Jason F. Hoffman

Partner

Washington, D.C.
T +1.202.861.1657
F +1.202.861.1783

Overview

A seasoned intellectual property litigator and appellate advocate, Jason Hoffman has been involved in numerous patent cases, with eight jury trial victories, including four defense verdicts in the Eastern District of Texas, and seven victories at the Federal Circuit.* He frequently advises clients with respect to complex technologies, patents and post-grant proceedings, and regularly negotiates and drafts intellectual property-related agreements. His exposure to the courtroom came early in his legal career and his interest in intellectual property litigation is reflected in his frequent writings and media appearances on the topic.

*Does not guarantee similar results in comparable matters.

Select Experience

  • Represented a defendant manufacturer in a patent infringement matter in Baltimore involving evaporative fluid coolers. The jury returned a verdict that claims of the asserted patent were not infringed and invalid and awarded zero damages.
  • Represented a defendant home furnishing retailer in a patent infringement case in Marshall, Texas, involving its gift card system. The jury returned a verdict that the two asserted patents were not infringed.  
  • Represented a defendant manufacturer in a patent infringement matter in Marshall, Texas, involving high-voltage electrical connectors. The jury returned a verdict that the two asserted patents were invalid for anticipation and obviousness.
  • Represented an appellant payment network in a patent infringement matter. The client obtained reversal of the lower court's claim construction as well as the entry of a judgment of noninfringement regarding a patent relating to prepaid stored-value cards.
  • Represented a declaratory judgment plaintiff manufacturer seeking a declaration of noninfringement of the defendant's patent relating to network routers. The client obtained summary judgment of noninfringement.
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Experience

Trial*
  • Represented a plaintiff cable company in a patent infringement matter in Philadelphia involving text messaging. The jury returned a verdict of infringement and awarded damages.
  • Represented a defendant manufacturer in a patent infringement matter in Baltimore involving evaporative fluid coolers. The jury returned a verdict that claims of the asserted patent were not infringed and invalid and awarded zero damages.
  • Represented a defendant clothing retailer in a patent infringement matter in Marshall, Texas, involving its gift card system. The jury returned a verdict that the asserted patent was not infringed.
  • Represented a defendant bookseller in a patent infringement matter in Marshall, Texas, involving its gift card system. The jury returned a verdict that the asserted patent was not infringed.
  • Represented a defendant home furnishing retailer in a patent infringement case in Marshall, Texas, involving its gift card system. The jury returned a verdict that the two asserted patents were not infringed.  
  • Represented a defendant manufacturer in a patent infringement matter in Marshall, Texas, involving high-voltage electrical connectors. The jury returned a verdict that the two asserted patents were invalid for anticipation and obviousness.
  • Represented a defendant gift card program manager in a patent infringement matter in Memphis, Tennessee, involving gift card technology. The jury returned a verdict that the patent was not infringed, invalid for obviousness, invalid for failure to name all the inventors and unenforceable due to inequitable conduct.
  • Represented a plaintiff software manufacturer in a patent infringement matter in Richmond, Virginia. The jury returned an award of $62.3 million and found that the defendant willfully infringed the patent.
Federal Circuit*
  • Represented an appellant gift card exchange company in a patent infringement matter. The client obtained confirmation by the Federal Circuit that its 52 reexamined claims were valid.
  • Represented an appellant payment network in a patent infringement matter. The client obtained reversal of the lower court's claim construction as well as the entry of a judgment of noninfringement regarding a patent relating to prepaid stored-value cards.
  • Represented an appellee home furnishing retailer in a patent infringement matter. The client obtained affirmance of the jury verdict of noninfringement of its gift card system.
  • Represented an appellee gift card program manager in a declaratory judgment matter. The client obtained affirmance of invalidity of a patent relating to point-of-sale transactions.
  • Represented an appellee gift card program manager in a patent infringement matter. The client obtained affirmance of noninfringement involving patents relating to prepaid debit cards and electronic funds transfer.
  • Represented an appellee manufacturer in a matter regarding the United States Patent and Trademark Office's (USPTO's) interpretation of the statute establishing the inter partes reexamination of patents. The client obtained affirmance of the district court's grant of summary judgment.
  • Represented an appellee membership warehouse in a patent infringement matter. The client obtained affirmance of the lower court's grant of summary judgment of noninfringement of a patent relating to gift card technology. 
Dispositive Motions*
  • Represented a counterclaim-defendant cable company in a patent infringement case relating to video on demand. The client obtained summary judgment of noninfringement with respect to both asserted patents.
  • Represented a defendant payment network in a patent infringement case relating to prepaid phone cards. The client obtained summary judgment of noninfringement.
  • Represented a plaintiff gift card program manager seeking invalidation of the defendant's patent relating to prepaid debit cards and phone cards. The client obtained summary judgment resulting in the invalidity of all claims of the patent-in-suit.
  • Represented a declaratory judgment plaintiff manufacturer seeking a declaration of noninfringement of the defendant's patent relating to network routers. The client obtained summary judgment of noninfringement.
  • Represented a defendant gift card program manager in a patent infringement case relating to prepaid debit cards and electronic funds transfer. The client obtained summary judgment of noninfringement.
  • Represented an intervenor regarding the USPTO's interpretation of the statute establishing the inter partes reexamination of patents. The client obtained dismissal of the matter on summary judgment.
  • Represented a defendant membership warehouse in a patent infringement case relating to gift card technology. The client obtained summary judgment of noninfringement. 
  • Represented a plaintiff casino in a trademark and domain name dispute. The client obtained relief through the court's granting of a motion for summary judgment.

*Does not guarantee similar results in comparable matters.

Recognitions and Memberships

Community

  • Bethesda Arts & Entertainment District, Inc. (2006 to 2010)
    • Chair
    • Member, Board of Directors 
  • Bethesda Urban Partnership, Inc. (2000 to 2005)
    • Chair
    • Vice Chair
    • Secretary
    • Member, Board of Directors

Prior Positions

  • Law Clerk for the Honorable James M. Rosenbaum, United States District Judge, United States District Court for the District of Minnesota (1997 to 1998)

Admissions

  • U.S. Supreme Court
  • U.S. Court of Appeals, Federal Circuit
  • U.S. Court of Appeals, Fourth Circuit
  • U.S. Court of Appeals, Sixth Circuit
  • U.S. District Court, District of Columbia
  • U.S. District Court, Northern District of Illinois
  • U.S. District Court, District of Maryland
  • U.S. District Court, Eastern District of Texas
  • District of Columbia
  • Maryland

Education

  • J.D., University of Pennsylvania Law School, 1997, cum laude
  • B.A., Brandeis University, 1994, magna cum laude