Jeffrey A. Berkowitz

Partner

Jeffrey Berkowitz practices litigation, client counseling, and patent prosecution involving business method and software-related inventions. He has broad experience in all aspects of patent litigation, including pre-filing investigations, discovery, 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 hundreds of patent applications for electrical, electronics, telecommunications, and software-based technologies.

Mr. Berkowitz lectures on business method and e-commerce patents at programs sponsored by various trade and academic organizations, including the Practicing Law Institute (program chair 1998-2002), Glasser LegalWorks Seminars (program chair, 2000), Patent Resources Group (coauthored a book used in the workshop), IBC, and EuroForum.

Highlights

• Represented clients in software and business method patent cases in several federal district courts, including E.D. Texas, W.D. Pennsylvania, D. District of Columbia, and D. Delaware.
• Provided strategic patent counseling to a start-up company to develop and expand a patent portfolio pertaining to information distribution technology, including software updating and browsing. Also represented start-up in litigations resulting in sale of portfolio for more than $35 million.
• Managed development of patent portfolio covering smartphone technology, including patents covering 3G and LTE standards.
• Managed patent portfolio protecting software inventions featuring adaptive distributed systems, code mobility, leasing, network self-healing, runtime service discovery mechanisms and shared memory, and transaction management services.
• Managed patent portfolio protecting features of set-top boxes, modems, and telecommunications services.
• Managed patent portfolios protecting a wide range of software applications including ecommerce, search, and social networking.
• Ex parte and inter partes reexaminations of software and business method patents.
• Adjunct professor for patent practice, strategy and management at University of Haifa, Israel, 2010 and 2012.
• Serves as a member of the firm's management committee, 2010-present; 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.
• Worked as a computer programmer with IBM, where he also taught employees how to operate microcomputers and a variety of application programs designed for microcomputers, 1983-1984.

Professional Recognition

• Received several American Jurisprudence Awards: Legal Research and Writing (2); Civil Procedure; Jurisprudence; Judicial Clerkship.
• First Prize, Nathan Burkan Memorial Competition.

Professional Activities

• American Bar Association
• American Intellectual Property Law Association
• Virginia Bar Association
• D.C. Bar Association
• New York Bar Association
• New Jersey Bar Association

Select Publications

• "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 Avaid Prosecution History Estoppel," The Patent Journal, Oct. 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.
• "Protecting Business Methods in Cyberspace," The Licensing Journal, Jan. 2000.
• Coauthor of bimonthly column, "Federal Circuit Report," The IP Litigator, 1995-2000.
• Editorial advisory board, Obtaining Patents, by Thomas A. Turano, 1997.