Patrick J. Hoeffner is a registered U.S. patent attorney with nearly 25 years of experience in intellectual property matters as both a law firm litigator and in-house counsel. Mr. Hoeffner has substantial trial experience involving commercial contracts, patent infringement, trade secret misappropriation and international commercial arbitration. He has served as lead counsel or second chair for numerous patent and trade secret cases involving both domestic and foreign clients. As General Counsel, Director of Intellectual Property of a global design and manufacturing company, Mr. Hoeffner gained extensive experience in creating and implementing a comprehensive intellectual property strategy, including developing and asserting a patent portfolio that resulted in tens of millions of dollars in revenue for the company.
Mr. Hoeffner's patent law experience includes patent prosecution (electrical and mechanical arts), opinion work (non-infringement, invalidity, unenforceability, freedom-to-operate), licensing, IP portfolio counseling / development, and representation before the United States International Trade Commission.
Mr. Hoeffner has successfully dovetailed his nearly 25 years practicing intellectual property law with the firm's international commercial arbitration practice. His patent law experience provides a significant advantage to our clients in disputes involving a wide array of technologies, whereas his experience as General Counsel provides a unique insight into our clients' business needs.
Prior to his legal career, Mr. Hoeffner designed Very Large Scale Integrated (VLSI) circuits for customized applications.
Distinguishing practice highlights include:
Senior member of trial team in a plaintiff's patent infringement action resulting in a US$35 million judgment for client after a three week jury trial.
Chief in-house counsel managing and negotiating settlements of disputes involving intellectual property matters—generating more than US$20 million in revenue and turning competitor into largest OEM customer.
Served on legal teams for landmark patent cases (Festo and Seagate).
Lead counsel successfully defending one of the world's largest pharmaceutical companies in a trade secret misappropriation and patent infringement case.
Served on legal team for Dow AgroSciences in patent infringement actions involving patents for genetically modified plants which were known as the “Seed Wars”.
Represented claimant in an international arbitration seated in Singapore that resulted in an award of nearly US$50 million.
- Successfully obtained a verdict for the defendant in a breach of contract suit and secured an award of attorneys' fees in excess of US$4 million.
- J.D., St. John's University School of Law (1996)
- B.S., NYU-Polytechnic (Electrical Engineering) (1992)
- Law Clerk to Chief Judge Conrad B. Duberstein, United States Bankruptcy Court, Eastern District, Brooklyn, New York
- New York State
- United States Patent & Trademark Office (Reg. No. 44,678)
- Court of Appeals for the Federal Circuit
- Court of Appeals for the Ninth Circuit
- Court of Appeals for the Second Circuit
- U.S. District Court for the Southern District of New York
- U.S. District Court for the Eastern District of New York
- U.S. District Court for the Northern District of New York
- ICC Certificate of Achievement, International Arbitration
- Patent Litigation
- International Commercial Arbitration
- Unfair Competition Litigation
- International Trade Commission (ITC) Patent Litigation (§ 337 Actions)
- Patent Opinions & Counselling
- Practice before the USPTO