Mark R. Privratsky

Of Counsel

privratskym@ballardspahr.com
Tel 612.371.3524
Fax 612.371.3207
Minneapolis

Mark R. Privratsky focuses his practice on handling complex commercial and intellectual property-based transactions and dispute resolution.

He acts on behalf of both plaintiffs and defendants in litigation involving intellectual property, unfair competition, and related commercial issues. He provides business advice to clients' senior management in order to avoid risks, win disputes, and protect assets covered by patents, trademarks, copyrights, trade secrets, and other duties.

Mark also provides advice to protect, transfer, and monetize various intellectual property assets, including the traditional types as well as software, know-how, and other commercial and personal information. Mark drafts and negotiates various types of documents on behalf of technology, manufacturing, and other clients, including licenses and other agreements covering software and SaaS, personal and other data, joint development and collaboration, manufacturing and supply, sales and distribution, employment and consulting, advertising, confidentiality, indemnity, warranties, assignment, security, privacy, succession, and mergers and acquisitions.

With respect to his legally-related efforts, Mark contributes nationwide as Chair of the ABA IP Section's Pro Bono Committee, and acts on committees of the Pro Bono Inventors Assistance Program as well as the America Invents Act Pro Bono Advisory Council. He also is co-chair of the Subcommittee on Inequitable Conduct for the ABA Patent Litigation Committee. Inside the firm, Mark acts as a leader of the Minneapolis office's Intellectual Property Department and contributes as a member of the Technology Committee. He also frequently lectures on intellectual property issues.

Judicial Clerkship

Hon. D. Nick Caporale, Nebraska Supreme Court

Representative Dispute Resolution Matters

  • American Automatrix v. TSI Inc.: Defended manufacturer of high tech laboratory testing equipment against alleged patent infringement claims
  • ArrivalStar S.A. v. Sportsman's Warehouse: Represented online seller of sporting goods against non-practicing entity alleging infringement of patent related to tracking software
  • Array Technologies Incorporated v. Exosun Incorporated: Defense of manufacturer of solar tracking equipment
  • Brenneke GmbH v. Eldorado Cartridge Company: Pursued trademark infringement and deceptive trade practices case against alleged infringer of marks in shotgun slug market
  • Canine EIC Genetics v. Animal Genetics, Inc.: Successfully defended veterinary diagnostic laboratory against claims of infringement related to gene identification
  • Card Technology v. DataCard: Represented Card Technology in patent infringement suit against competitor in smart card industry
  • Cedar Fair v. Minntertainment Company: Represented Cedar Fair in multiple matters related to termination of Cedar Fair as Manager of Camp Snoopy at the Mall of America
  • Chrimar Systems, Inc. v. Transition Networks, Inc.: Counsel defending manufacturer and distributor of power-over-Ethernet products.
  • CNS v. Silver Eagle Labs: Represented maker of patented medical device used to alleviate breathing restrictions in nasal passages in suit against entity making and selling infringing devices
  • CommScope Technologies LLC v. Clearfield, Inc.: Represented maker of fiber optic related equipment against claims of patent infringement
  • Ditech Mortgage Corp. v. Ditech Financial, Inc.: Counsel in prosecution of trademark infringement suit against South Dakota competitor
  • Equine PSSM Genetics, LLC v. Animal Genetics, Inc.: Defense of veterinary diagnostic laboratory against claims of infringement related to mutant gene identification in horses
  • Eureka Database Solutions, LLC v. Qumu Corporation: Defended entity with corporate video platform against non-practicing entity alleging patent infringement
  • Hoo-Ahhs v. Ira Green: Obtained dismissal of design patent suit related to military and hunting gear
  • Inventitives, Inc. v. St. Jude Medical, AFD.: Defended St. Jude Medical, AFD in alleged trade secret matter in the medical device industry
  • LCI v. Gibis: Represented LCI against former employees who misappropriated trade secrets and related confidential information to start up a competing company
  • MPHJ Technologies v. ABC Companies: Represented numerous small to mid-sized companies facing threats of patent litigation from non-practicing entity related to use of scanners
  • N.A.F.C. PA v. K.P. and N.A.C.&W., LLC: Assertion of healthcare provider's trademark rights against competitor
  • P. D., LLC v. S.D.: Defense in arbitration proceeding of licensee in patent royalty dispute
  • Sorna Corp. v. Pacs-Exchange: Defended entity accused of selling patented medical data recording systems and software
  • Spineology, Inc. v Wright Medical Technology, Inc.: Defended medical device company regarding alleged infringement of bone reamer
  • Thermo King Corporation v. Rigmaster Power International Ltd.: Defended designer and manufacturer of auxiliary power units accused of patent infringement
  • Transunion Intelligence LLC v. Search America, Inc.: Defended provider of charity care hospital-related services against allegations of infringement of software patent
  • Tric Tools, Inc. v. TT Technologies: Represented manufacturer of underground trenching technology in patent suit between competitors
  • URS v. ATS: Defeated motion for preliminary injunction related to enforcement of noncompetition and confidentiality agreements and protection of trade secrets

Professional Activities

American Bar Association, Member

American Intellectual Property Law Association, Member

Federal Bar Association, Member

Minnesota Bar Association, Member

Nebraska Bar Association, Member

North Dakota Bar Association , Member

Recognitions and Accomplishments

The Best Lawyers in America, intellectual property litigation, patent litigation, 2014-2015, 2017-2019

Recipient, ABA Section of Intellectual Property Law's pro bono award, 2019

North Star Lawyer, Minnesota State Bar Association, 2014-2016

Minnesota Justice Foundation - Distinguished Service Award, 2015

Minnesota Lawyer - Attorney of the Year, 2014

LegalCORPS Volunteer of the Year, 2014

Minnesota Super Lawyers, 2011-2017

Minnesota Super Lawyers, Rising Star, 2002-2004, 2006, 2009

Publications

"Increasing Value for Today and Tomorrow," MPMA- Precision Manufacturing Journal, July 2017

"A Point for Companies Sued for Patent Infringement," Lindquist legal alert, May 2017 

"Proactive Management of a Manufacturer's Intangible Assets," Minnesota Business - Gears & Gadgets Guideposts, May 2017

"In House Pro Bono," ABA Landslide, January 2015

Patent Law Pro Bono: A Best Practices Handbook, September 2012

Keyword Advertising: Originally Published in The IP Book (Minnesota CLE, 2011), The IP Book 9th Edition Published by Minnesota CLE, October 2011

"Keyword Advertising," Chapter, originally published in The IP Book, Minnesota CLE, January 2010

Speaking Engagements

"Addressing the Cycle of Poverty: Patent Pro Bono Services," 2019 Electronic and Computer Patent Law Summit, June 11, 2019

"IP Toolkit: 10+ Useful Contract Provisions for IP Transactions," Lorman Education Services Webinar, April 29, 2019 

"Intellectual Property & Manufacturing: Identifying Assets for Today and Tomorrow," Ballard Spahr Manufacturing Webinar Series, March 2019

"Threat & Vulnerability Management," CISO Executive Network, Minneapolis Chapter, February 2019

"Identity and Access Management," CISO Executive Network, Minneapolis Chapter, November 2018

"In-House IP Toolkit: 10 Useful Contract Provisions for IP Transactions," Midwest IP Institute, Minnesota CLE, September 2018

"Third Party Relationship Considerations - Developments in Cybersecurity & Vendor Management," Lindquist & Vennum Card Issuer Workshop, October 2017

"Identifying IP Assets (for Sale & Acquisitions)," Exit Planning Institute, Breakfast & Learn Series, September 2017

"Defending Your Trade Secrets: Options Abound," ACC Lunch & Learn, January 2017

2016 Sioux Falls Card Issuer Workshop, Seminar, November 2016

"Data Security and Emerging Technologies," Card Issuers Seminar, November 2016

"Can You Keep a Trade Secret?" Seminar, February 2016

WSI Event Tour with Congressman Tom Emmer Recap, January 2016

"Ethical Representations of Every Client," AIPLA Conference CLE, October 2015

"Indemnitees- Indemnitors: The Best of Frenemies?," MN ACC Lunch & Learn, September 2015

Congressman Emmer Presents at Lindquist and MPMA Event, September 2015

Co-Presenter, "IP in Contracts," Clear Law Institute Webinar, December 2014

Co-Presenter, "Top 10 IP Issues in Contracts," Lorman Webinar, November 2014

Co-Presenter, "Grow Your Business, Know Your IP," Seminar, IP Practice Group, July 2014

Moderator and Co-Presenter, "Succession Planning for Business," MN Precision Manuf. Assoc., June 2014

Co-Presenter, "Identifying, Protecting and Leveraging Your Intangible Assets," Webinar, June 2013

Co-Presenter, "Identifying, Protecting and Leveraging Your Intangible Assets," Fidelity Bank Intellectual Capital Webinar Series, June 2013

Co-Presenter, "IP Licensing & Assignments in the Litigation or Other Dispute-Resolution Context," IP Issues in Contracts MCLE (Also January 2012), June 2013

"Patents 101, Non-Practicing Entities, and Your Growing Business," North Metro E-Club, May 2013

Community Activities

American Bar Association, Inequitable Conduct Sub-Comm. of Patent Litigation Committee, Co-Chair, 2014-present

Intellectual Property Law Pro Bono Committee, Chair, 2014-present, Vice Chair, 2013-2014; Trade Secrets Committee, Member

ABA Standing Committee on Pro Bono, Liaison, 2017-present

American Bar Foundation, Fellow, 2015-present

AIA Pro Bono Council, Committee Member, 2012-present; Insurance Subgroup, Chair, 2014-present

Minnesota Precision Manufacturing Association, Government Relations Committee, 2016-present

LegalCorps IAP Screening and Advisory Committees, 2011-present

Spring Lake Park Schools Clay Target Team, Assistant Coach, 2016-present

Spring Lake Park Swim & Dive Team, Board, Chair, 2015-present

BSA Merit Badge Counselor, 2013-2017

Rotary, Blaine–Ham Lake Chapter, Member, 2005-2010

Fourth District Ethics Committee, Member, 2006–2010

Street Legal Motorcycle Club, Member, 2000-2010

University of Nebraska College of Law (J.D., 1996, with highest distinction)

Moorhead State University (B.A., summa cum laude, 1991)

Minnesota

North Dakota

Nebraska

U.S. Court of Appeals, Federal Circuit

U.S. District Court, District of Minnesota

U.S. District Court, District of Nebraska

U.S. District Court, District of North Dakota