Mark Stirrat

Mark Stirrat is a partner in One LLP’s Newport Beach office.  Mark’s practice includes patent procurement and reexaminations, due diligence, litigation, and licensing.

Mr. Stirrat develops U.S. and foreign patent portfolios for numerous clients and provides counseling on the accompanying strategic considerations. He has successfully represented emerging companies in the due diligence phase of their funding and acquisition. He also has extensive experience in patent litigation and large-scale cross-licensing negotiations. While Mark has worked with a wide range of technologies, his practice focuses particularly on high technology, software, and medical devices. Example fields include communication systems, semiconductor design, software, medical imaging systems, disease treating implants, and intravascular access devices.

Education

Mr. Stirrat earned his J.D., cum laude, from the University of San Diego School of Law (2003) where he was selected for the Law Review (top 5%). Mark earned his B.S. in electrical engineering from Purdue University (1997).

• University of San Diego School of Law, J.D., 2003, cum laude
  Selected for Law Review
  Highest Grade in Intellectual Property
• Purdue University, B.S.E.E., 1997

Bar Admissions

• State of California
• U.S. Patent and Trademark Office
• U.S. Court of Appeals for the Federal Circuit
• U.S. District Court for the Northern District of California
• U.S. District Court for the Central District of California
• U.S. District Court for the Eastern District of California

Representative Prosecution Experience

• Nfocus Neuromedical, Inc.: Counseling on a wide variety of intellectual property matters that relate to treatment devices for neurovascular aneurysms.
• Ovalis, Inc.: Full scope IP services including the drafting and prosecuting of the U.S. and foreign patent portfolio having more than 40 patents and pending applications in the field of patent foramen ovale (PFO) closure.
• CardiacMD, Inc.: Strategic counseling and prosecution of the U.S. and foreign patent portfolio for this intravascular prosthetic valve company.
• Regents of the University of California:  Strategic counseling and prosecution of applications directed to the fields of wireless communications, software, power management, and optics.
• Arges Imaging, Inc.: Representation during the due diligence phase of Arges’ successfully completed acquisition by Sirona Dental Imaging.
• California Institute of Technology: Strategic counseling and prosecution for Caltech in the field of three-dimensional imaging systems.
• Spinal Kinetics, Inc.:  Strategic counseling and prosecution regarding the U.S. and foreign patent portfolio in the field of artificial disc replacement.
• Boston Scientific, Inc.: Prosecuted Boston Scientific’s U.S. and foreign patent portfolio in the field of intravascular ultrasound (IVUS) technology.

Representative Reexamination Experience

• Fujitsu, Ltd.:  Extensive involvement with inter partes and ex parte reexaminations of an optical networking patent owned by Tellabs, Inc. Mark was responsible for reviewing the prior art and developing the anticipation and obviousness positions against the claims, as well as briefing before the Examiner and the Board of Patent Appeals and Interferences.
• KFX Medical, Corp.:  Provided strategic counseling in defending an ex parte reexamination brought by a competitor in the field of arthroscopic repair.

Representative Licensing and Litigation Experience

• Synthes, Inc. v. Spinal Kinetics, Inc.: Served on the trial team that successfully defended Spinal Kinetics in a patent litigation brought by Synthes over artificial disc replacement.  The asserted claims were found not infringed and invalid for lack of written description by a jury in the Northern District of California (see following press release).
• Fujitsu, Ltd. Licensing: Heavily involved in multi-year license negotiations on behalf of Fujitsu against two large competitors, one of which involved 120 patents across a host of technologies including semiconductor fabrication and packaging, analog and digital design, optical networking, and wireless communications.
• Stormedia LLC v. Fujitsu, Ltd.: Represented Fujitsu in a patent litigation involving hard drive fabrication technology that was resolved successfully.
• Carl Zeiss v. Xoft, Inc.: Defended Xoft in a multi-patent litigation over brachytherapy systems that was resolved successfully. Responsible for day-to-day management of the discovery phase of the litigation, including depositions, motion practice, and the review and production of over one million documents.
• Xoft Microtube, Inc. v. Cytyc Corp.: Represented Xoft in a multi-patent litigation over brachytherapy systems that was resolved successfully. Mr. Stirrat was responsible for motion practice and discovery throughout the case.

Professional Background

• Mr. Stirrat was previously a Senior Associate at Orrick, Herrington & Sutcliffe and Of Counsel at Dickstein Shapiro. Before beginning his legal career, Mr. Stirrat worked as a product engineer for Conexant Systems (previously Rockwell Semiconductor Systems), where he was responsible for production development of high-speed DSL and modem chipsets. He was also heavily involved in the introduction of new CMOS and BiCMOS semiconductor processes.