Barclay Damon
Barclay Damon

Thomas 
     Hoehner

Thomas Hoehner

Partner

p: 315-425-2839

f: 315-703-6245

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Syracuse Office

Barclay Damon Tower
125 East Jefferson Street
Syracuse, New York 13202

Thomas Hoehner concentrates his practice on representing clients in patent, trademark, and other intellectual property-related matters, with a particular emphasis on complex patent and trademark litigation.

Tom has experience in a wide variety of technologies, including Internet services and systems, software, networking and communications systems, smartphones and other mobile devices, video-on-demand systems, digital television systems, digital data compression, wireless power transfer, engine systems, and general electrical and mechanical systems.

Tom also counsels clients on challenging the validity of patents (post-issuance proceedings) and trademarks (trademark oppositions) in the United States Patent and Trademark Office ("USPTO"), as well as defending clients’ patents and trademarks from such challenges. In addition, Tom advises clients on obtaining patents and trademarks, the licensing and transfer of intellectual property, pre-purchase/merger due diligence, product clearance studies, and the development of overall IP strategies. He has represented major technology and consumer product companies in intellectual property matters, including Brocade Communications Systems, Edmunds.com, General Electric, Honeywell, Kohler, Mitsubishi Electric, MobileMedia Ideas, Panasonic, Payless ShoeSource, SeaChange International, Sony, U.S. Philips, and Zenith Electronics.

Prior to becoming an intellectual property attorney, Tom applied his electrical engineering skills in the business and consulting fields for ten years, starting out as a software programmer at Andersen Consulting (now Accenture) following college, and eventually serving as a Manager in the Communications and High-Tech Industry Group there. Tom also served as Director of Product Development at the Internet-based startup beMANY.com, and as Senior Principal Consultant at international consulting firm Keane, Inc. (now NTT Data Corp.). While in these roles, Tom was responsible for managing various projects and programs relating to software application development, integration and outsourcing, as well as data management, website development, and business process design. In doing so, Tom serviced industry leading clients, including Goldman Sachs, AT&T, Verizon, Verizon Wireless, and Corning, Inc.

Tom received his Bachelor's degree in Electrical Engineering from Cornell University, specializing in computer and communication systems and networks and digital signal processing. He graduated magna cum laude from Syracuse University, College of Law earning a Certificate in the Technology Commercialization Law Studies Program, and was a recipient of the ABA/BNA Intellectual Property Award.

Tom is admitted to practice in New York and Massachusetts, and is a registered patent attorney in the United States Patent and Trademark Office. He is a member of the New York State Bar Association, the Northern District of New York Federal Court Bar Association, and the Boston Patent Law Association.

Representative Experience

  • Zenith Electronics LLC, Panasonic Corp., U.S. Philips Corp., and The Trustees of Columbia University in the City of New York v. ViewSonic Corp., Curtis International Ltd., and Craig Electronics (S.D. Fla. and C.D. Cal.) Represented Zenith, Panasonic, U.S. Philips, and Columbia University in resolving a series of patent litigations relating to the transmission and reception of digital television signals, and the ATSC digital television standard.
  • Mitsubishi Electric Corp., Koninklijke Philips N.V., Thomson Licensing, GE Technology Development Inc., Panasonic Corp., and Sony Corp. v. ViewSonic Corp., Curtis International Ltd., and Craig Electronics. (S.D. Fla.) Represented Mitsubishi, Philips, Thomson, GE Technology, Panasonic, and Sony in resolving a series of patent litigations relating to compression of digital signals, and the MPEG-2 digital compression standard.
  • MobileMedia Ideas LLC v. Research In Motion. (N.D. Tex.) Represented MobileMedia in a complex patent infringement action involving multiple patents against Research In Motion concerning its Blackberry products, resulting in a favorable settlement and licensing agreement for MobileMedia. 
  • Arris Group, Inc. v. SeaChange International, Inc. (D. Del. and Fed. Cir.) Represented SeaChange in obtaining denial of a motion for contempt of a patent injunction entered while SeaChange had been represented by other counsel. Obtained affirmance of the district court’s decision on appeal to the Court of Appeals for the Federal Circuit.
  • Enterasys Networks, Inc. v. Brocade Communications Systems, Inc. et al. (D. Mass.) Represented Brocade (formerly Foundry Networks, Inc.) in resolving a long-standing patent infringement action involving multiple network-related patents and cross claims between the parties.
  • Memory Control Enterprise, LLC v. Edmunds.com, Inc. (C.D. Cal.) Defended Edmunds.com in resolving a patent infringement action brought by MCE, resulting in a favorable settlement and license agreement for Edmunds.com.
  • Crocs, Inc. v. Payless Shoe Source, Inc. Defended Payless in resolving a design patent and trademark infringement and licensing dispute with Crocs.
  • International Trade Commission Investigation No. 337-TA-650, Certain Coaxial Cable Connectors and Components Thereof and Products Containing Same. Represented John Mezzalingua Associates, Inc. (d/b/a/ PPC) in an ITC proceeding involving utility and design patents for coaxial cable connectors. Successfully obtained two General Exclusion Orders and one Limited Exclusion Order for PPC.

Practice Areas

Education

  • Syracuse University College of Law, J.D., magna cum laude, Order of the Coif, Justinian Honorary Law Society, ABA/BNA Intellectual Property Award Recipient, Technology Commercialization Law Studies Program Certificate
  • Cornell University, Electrical Engineering, B.S.

Admitted To Practice

  • New York
  • Massachusetts
  • U.S. Patent and Trademark Office
  • U.S. District Court, Northern District of New York
  • U.S. District Court, Southern District of New York
  • U.S. District Court, Eastern District of New York
  • U.S. District Court, Western District of New York
  • U.S. Court of Appeals, Federal Circuit

Memberships & Affiliations

  • New York State Bar Association
  • Northern District of New York Federal Court Bar Association
  • Boston Patent Law Association

Prior Experience

  • Hiscock & Barclay, LLP, Partner
  • Proskauer Rose LLP, Senior Associate
  • Marjama Muldoon Blasiak & Sullivan LLP, Associate
  • Keane, Inc., Senior Principal Consultant
  • beMANY.com, Inc., Director of Product Development
  • Accenture, Manager, Communications and High-Tech Industry Portfolio