and defensive strategies; as well as review of and advice on sales, advertising and promotional materials and programs.

Mark advises in-house attorneys, business executives and individual proprietors on trademark, trade dress, copyright and advertising issues relating to clearance, enforcement, infringement, fair use, works for hire, domain names, privacy and publicity rights, promotional campaigns and product packaging claims.

Mark manages large, worldwide portfolios of well-known sporting and luxury goods, apparel and other trademarks; supervises investigations of infringers; and negotiates licenses and other agreements. He also conducts due diligence reviews of domestic and foreign intellectual property relating to corporate acquisitions and divestitures and secured transactions.

Mark is particularly active in counseling clients in connection with the acquisition and protection of intellectual property rights in corporate transactions, including strategies for protecting their organization’s intellectual property, evaluating the intellectual property of their prospective business partners, assessing merger candidates, corporate due diligence, and intellectual property investigations in conjunction with private venture financing, public offerings, mergers, acquisitions and divestitures.

Additionally, Mark represents high technology companies in areas of complex patent litigation. He has advised both plaintiffs asserting their patent rights, and defendants opposing charges of patent infringement. Work on patent litigation and litigation counseling has been in the areas of medical devices, mechanical instruments, and consumer products.

Prior to his work at the Firm, Mark was a Patent Examiner in the Electro-Mechanical and Biomedical Arts Groups at the United States Patent & Trademark Office.

Representation

Representing PUMA North America in connection with IP and M&A activities, including assertion and defense of infringement claims.

Representing Cobra Golf Inc. in connection with its worldwide patent, trademark and copyright portfolios including licensing of its technology and assertion and defense of infringement claims.

Representing Field & Stream in connection with its worldwide trademark and copyright portfolio.

Representing Tag Heuer as US patent counsel.

Advised CBGB on anticipated structured financing of trademark and copyright license revenues.

Represented Hologic, Inc., a publicly traded diversified medical technologies company specializing in diagnostic tools, imaging products and interventional devices dedicated to serving the healthcare needs of women, in connection intellectual property matters related to its $6.2 billion merger with Cytyc Corporation. The transaction included perfecting the security interest of lenders in IP rights worldwide in cross-border transaction.

Served as primary intellectual property counsel on a $100 million launch of major product line for Fortune 100 Company.

Represented the intellectual property interests of an investor in the area of Carbon Emission Reduction Credits (CERC) under The Kyoto Protocol in Latin America, including investor’s ability to secure liens and interests against the CERC production facilities’ intellectual property.

Represented American Railcar, a Carl Icahn affiliate, in connection with intellectual property matters related to its $200 million IPO completed January 2006, co-led by UBS and Bear Stearns.

Served as primary intellectual property counsel for public company client in acquisition of another public company worth over $500 million.

Member of the intellectual property team representing patentee, a small family company, in a patent litigation over consumer appliances against a billion dollar corporation. Results included the issuance of a preliminary injunction in favor of client and a win on appeal at the Federal Circuit upholding the injunction, prior to the matter resulting in a favorable settlement for the client.

Patent litigation has included preparing and responding to discovery requests, drafting and opposing discovery and evidentiary motions, taking and defending depositions, drafting expert reports and consulting with experts, drafting and opposing motions for summary judgment, drafting and opposing motions to dismiss, and preparing pre-and post-trial memoranda and drafting briefs.

Education

Cleveland Marshall – J.D., 1995
University of Massachusetts – B.S., M.E., 1992

Bar Admissions

Massachusetts
US Patent and Trademark Office
US Court of Appeals for the Federal Circuit
Publications
Speaking Engagements
Professional Affiliations
Awards and Honors