Mark R. Hull

**** ********* **** • Blue Ash, Ohio 45242

216-***-**** • adxytv@r.postjobfree.com

Profile

Skilled attorney with experience practicing diverse aspects of intellectual property law at both a large, multinational corporation and in a law firm environment. Managerial experience in an R&D division of a Fortune 500 corporation. Proven track record of achieving goals within established budgets and under stringent deadlines. Able to effectively work with individuals at all professional levels and from a variety of backgrounds.

Experience

Calfee, Halter & Griswold, LLP, Cincinnati, OH

Senior Counsel, Intellectual Property (2014-present)

Prepare and prosecute U.S. and foreign patent applications, advise clients on matters involving patent infringement and validity, conduct freedom-to-operate and design around analysis, and prepare and negotiate intellectual property agreements.

Representative technologies include autonomous vehicles, machine learning, hybrid power systems, machine vision systems, distributed power systems, hydraulic systems, medical devices, system modeling, construction equipment, and construction materials (thermal and sound insulation, sheathing, roofing).

Participated in invention capture sessions with client product development teams.

Presented at client seminars on patent prosecution strategy and willful infringement.

Counseled client’s management team on freedom-to-operate analysis.

Caterpillar, Inc., Peoria, IL

Corporate Counsel, promoted from Intellectual Property Attorney (2008-2014)

Work directly with business leadership on developing intellectual property global strategy, conduct intellectual property freedom-to-operate studies, manage outside counsel in preparation of patent applications and written opinions, lead assertion efforts of Caterpillar’s patent portfolio against potential infringers, provide support for litigation on intellectual property related matters, and prepare and negotiate of intellectual property agreements including license, joint development, and confidentiality agreements.

Representative technologies include diesel engine control and combustion, exhaust aftertreatment devices, alternate fuels, turbochargers, work tools (demolition hammers, buckets, couplers, etc.), and ground engaging tools.

Worked on developing global intellectual property strategy for business unit including identifying and analyzing opportunities and risks related to new product design, retrofitting machines to use off-the-shelf products, licensing opportunities, and patentability.

Managed large global patent portfolio including evaluating business needs and production intent, reviewing obligations under licensing agreements and government contracts, and making filing decisions.

Drafted complex development agreement including terms related to technology development, licensing, and option to purchase background intellectual property.

Counseled Germany-based subsidiary on protecting aftermarket business including developing short- and long-term strategy with management and marketing groups, evaluating current patent portfolio and future development projects, and conducting invention capture sessions and legal intellectual property training for management and engineering, including spending two weeks on-site.

Calfee, Halter & Griswold, LLP, Cleveland, OH

Intellectual Property Associate Attorney, promoted from Patent Agent (2003–2008)

Oversaw all aspects of preparing and prosecuting U.S. and foreign utility and design patent applications for a diverse group of clients such as publicly and privately held businesses, institutional clients, and individuals. Worked with clients to protect intellectual property portfolio, including understanding technology, discussing patentability and freedom-to-operate, and counseling on filing strategy.

Representative technologies include electromechanical relays, medical devices, powder coating systems, air brake systems, valves, tube fittings, and HVAC systems.

Drafted over 60 patent applications and managed a large patent prosecution docket in various mechanical based technologies.

Worked closely with client during a patent infringement matter, including drafting a Markman brief, a brief in support of a motion for summary judgment, and preliminary invalidity contentions.

The Lubrizol Corporation, Wickliffe, OH

Engineering Group Manager, promoted from Engineer (1990–2003)

Directed and led R&D technical group consisting of engineers, contractors, and non-degreed personnel providing engineering and information system support for the department.

Oversaw department performance, including mission and vision development, budget, strategic planning, and forecasting as a member of the Planning Committee.

Supervised engine oil testing projects in engine lab, including test development, process improvement and troubleshooting, failure analysis, and product qualification.

Served as chairman of ASTM committee comprised of industry professionals charged with overseeing the development and monitoring of engine oil fuel efficiency testing.

Education

University of Akron School of Law, Akron, OH

J.D., summa cum laude, 2004

GPA: 3.80; Class Rank: Top 5%

Associate Editor, Akron Law Review (Published Member)

Case Western Reserve University, Weatherhead School of Management, Cleveland, OH

M.B.A., 1998

GPA: 3.75

The Pennsylvania State University, State College, PA

B.S., Mechanical Engineering, cum laude, 1990

GPA: 3.56

Licenses and Memberships

Registered to Practice before the U.S. Patent and Trademark Office, 2003

Admitted to Ohio State Bar, 2004 (active)

Member of American Intellectual Property Law Association, 2004-2008, 2011-2020

Member of Cincinnati Intellectual Property Law Association, 2014-2023

Vice President, 2018-2020

Cincy Magazine, “Cincy Leading Lawyers,” Intellectual Property (2019 - 2023)

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