Principal / Austin / 512-226-8154
hoffman@fr.com

David M. Hoffman

David M. Hoffman is a Principal in Fish & Richardson’s Austin office. Mr. Hoffman’s practice emphasizes patent litigation, post-grant review, patent prosecution, intellectual property counseling.

Mr. Hoffman has particular experience in high stakes patent litigation before the International Trade Commission and a variety of federal district courts. Mr. Hoffman has experience successfully managing cases from inception through trial and beyond on behalf of both patent holders and parties accused of patent infringement.

In addition to his experience in litigation, Mr. Hoffman has helped clients pursue patent rights in well over 100 patent applications in a wide variety of electrical and mechanical disciplines including semiconductor technology, memory, software, and wireless communications. Mr. Hoffman also helps clients in a wide variety of opinion matters and in Inter Partes Review proceedings before the United States Patent Office.

With regard to post-grant practice, Mr. Hoffman has particular experience assisting patent owners in the defense of their patent in inter partes review. With years of experience in both high stakes patent litigation and patent prosecution, Mr. Hoffman brings a combination of litigation savvy and patent office know-how that fits in well with the hybrid nature of an inter partes review.
Mr. Hoffman also has technical experience as a Configuration Engineer and Production Supervisor for Applied Materials, Inc. (2000-2003). While at Applied Materials, he performed configuration reviews on complex electromechanical semiconductor wafer fabrication equipment and was responsible for the supervision, training and certification of 34 final test technicians. Mr. Hoffman was also a System Analyst for Ford Motor Company (1995).
 

Education

J.D., University of Texas Law School 2004
Staff Editor, Texas Intellectual Property Law Journal 


B.S., University of Texas at Austin 1997
Electrical Engineering


B.A., University of Texas at Austin 1997
Plan II Liberal Arts
with honors

 

Admissions

  • U.S. Patent and Trademark Office 2003
  • Texas 2004
  • U.S. Court of Appeals for the Federal Circuit
  • U.S. District Court for the Eastern District of Texas
  • U.S. District Court for the Southern District of Texas
  • U.S. District Court for the Western District of Texas
  • U.S. District Court for the Western District of Wisconsin

 

Memberships & Affiliations

​2014 Member of the Texas Bar Pro Bono College

 

Other Distinctions

United States Army: Infantry Platoon Leader (1998-2000) and Company Executive Officer (1999). Texas National Guard: Platoon Leader (2000-2002)

Recognized as 2015, 2014, and 2013 Super Lawyers Rising Star

2016 Judge Suzanne Covington Individual Pro Bono Service Award Winner​

 

Selected Speeches and Presentations

Invited Speaker, June 2016, University of Texas Symposium on Patent Damages

Recent Developments in Technology Law, May 22, 2015, Austin, TX, University of Texas Technology Law Conference

Post-Grant Review Under the AIA: How USPTO Proceedings are Changing Patent Litigation Practice, December 11, 2014, Austin Association of Corporate Counsel, December Meeting

Antitrust & Technology Update, May 22, 2014, Austin, TX, University of Texas Advanced Technology Law Conference

Executive Agency Involvement in IP Issues, February 21, 2014, Austin, TX, Texas Intellectual Property Law Journal Symposium

Antitrust Update for Patents, October 31, 2013, Austin, TX, Advanced Patent Law Institute CLE

Litigation Holds and Spoliation in Light of Rambus, October 27, 2011, Austin, TX, Advanced Patent Law Institute CLE

International Patenting and Enforcement, July 15, 2011, San Antonio, TX, State Bar of Texas Advanced Litigation Course.

The ITC’s Unique Trial Related Procedures, May 23, 2011, Beijing, China, International Trade Commission Trial Lawyers Association, Section 337 Seminar for Chinese Enterprises.

The ITC’s Unique Trial Related Procedures, May 27, 2011, Guangzhou, China, International Trade Commission Trial Lawyers Association, Section 337 Seminar for Chinese Enterprises.

 

Media Mentions

Lifefactory Patent on Protective Sleeves for Containers Survives IPR With Most Claims Intact​,” IPWatchdog, August 2016.

Federal Court Blocks Texas Law Restricting Language Assistance to Voters​,” AALDEF Press Release, August 2016.

Software Co. Loses IP Review Bid After Late PTAB Petition,” Law360, June 2016.

Cisco Hit With $24M Verdict in Network Surveillance IP Row,” Law360, May 2016.

Biomedical Orthopedic Implant Patent Survives AIA Review,” Law360, May 2016.

2 Cypress RAM Patents Survive AIA Reviews,” Law360, April 2015.

 

Experience

Inter Partes Review

Cypress

IPR2014-00121   GSI Technology, Inc. v. Cypress Semiconductor Corporation (Final Decision – Claims Found Valid)

IPR2014-00202   GSI Technology, Inc. v. Cypress Semiconductor Corporation (Final Decision – Claims Found Valid)

IPR2014-00419   GSI Technology, Inc. v. Cypress Semiconductor Corporation (Non-Institution)

IPR2014-00426   GSI Technology, Inc. v. Cypress Semiconductor Corporation (Dismissed by Petitioner – Claims Valid)

IPR2014-00427   GSI Technology, Inc. v. Cypress Semiconductor Corporation (Dismissed by Petitioner – Claims Valid)

Kingston

IPR2015-00149   Kingston Technology Company, Inc. v. CATR Co., Ltd. (All Claims From Litigation Found Invalid)

IPR2015-00559   Kingston Technology Company, Inc. v. CATR Co., Ltd. (All Claims From Litigation Found Invalid)

Lifefactory

IPR2015-00614   Leapfrog Product Development, LLC v. Lifefactory, Inc. (14 of 21 claims found valid)

BME

IPR2015-00786   Wright Medical Technology, Inc. v. Biomedical Enterprises, Inc. (Final Decision – Claims Found Valid)

Secured Mobility

IPR2015-01043   Secured Mobility LLC v. Zonar Systems, Inc. (Dismissed Pursuant to Settlement Agreement)

FedEx

CBM2015-00093   FedEx Office and Print Services, Inc. v. CDR Printing LLC (Dismissed after District Court Case Dismissed)

IPR2015-01134      FedEx Office and Print Services, Inc. v. CDR Printing LLC (Dismissed after District Court Case Dismissed)

Yodlee

IPR2016-00275   Plaid Technologies, Inc. v. Yodlee, Inc. and Yodlee.com, Inc. (Non-Institution)

CBM2016-00037 Plaid Technologies, Inc. v. Yodlee, Inc. and Yodlee.com, Inc. (Non-Institution)

CBM2016-00045 Plaid Technologies, Inc. v. Yodlee, Inc. (Non-Institution)

CBM2016-00070 Plaid Technologies, Inc. v. Yodlee, Inc. (Non-Institution)

CBM2016-00082 Plaid Technologies, Inc. v. Yodlee, Inc. (Non-Institution)

CBM2016-00088 Plaid Technologies, Inc. v. Yodlee, Inc. (Terminated – All Claims Remain Valid)

CBM2016-00089 Plaid Technologies, Inc. v. Yodlee, Inc. (Terminated – All Claims Remain Valid)

IPR2016-00273   Plaid Technologies, Inc. v. Yodlee, Inc. (Terminated – All Claims Remain Valid)

CBM2016-00056 Plaid Technologies, Inc. v. Yodlee, Inc. (Terminated – All Claims Remain Valid)

Litigation

OCA-Houston v. State of Texas 1:15-CV-00679 (Western District of Texas), Represented pro bono the Asian American Legal Defense and Education Fund (AALDEF) and other plaintiffs  in a case involving limited English proficient voters bringing interpreters to assist at the polls. The Texas law at issue in the case required interpreters to be registered voters. The federal district judge granted AALDEF’s motion for summary judgment and enjoined the Texas law due to its’ contradiction of the Voting Rights Act, which protects the rights of voters to select persons of their choice to assist them at the polls

Biomedical Enterprises, Inc. v. Solana Surgical, LLC (Western District of Texas), First Chair Trial Attorney Represented Plaintiff against Solana in a patent infringement suit involving medical device technology.  Settled Favorably at Trial.

SRI Int’l, Inc. v. Cisco Systems, Inc., 13-1534 (District of Delaware), Representing Plaintiff SRI against Cisco in a patent infringement suit involving network security technology.  Jury Verdict for $23.7M.

Twenty-First Century Technologies v. Chicony Electronics, 1:16-cv-00016 (Western District of Texas).  Representing Defendant in breach on contract suit involving electroluminescent keyboards.  Case pending.

STI International v. Double Nickel, LLC, 1:16-cv-00068 (Western District of Texas).  Represented Plaintiff in declaratory injunction action involving contract related to firearm production.  Case settled favorably.

Double Nickle, LLC d/b/a Detonics Defense Technologies v. STI International, 3:16-cv-00181 (Southern District of Illinois).  Represented Defendant in breach of contract action related to firearm production.  Case settled favorably after preliminary injunction hearing.

Graham Springs v. FedEx Office and Print Services, 2:15-cv-912 (Western District of Texas).  Represented Defendant in Patent Infringement suit involving copy equipment.  Case dismissed by Plaintiff prior to answering.

e.Digital v. Spansion, 3:15-cv-00141-H-BGS (Southern District of California).  Represented Defendant Spansion against e.Digital in a case involving Flash Memory.  Case Dismissed by Plaintiff.

CDR v. FedEx Office, 2:14-cv-00801-JRG (Eastern District of Texas).  Represented Defendant FedEx Office against CDR in a case involving on-line printing.  Case Dismissed by Plaintiff

CATR v. Kingston, : 8:14-cv-1352-JLS (Central District of California).  Representing Defendant Kingston against CATR in a case involving USB memory devices.  Case Pending.

Via Vadis v. D-Link, 1:14-cv-00812-LY (Western District of Texas).  Represented Defendant D-Link against Via Vadis in a case involving networking technology.  Settled Favorably.

Cypress Semiconductor Corp. v. GSI Technology, Inc., 3:13-cv-02013 & 3:13-cv-03757 (Northern District of California), Represented Plaintiff Cypress against GSI in a patent infringement suit involving SRAM memory.  Case Settled.

Technology Properties Limited, LLC v. Kingston Technology Corp., 6:12-cv-00202 (Eastern District of Texas), Represented Defendant in a patent infringement suit against TPL involving flash memory card readers.  Settled favorably.

Uni-Pixel Displays Inc. v. Conductive Inkjet Technology Limited (Montgomery County State Court, TX), Represented Plaintiff in a Breach of Contract action and in a Declaratory Judgment action involving printed display technology.  Case settled favorably.

Innovatio IP Ventures v. FedEx Corp., 1:11-cv-09308 (Northern District of Illinois), Represented FedEx in a patent infringement suit involving wireless network technology.  Case settled favorably after bench trial on damages.

Microsoft v. John Doe 1 et al., 1:13-cv-01014 (Western District of Texas), Represented Microsoft in a cyber-crime proceeding against malicious bot-net operating in Texas and throughout the United States.  Case dismissed after international law enforcement involvement against bot-net operators.

Airstrip Technologies, Inc. v. MVISUM, Inc., 1:12-cv-07776 (Southern District of New York), Represented Plaintiff Airstrip against MVISUM in a patent infringement suit involving remote medical monitoring technology.  Case settled favorably.

CERTAIN COMPUTERS AND COMPUTER PERIPHERAL DEVICES AND COMPONENTS THEREOF AND PRODUCTS CONTAINING THE SAME, 337-TA-841 (International Trade Commission). Lead trial counsel representing Respondent Kingston against TPL in suit involving flash memory card readers.  Commission found non-infringement of all three patents asserted against Kingston.

MOSAID v. Freescale et al., Case No. 6:11:cv-000173 (Eastern District of Texas). Representing NVIDIA in patent infringement suit filed by MOSAID involving nine patents concerning various aspects of processor operation and design. Case settled favorably.

Semcon Tech v. Texas Instruments Inc., Case No. 12-534 (District of Delaware). Representing Defendant TI in patent infringement suit involving chemical mechanical polishing of semiconductors. Case settled favorably.

TQP v Federal Express Corporation, Case No. 2:12-cv-00262 (Eastern District of Texas). Representing Federal Express Corporation in patent infringement suit filed by TQP involving encryption technology. Case settled favorably.

CERTAIN UNIVERSAL SERIAL BUS (“USB”) PORTABLE STORAGE DEVICES, INCLUDING USB FLASH DRIVES AND COMPONENTS THEREOF, 337-TA-788 (International Trade Commission). Represented Respondents Ritek and Verbatim against Trek in suit involving USB drives. Case resolved favorably before trial.

Integrated Device Technology, Inc. v. Phison Electronics Corp., Case No. CV-10-5168 (Northern District of California). Represented Phison in patent infringement suit involving three patents concerning aspects of on-chip oscillators. Case settled favorably.

SanDisk v. Kingston et al., Case No. 10-0243-C (Western District of Wisconsin). Representing Kingston adverse to SanDisk in case involving flash memory products. District Court found on summary judgment that Kingston did not infringe asserted SanDisk patents. Case settled favorably.

CERTAIN INTEGRATED CIRCUITS, CHIPSETS, AND PRODUCTS CONTAINING SAME INCLUDING TELEVISIONS, MEDIA PLAYERS, AND CAMERAS, 337-TA-709 (International Trade Commission). Represented Complainant against various television manufacturers and retailers. Major parties settled favorably prior to trial.

SanDisk v. Phison et al., Case Nos. 07-0605-C and 07-0607-C (Western District of Wisconsin). Representing Kingston adverse to SanDisk in case involving flash memory products. District judge found on summary judgment that Kingston did not infringe asserted SanDisk patents. Case settled favorably.

Freescale Semiconductor v. Panasonic Corp. et al., 10-CA-138 (Western District of Texas). Represented Freescale Semiconductor in patent infringement suit involving integrated circuit and semiconductor packaging technologies. Case settled favorably.

Freescale Semiconductor v. Panasonic Corp. et al., 10-CA-139 (Western District of Texas). Represented Freescale Semiconductor in patent infringement suit involving semiconductor packaging technologies. Case settled favorably.

U.S. Ethernet Innovations v. Acer et al, 6:09-CV-448 (Eastern District of Texas). Represented NVIDIA in patent infringement case involving Ethernet technology. Case transfer to new counsel after successful change of venue motion.

CERTAIN SEMICONDUCTOR CHIPS HAVING SYNCHRONOUS DYNAMIC RANDOM ACCESS MEMORY CONTROLLERS AND PRODUCTS CONTAINING SAME, 337-TA-661 (International Trade Commission). Represented Respondents in investigation concerning various aspects of DRAM memory. Parties settled after trial.

Key Ovation v. Kenesis, 09-CA-144 (Western District of Texas). Represented Declaratory Judgment Defendant in case involving computer keyboards. Case dismissed.

CERTAIN FLASH MEMORY CONTROLLER, DRIVES, MEMORY CARDS, AND MEDIA, PLAYERS, AND PRODUCTS CONTAINING SAME, 337-TA-619 (International Trade Commission). Represented Respondents in investigation concerning flash memory products. Commission found non-infringement after 7 day trial.

Celerity v. Advanced Energy, 07-CA-1037 (Western District of Texas). Represented manufacturer of mass flow converters in patent infringement suit against competitor. Case resolved and dismissed.

CERTAIN RECHARGEABLE LITHIUM-ION BATTERIES, COMPONENTS THEREOF, AND PRODUCTS CONTAINING THE SAME, 337-TA-600 (International Trade Commission). Represented Complainant in investigation involving lithium ion battery technology. Case settled favorably.

Silicon Services Consortium v. Applied Materials, 06-CA-051 (Western District of Texas). Represented Defendant Applied Materials in connection with anti-trust claims and patent infringement counterclaims. Case settled.

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