Jeffrey A. Berkowitz

Partner

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Jeffrey A. Berkowitz

Partner

+1 571 203 2710 +1 571 203 2710
jeffrey.berkowitz@finnegan.com jeffrey.berkowitz@finnegan.com

1875 Explorer Street
Suite 800
Reston, VA 20190-6023

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Jeff Berkowitz’s practice focuses on adversarial proceedings involving patents primarily involving the computer and telecommunication fields, as well as patent counseling and prosecution to assist clients in developing powerful patent portfolios designed to block competitors.

Jeff 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.

Jeff 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 prepared, prosecuted, and managed protect a range of technologies, including adaptive distributed systems; code mobility; remote network resource leasing; network self-healing; machine learning; artificial intelligence; data analytics; 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.

Jeff 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.

Intellectual Asset Management and The Legal 500 U.S. have recognized Jeff for his patent litigation practice. He has received several American Jurisprudence Awards: Legal Research and Writing (2); Civil Procedure; Jurisprudence; and Judicial Clerkship. Managing Intellectual Property named him an “IP Star” and a “Patent Star” nationally as well as in Virginia, and he was recognized as a leading lawyer by Who’s Who Legal: Telecommunications Media & Technology.

Over the years, Jeff has served in various firm management roles, including as a member of the management committee, as leader of the electrical and computer technology practice group, and as managing partner of the Reston office. He is currently a member of the firm’s compensation committee.

NOTE: No aspect of these rankings has been approved by the Supreme Court of New Jersey. Further information on methodologies is available via these links.

Et Cetera

Adjunct professor for patent practice, strategy and management at University of Haifa, Israel, 2010 and 2012-2014.
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.
First Prize, Nathan Burkan Memorial Competition.

Experience

Representing FedEx Corporate Services in six-patent infringement lawsuit against competitor Roambee related to FedEx's SenseAware products and services.

1:21-cv-00175, D. Del., Judge Connolly

Represented Maglula Ltd. of Israel as lead counsel in a one-of-a-kind district court litigation including patent, trademark, and copyright claims over Maglula’s assertions that Amazon sold counterfeit consumer products. After the Court issued an order (i) denying Amazon’s motion for summary judgment; (ii) finding “Amazon's attempts to avoid liability … will have minimal impact before a jury”; (iii) reflecting the Court’s belief that “not [] even the most persuasive presentation of Amazon’s evidence would make one iota of difference to a jury”; and (iv) requiring the parties to engage in mediation, the parties entered into an agreement and the case was dismissed.

1:19-cv-01570, E.D. Va., Judge O'Grady

After mounting a strong initial defense, including motions to dismiss and transfer, the plaintiff Transcend dismissed the case.

2:22-cv-00110, E.D. Tex., Judges Gilstrap, Payne

Defended FedEx in $100 million patent infringement suit related to shipping and tracking technology; successfully obtained summary judgment ruling and jury verdict of non-infringement. IV did not appeal, leaving intact the judgment and jury trial victory for FedEx and the Finnegan trial team.

2:16-cv-00980, E.D. Tex., Judge Gilstrap

Represented FedEx as petitioner at the PTAB, where the Board invalidated challenged claims of three Intellectual Ventures (IV) patents. After initially appealing the PTAB’s adverse decisions to the Federal Circuit, IV voluntarily dismissed their appeals, leaving intact the decisions invalidating claims from their patents.

IPR2017-00729, PTAB, Judges McKone, Parvis, Hudalla
IPR2017-00741, PTAB, Judges McKone, Parvis, Hudalla
IPR2017-00859, PTAB, Judges Jefferson, McKone, Hudalla
18-2402, 18-2401, 19-1065, Fed. Cir.

Defended FedEx against two patent infringement lawsuits against package tracking sensor technology; obtained stays pending proceedings at the USPTO; successfully represented FedEx in inter partes reexamination and IPR. The inter partes reexamination and IPR resulted in decisions cancelling all patent claims, and the Federal Circuit affirmed in both instances.

4:11-cv-05367, N.D. Cal., Judges Hamilton, Ryu
4:14-cv-04894, N.D. Cal., Judges Beeler, Hamilton, Seeborg
IPR2014-00833, PTAB, Judges Droesch, Lee, Zecher
16-1911, Fed. Cir., Judges Dyk, Hughes, O'Malley

Insights

Conference

Best Practices and Tech in Intellectual Property Conference 2026 Best Practices and Tech in Intellectual Property Conference 2026

May 17, 2026

Tel Aviv

Panel Discussion

Cyber Brunch Cyber Brunch

March 26, 2025

Tel Aviv

Conference

Best Practices and Tech in Intellectual Property Conference Best Practices and Tech in Intellectual Property Conference

March 24-25, 2025

Tel Aviv

Articles

Recent Filings and Decisions for Standard Essential Patents July and August 2024: U.S. CAFC, District Courts, PTAB, and European Courts Recent Filings and Decisions for Standard Essential Patents July and August 2024: U.S. CAFC, District Courts, PTAB, and European Courts

October 18, 2024

Articles

Strategic Considerations for Defending Litigation over Standard-Essential Patents Strategic Considerations for Defending Litigation over Standard-Essential Patents

October 10, 2024

Westlaw Today

Articles

The Federal Trade Commission’s Noncompete Ban: What Israeli Companies Need to Know The Federal Trade Commission’s Noncompete Ban: What Israeli Companies Need to Know

July 16, 2024

The Marker

Professional Recognition

"Berkowitz excels in the computer and telecommunications arenas."

“Jeffrey Berkowitz is another Swiss Army knife of a practitioner: with the knowledge and skills of a precision prosecutor, he also makes light work of all types of adversarial proceedings.”

“Berkowitz marries precision drafting skills with abundant experience in all facets of patent litigation.”

“Jeff Berkowitz [is] ‘faultless in [his] technical understanding and [an] assertive trial lawyer with extensive experience coordinating worldwide patent litigation.’”

“Berkowitz manages the Reston office and is well versed in all aspects of the contentious process.”

“Berkowitz combines ‘brilliant technical understanding’ with ‘extensive experience on the coordination of worldwide patent disputes.’”

“Lots of talented lawyers here effortlessly cross practice lines, which helps to ensure close collaboration among the prosecution, post-grant and litigation divisions. Reston office manager Jeffrey Berkowitz is one of them; the all-round counsellor has his finger on the pulse of clients’ commercial objectives.”

“Other star attorneys in the Reston office singled out for praise include… Jeffrey Berkowitz.”

“Reston partner and fellow all-rounder Jeffrey Berkowitz…frequently takes to the podium as a speaker on the hottest IP topics and, having prosecuted thousands of patent applications, issued many opinions and litigated dozens of cases, is well placed to impart knowledge.”

“Reston managing partner Berkowitz has been in the limelight litigating for FedEx…”

“Jeffrey Berkowitz, Bryan Diner, Gerson Panitch and Anand Sharma all represent a class of litigators at Finnegan who benefit from well-rounded patent prosecution, counselling and licensing experience.”