Mark Rygiel, a director in the Mechanical & Design Practice Group, counsels a broad spectrum of entities ranging from large multi-national companies to small start-ups in developing IP strategies and protecting new technologies. Mark specializes in obtaining utility and design patent protection for cutting edge technologies in the consumer product, vehicle system, medical device, manufacturing, and e-commerce industries. His practice also focuses on complex post-grant proceedings at the USPTO, analyzing patents for validity, infringement, and freedom-to-operate issues and providing related opinions of counsel, and counseling on IP due diligence in connection with portfolio acquisitions.
Mark manages large patent portfolios with a comprehensive approach that considers the client's most important products, business goals, competitor positioning and market conditions. He has extensive experience drafting and prosecuting utility and design patent applications and is recognized for his knowledge in the following technical areas: footwear and athletic apparel, physiological sensor systems, laboratory instrumentation, respiratory and ventilation equipment, catheters and grafts, retinal surgery devices, engines and engine brakes, natural gas distribution systems, location-based services, and e-commerce promotions and related technology. He has presented numerous lectures on effective patent portfolio management strategies, particularly tactics under the America Invents Act of 2011.
Mark provides counsel on both offensive and defensive patent strategies to help his clients achieve their business goals. He has rendered numerous invalidity, non-infringement, and freedom-to-operate opinions and has navigated IP due diligence issues in the mechanical and electrical arts. He also has successfully negotiated contentious matters in the consumer products and e-commerce marketing spaces through settlements and unique development and licensing agreements.
In the area of patent reexaminations, Mark has served as lead or second chair reexamination counsel to large corporations in matters relating to critical client products. Most recently, he has engaged in proceedings involving athletic performance monitoring, vehicle system, and laminate flooring technologies. He is familiar with the challenges faced in both ex parte and inter partes proceedings and has a proven track record of success for both patent owners and third-party requesters.
Mark is the editor of The Goods on IP, a newsletter focused on best IP practices for consumer product companies. He is also a contributing author of Patent Office Litigation, Second Edition, published in 2017. The book provides a fresh and comprehensive exploration of patent office litigation proceedings, including how the proceedings interact with other aspects of patent procurement and enforcement, while delivering practical analysis and advice. This edition is the follow up to the version published in 2012 by Thomson Reuters Westlaw that focused on the contested proceedings that were introduced under the America Invents Act that year. Mark served as a contributing author for the “Design Patents” chapter of the first edition.
Prior to joining Sterne Kessler, Mark worked as a business and information technology consultant for a large consulting firm where he designed manufacturing process systems, including a mill operations system for a large steel manufacturing plant. He also interned in the mechanical engineering department of a large respiratory device company. At The George Washington University Law School, Mark was a member of The Environmental Lawyer Law Journal. At the University of Notre Dame, Mark received a Notre Dame Scholar award and several steel industry related engineering scholarships.
- The Legal 500, "Highly Recommended Lawyer - Patent Prosecution (including reexamination and post-grant proceedings)" (2017)