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

• Defending 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.
• 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.
• 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 and modems.
• Managed patent portfolios protecting a wide range of software applications including ecommerce, search, and social networking.
• Ex parte and inter partes reexaminations of patented software and business processes, including security improvements and web services.
• 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 judicial intern and clerk for the Honorable Marian Blank Horn of the U.S. Claims Court, 1987; and as an intern for the Honorable David F. Jordan of E.D. New York, 1988-1989.
• 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, 1986.
• Associate editor, Computer & Internet Litigation Journal, 2000-2002.
• Editorial advisory board, Obtaining Patents, by Thomas A. Turano, 1997.

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.
• 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.