Tom Hoehner concentrates his practice on representing clients in patent, trademark, and other intellectual property-related matters, with a particular emphasis on complex patent litigation. Tom also counsels clients on challenging the validity of patents in the US Patent and Trademark Office, as well as defending clients’ patents from such challenges. With his extensive experience litigating in both the Patent Office and district courts nationwide, Tom counsels clients in effectively managing the nuanced interplay between infringement and validity issues that is critical in today’s patent cases.
In addition, Tom advises clients on obtaining patents and trademarks, trademark opposition proceedings, the licensing and transfer of intellectual property, pre-purchase/merger due diligence, product clearance studies, and the development of overall Intellectual property strategies. He has represented numerous Fortune 500 companies in intellectual property matters.
Tom has experience in a wide variety of electrical, chemical, mechanical, and life science technologies that include Internet services and systems, software, semiconductors, networking and communications systems, smartphones and other mobile devices, video-on-demand systems, digital television systems, digital data compression, medical devices, polymers, and engine technologies to name a few.
Prior to becoming an intellectual property attorney, Tom applied his electrical engineering skills in the business and technology consulting fields for over 10 years, starting out as a software programmer at Andersen Consulting (now Accenture) and eventually serving as a project manager in its Communications and High-Tech Industry Group. Tom also served as the director of product development at Internet-based startup beMANY.com, and as senior principal consultant at technology consulting firm Keane, Inc. (now NTT Data Corp.). In these roles, Tom was responsible for managing a variety of projects related to software engineering, website development, information management, and business process design for leading industry clients in the telecommunications, financial services, and other high-tech industries.
- Lead counsel for a patent owner in four inter partes reviews involving a variety of technologies relating to medical infusion pumps in which all of the litigation critical claims were confirmed as patentable, thereby clearing the way for the client’s infringement case against its primary competitor. (PTAB and N.D. Ill.)
- Represented a consortium of several global consumer electronics companies and a preeminent US university in enforcing their collective patent rights through a series of infringement actions relating to the transmission and reception of digital television signals and the ATSC digital television standard. (S.D. Fla. and C.D. Cal.)
- Represented a consortium of several global consumer electronics companies in enforcing their collective patent rights through a series of infringement actions relating to the compression of digital signals and the MPEG-2 digital compression standard. (S.D. Fla.)
- Represented a consortium of leading smartphone companies in a complex patent infringement action involving the assertion of multiple patents against an industry competitor, resulting in a favorable settlement and licensing agreement. (N.D. Tex.)
- Defended an industry founding provider of video-on-demand technologies in obtaining denial of a $100 million motion for contempt of a patent injunction entered while the client 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. (D. Del. and Fed. Cir.)
- Represented a leading computer networking equipment provider in resolving a long-standing patent infringement action involving multiple patents and cross-claims between the parties. (D. Mass.)
- Defended a popular online car-buying website in resolving a patent infringement action brought against it, resulting in a favorable settlement and license agreement. (C.D. Cal.)
- Defended a national footwear retailer in resolving a design patent and trademark infringement and licensing dispute brought by a famous international brand.
- Represented a leading provider of telecommunications equipment in an International Trade Commission proceeding involving utility and design patents for coaxial cable connectors, successfully obtaining exclusion orders to prevent the importation of infringing products. (ITC)
- 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.
- New York
- 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
- New York State Bar Association
- American Intellectual Property Law Association
- Patent Trial and Appeal Board Bar Association
- Hiscock & Barclay, LLP, Partner
- Proskauer Rose LLP, Senior Associate
- Marjama Muldoon Blasiak & Sullivan LLP, Associate
- Keane, Inc., Senior Principal Consultant
- beMANY.com, Inc., Product Development Director
- Accenture, Communications and High-Tech Industry Portfolio Manager