Mark Hannemann

Mark Hannemann has more than 25 years of nationwide and international experience conducting and managing high-stakes, legally and technically complex, judicial and extrajudicial IP dispute resolution.

He focuses his practice in leading patent and trade secret litigation and arbitration teams for multinational companies like OSRAM, Robert Bosch, SS&C and Volkswagen, in technical subject matter involving LED packaging; UX designs; networking protocols; microelectromechanical (MEMS) devices; automotive braking, fuel-injection, communication-bus, and windshield-wiper systems; elliptic-curve cryptography; medical devices; and SaaS systems.

Mark has first-chair, multi-firm, team-leading experience in bench trials, jury trials, Patent Office proceedings and International Trade Commission (ITC) investigations. He also has experience with in- and out-licensing; standards-essential patent portfolios (SEPs); and copyright, trademark and antitrust issues.

Mark has frequently appeared in the Eastern and Western Districts of Texas, the District of Delaware and other U.S. district courts, and has an active ITC, appellate and PTAB practice.

In 2022, IAM’s Patent 1000 noted Mark’s “great attention to detail, creative thinking and refined advocacy skill”; in 2021, the same publication found that, “Mark is smart and efficient, and his advice and arguments are always very much to the point.”

Mark’s experience includes:

• Representing OSRAM, acted as lead defense counsel in an industry-wide ITC investigation and evidentiary hearing related to LED technology, which resulted in an initial determination of patent non-infringement and invalidity
• Represented SS&C in trade secret litigation in Connecticut state court, obtaining a significant decision on a motion for sanctions that led to a settlement
• Lead counsel to Robert Bosch LLC in its windshield-wiper patent enforcement campaign. Bosch has defended its beam-blade market by enforcing its U.S. windshield-wiper patents against competitors large and small. The campaign included a landmark Federal Circuit decision in the Bosch v. Pylon appeal, in which the Court of Appeals reversed a District Court decision and, in an important ruling helping to define the continued availability of injunctions after the Supreme Court’s 2006 eBay decision, ordered the District Court to enter the injunction Bosch had requested. The same series of appeals gave rise to an en banc Federal Circuit argument and decision on a question of appellate jurisdiction raised by Bosch
• Represented Robert Bosch LLC in numerous defense matters over the last 15 years, including District Court litigations and an ITC investigation
• Represented Volkswagen in numerous patent litigations, including a recent victory in the Court of Appeals for the Federal Circuit, where his team obtained a writ of mandamus declaring venue improper in the Western District of Texas