Partner
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 as an "IP Star" 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.
FedEx Corporate Services, Inc. v. Roambee Corporation
1:21-cv-00175, D. Del., Judge Connolly
Maglula, Ltd. v. Amazon.Com, Inc. et al
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
Transcend Shipping Systems, LLC v. FedEx Corp.
2:22-cv-00110, E.D. Tex., Judges Gilstrap, Payne
Intellectual Ventures II LLC v. FedEx Corp.
2:16-cv-00980, E.D. Tex., Judge Gilstrap
FedEx Corp. v. Intellectual Ventures II LLC
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.
IpVenture, Inc. v. FedEx Corp.
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
Event
Best Practices in Intellectual Property– A Decade of Dedication to IP Excellence Best Practices in Intellectual Property– A Decade of Dedication to IP Excellence
April 8-9, 2024
Tel Aviv
Articles
Devilish Details: The Infernal Technology Case and Artificial Intelligence Patents Devilish Details: The Infernal Technology Case and Artificial Intelligence Patents
July 30, 2023
Haaretz NewspaperEvent
Best Practices in Intellectual Property Conference – IP in the AI Era: Impact and Challenges Best Practices in Intellectual Property Conference – IP in the AI Era: Impact and Challenges
March 20-21, 2023
Tel Aviv
Articles
Don’t Make the Mistake of Failing to Invest in a Patent Strategy! Don’t Make the Mistake of Failing to Invest in a Patent Strategy!
March 13, 2023
CalcalistArticles
Don’t Be the Cyber Company That Fails to Protect Your Inventions! Don’t Be the Cyber Company That Fails to Protect Your Inventions!
January 30, 2023
Haaretz Cyber Magazine"Berkowitz excels in the computer and telecommunications arenas."
Intellectual Asset Management Patent 1000
“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.”
Intellectual Asset Management Patent 1000
“Berkowitz marries precision drafting skills with abundant experience in all facets of patent litigation.”
Intellectual Asset Management Patent 1000
“Jeff Berkowitz [is] ‘faultless in [his] technical understanding and [an] assertive trial lawyer with extensive experience coordinating worldwide patent litigation.’”
Intellectual Asset Management Patent 1000
“Berkowitz manages the Reston office and is well versed in all aspects of the contentious process.”
Intellectual Asset Management Patent 1000
“Berkowitz combines ‘brilliant technical understanding’ with ‘extensive experience on the coordination of worldwide patent disputes.’”
Intellectual Asset Management Patent 1000
“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.”
Intellectual Asset Management Patent 1000
“Other star attorneys in the Reston office singled out for praise include… Jeffrey Berkowitz.”
Managing Intellectual Property IP Stars
“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.”
Intellectual Asset Management Patent 1000
“Reston managing partner Berkowitz has been in the limelight litigating for FedEx…”
Intellectual Asset Management Patent 1000
“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.”
Intellectual Asset Management Patent 1000
"Berkowitz excels in the computer and telecommunications arenas."
Intellectual Asset Management Patent 1000
“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.”
Intellectual Asset Management Patent 1000
“Berkowitz marries precision drafting skills with abundant experience in all facets of patent litigation.”
Intellectual Asset Management Patent 1000
“Jeff Berkowitz [is] ‘faultless in [his] technical understanding and [an] assertive trial lawyer with extensive experience coordinating worldwide patent litigation.’”
Intellectual Asset Management Patent 1000
“Berkowitz manages the Reston office and is well versed in all aspects of the contentious process.”
Intellectual Asset Management Patent 1000
“Berkowitz combines ‘brilliant technical understanding’ with ‘extensive experience on the coordination of worldwide patent disputes.’”
Intellectual Asset Management Patent 1000
“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.”
Intellectual Asset Management Patent 1000
“Other star attorneys in the Reston office singled out for praise include… Jeffrey Berkowitz.”
Managing Intellectual Property IP Stars
“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.”
Intellectual Asset Management Patent 1000
“Reston managing partner Berkowitz has been in the limelight litigating for FedEx…”
Intellectual Asset Management Patent 1000
“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.”
Intellectual Asset Management Patent 1000
Press Release
32 Finnegan Attorneys Recognized by Best Lawyers 32 Finnegan Attorneys Recognized by Best Lawyers
August 17, 2023
Best LawyersPress Release
Managing Intellectual Property IP Stars: Finnegan Scores Top Patent Rankings Across the Board Managing Intellectual Property IP Stars: Finnegan Scores Top Patent Rankings Across the Board
July 13, 2023
Managing Intellectual PropertyPress Release
Finnegan Receives Top Rankings from Intellectual Asset Management; 46 Attorneys Ranked Finnegan Receives Top Rankings from Intellectual Asset Management; 46 Attorneys Ranked
June 30, 2023
Intellectual Asset ManagementCommentary
Patenting Lessons Learned from Representing 200 of Israel’s Leading Companies Patenting Lessons Learned from Representing 200 of Israel’s Leading Companies
September 19, 2022
CalcalistPress Release
45 Finnegan Attorneys Recommended by Intellectual Asset Management; Firm Continues to Be Top Ranked 45 Finnegan Attorneys Recommended by Intellectual Asset Management; Firm Continues to Be Top Ranked
July 8, 2022
Intellectual Asset ManagementAnnouncement
More than 30 Finnegan Attorneys Named to IP Stars List by Managing IP More than 30 Finnegan Attorneys Named to IP Stars List by Managing IP
June 1, 2022
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