Jeffrey A. Berkowitz
Jeffrey Berkowitz, managing partner of the firm's Reston office, practices litigation, client counseling, and patent prosecution involving software and telecommunications-related inventions. He has broad experience in all aspects of patent litigation, including pre-filing investigations, discovery, preliminary injunctions, and drafting and arguing claim construction and summary judgment motions.
Mr. Berkowitz provides opinions on patentability, infringement, and validity of patents. He has drafted and overseen the drafting of thousands of patent applications for electrical, electronics, telecommunications, and software-based technologies. Patent portfolios he has managed protect a range of technologies, including adaptive distributed systems; code mobility; remote network resource leasing; network self-healing; runtime service discovery mechanisms; transaction management services; features of set-top boxes and modems; mobile devices, including many standards essential patents; and software applications, including ecommerce, FinTech, cybersecurity, search, and social networking.
Mr. Berkowitz regularly speaks and writes on current topics in intellectual property law. He has published, presented, and taught classes on software patents, AIA post-grant proceedings, and section 101 patent eligibility at programs sponsored by various trade and academic organizations, including World Congress, IPR Resources, ACC Israel, Practicing Law Institute (former program chair), Glasser LegalWorks Seminars (former program chair), Patent Resources Group (PRG), IBC, and EuroForum.
- Represents clients in software, telecommunications, FinTech, and cybersecurity patent cases in federal district courts, including E.D. Texas, N.D. Texas, E.D. Virginia, M.D. Florida, S.D. Florida, W.D. Pennsylvania, D. District of Columbia, N.D. California, C.D. California, S.D. California, N.D. Georgia, and D. Delaware; the U.S. Court of Appeals for the Federal Circuit; and the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO).
- Provided strategic patent counseling to a startup company to develop and expand a patent portfolio pertaining to information distribution technology, including software updating and browsing. Also represented startup in litigations resulting in sale of portfolio for more than $35 million.
- Represented software developer in patent portfolio development and enforcement of patents related to certain information distribution technology, including software updating and browsing. Litigations resulted in multi-million dollar settlement.
- Represented clients in ex parte and inter partes reexaminations of patented software and business processes, including security improvements and web services.
- Adjunct professor for patent practice, strategy and management at University of Haifa, Israel, 2010 and 2012-2014.
- Served as a member of the firm's management committee, 2010-2013; and served as leader of the firm's electrical and computer technology practice group, 2004-2010.
- Served as a law clerk for the Honorable Marian Blank Horn of the U.S. Claims Court, 1988-1989, and as an intern for the Honorable David F. Jordan of U.S. District Court, E.D. New York, 1987.
Click here for full list of litigation experience highlights.
- Recognized by The Legal 500 U.S. for patent litigation, 2016.
- Recognized as a leading patent litigator in the D.C. area by Intellectual Asset Management, 2014-2016.
- Recognized as an "IP Star" in Virginia by Managing Intellectual Property, 2013-2016.
- Recognized as a leading lawyer by Who's Who Legal: Telecommunications Media & Technology, 2016.
- Recognized as a Virginia "Super Lawyer" in Intellectual Property Litigation, Super Lawyers published by Thomson Reuters, 2006-2008.
- Received several American Jurisprudence Awards: Legal Research and Writing (2); Civil Procedure; Jurisprudence; Judicial Clerkship.
- First Prize, Nathan Burkan Memorial Competition.
- American Bar Association
- American Intellectual Property Law Association
- Virginia Bar Association
- D.C. Bar Association
- New York Bar Association
- New Jersey Bar Association
- Serves as an editor for Finnegan's AIA blog on PTAB trials and AIA provisions.
- Coauthor. "Five Tips for Getting Strong, Valuable and Strategic Cybersecurity Patents," Israel Defense Magazine, Jan. 2017.
- Coauthor. "Trends for FinTech Patents at the PTAB," Law360, Feb. 12, 2016.
- "Practical Considerations for Working with Business Method Patents," Electronic and Software Patents, BNA, 2005.
- "Update on Business Method Patents," Computer & Internet Litigation Journal, Dec. 2001.
- "The Claim Game: Amending Claims to Avoid Prosecution History Estoppel," The Patent Journal, Oct. 2001.
- Patenting the New Business Model: Building Fences in Cyberspace. Practising Law Institute, Feb. 2001.
- Associate editor, Computer & Internet Litigation Journal, 2000-2002.
- Coauthor. "Reiffen v. Microsoft: The Rise and Fall of the So-Called 'Omitted Elements Test,'" IP Litigator, Sept./Oct. 2000.
- Business Method Patents 2002: How to Protect Your Clients' Interests. Practising Law Institute, Feb. 2000.
- "Protecting Business Methods in Cyberspace," The Licensing Journal, Jan. 2000.