Located near Los Angeles International Airport and

convenient to Palos Verdes, Manhattan Beach, Marina Del Rey, the South Bay, Torrance and the Westside

In the office working at a computer

Curriculum Vitae for

Howard Hoffenberg

Make an inquiry by sending a priority email to: mail@ipcounselor.com

Legal Experience

In 1999, Mr. Hoffenberg founded THE IP AND BUSINESS LAW OFFICES OF HOWARD HOFFENBERG, ESQ. and has practiced as a solo practitioner in the areas of litigation, business transactions, copyrights, trademarks, patent and other intellectual property rights.

At the Law Offices of Howard Hoffenberg, Esq., Mr. Hoffenberg applies his twenty-three years of experience and training in representing clients.

 

For an example of the overall representation provided to a client, here is a success story. Mr. Hoffenberg represented a client in prosecuting patent applications on pioneering technology, along with brand name protection. The pioneering technology was rapidly taken up by competitors in the industry and Mr. Hoffenberg provided opinion letters on infringement. As for one of the infringers, the matter was settled without the need for litigation. The client positioned themselves for acquisition. Mr. Hoffenberg was one of the attorneys on the acquisition.

 

Mr. Hoffenberg has provided representation in IP and business cases. For an example, he represented a software and hardware development company against a renegade employee who misappropriated software before a product launch, along with deleting and/or taking every copy and record pertaining to the software. The claims included copyright infringement and misappropriation of trade secrets. In another case, he represented a trademark owner whose mark was infringed by an upstart seeking to trade off of the good will of the established trademark owner. In another case, he represented a corporation against renegade shareholders and officers who sought to wrest control of the corporation away from current management.

 

Mr. Hoffenberg has provided legal advise to contain liability exposure for infringement of intellectual property rights and to structure business transactions. For example, one of the largest out-source manufacturers/private labelers in a particular industry was contemplating purchasing a patent. Mr. Hoffenberg provided an opinion on freedom to practice the patented technology. This opinion letter was critical to the client in its decision to acquire the patent. In another example, a client was accused of patent infringement. Mr. Hoffenberg assisted the client with legal opinions on reformulating a product to be non-infringing. He also participated in communication with counsel for the accuser and the matter was resolved without litigation.

 

Mr. Hoffenberg has drafted, negotiated and revised turnkey contracts, distributorship agreements and IP licenses for copyrights, trademarks and patents. For example, a client had an opportunity to enter into a strategic alliance with a major player in an industry where the major player would sole source with the client for a particular good/service. The upside revenue was very significant and the alliance required a turnkey contract with specialized terms for the alliance. In another example, Mr. Hoffenberg put together a license agreement between a business operator and a third-party developer for the in-licensing of customized software for that business operator.

 

Mr. Hoffenberg has drafted and prosecuted patent applications for chemical compositions, consumer products, manufacturing equipment, medical devices and so on and so forth. He has prosecuted trademark applications for clients in a multiplicity of industries ranging from education, entertainment, food, neutriceuticals, manufacturing equipment and so on and so forth. The representation has included oppositions and appeals to the Trademark Trial and Appeal Board.

 

At SHELDON & MAK, INC. (Pasadena,) Mr. Hoffenberg provided full service representation on intellectual property matters; namely, litigation, patent and trademark application prosecution, licenses and contracts, client counseling and opinion letters. He also assisted clients with certain employee related matters. The patent clients represented by Mr. Sheldon included TRW and Beckman. Mr. Hoffenberg worked on appeal briefs in patent applications for super-conductors. He also drafted a pioneering patent application on target-analyte arrays (i.e., DNA arrays.) These have become a mainstay of life science research.

 

In handling litigation at Sheldon & Mak, Inc., Mr. Hoffenberg prosecuted and defended motions for preliminary injunctions in patent, trademark, copyright and trade secret misappropriation. He was successful in achieving summary judgment in complex patent infringement cases. He approached litigation with zeal and gusto and was affectionately referred to as a mad dog. The leading testament to Mr. Hoffenberg as a litigator is that after a case was over, there were no hard feelings with opposing counsel who became referral sources to Mr. Hoffenberg.

 

At CHAPIN, FLEMING & WINET (Los Angeles), Mr. Hoffenberg was a litigation associate. Mr. Hoffenberg initially worked on a large coverage case where the underlying action was an IP case. This was followed handling other insurance coverage litigation matters. He performed that full gamut of services associated with litigation; namely, depositions, law and motion, settlement conferences and trial preparation.

 

At WILSON, KENNA & BORYS (Los Angeles), Mr. Hoffenberg was a litigation associate. Mr. Hoffenberg provided representation in litigation matters concerning employment, construction and insurance coverage. He had near full responsibility for the cases subject to reporting to Mr. Wilson. Accordingly, Mr. Hoffenberg amassed substantial experience in taking numerous depositions, law and motion, settlement conferences, arbitrations and trial preparation.

 

At Dressler, Goldsmith, Shore Sutker and Milnamow (Chicago), Mr. Hoffenberg was a law clerk. Mr. Hoffenberg assisted with patent and trademark prosecution, an interference and patent and trade secret litigation. The Dressler firms clients included Scripts clinic and Johnson & Johnson. Mr. Hoffenberg got involved in the drafting of biotech patents from the inception of the industry. He became familiar with PCT practice. At the clerk level, he assisted with briefing and hearing preparation in patent infringement and trade secret misappropriation litigation, as well as an interference.

Technical Experience

Process Engineer at the Zenith Radio Corporation (Melrose Park, Illinois) - Refined a lithographic process

Product and Process Engineer at the W.H. Brady Company (Milwaukee) - Developed adhesives and graphics products and refined a fiberglass encapsulation operation.

Senior Thesis Researcher at the University of Illinois Medical School (Urbana, Illinois) - Protein research on methylation of a response regulating proteins (the forerunner of epigenetics)

Education

Bachelor of Science degree (1982) in chemistry and biochemistry from the University of Illinois, Urbana (Deans List)

Juris Doctor degree (1985) from DePaul University in Chicago, Illinois (Law Review and American Jurisprudence Award in torts)

Bar Admissions

California, Illinois and New York.

United States Patent and Trademark Office

United States Supreme Court

United States Court of Appeals for the Seventh, Ninth and Federal Circuits

United States District courts in California and Northern District of Illinois

Entrepreneur

As mentioned above, after finishing law school, and before starting his career as a litigation and business transaction attorney, Mr. Hoffenberg took a time out to be an entrepreneur. Along with family members, Mr. Hoffenberg designed a product, hired an artist to create graphics for packaging, lined up and subcontracted out manufacturing of component parts and packaging, performed in-house assembly and sold the product nationally through a chain store. Accordingly, Mr. Hoffenberg can first hand related to entrepreneurs.

Childhood

In childhood, Mr. Hoffenberg had an exposure to business and patents. He comes from a family of engineers, garage tinkiers who invented things and small business owners. The father of Mr. Hoffenberg was a small business owner and his company had patents. Since about age 5, Mr. Hoffenberg knew about patents and was fascinated by them. Being the son of small business owner, he grew up around small business and understands it.

Accomplishments

Key patents for which Mr. Hoffenberg drafted the original application that was filed with the US Patent Office are: US 5,922,608 for Macromolecule Sequencing Packet and Method of Use; U.S. 6,110,749 System for Simultaneously Conducting Multiple Ligand and Binding Assays and 6,686,084 for Gas Blocking Mechanism for Water Removal in Fuel Cells. Key patent litigation on which Mr. Hoffenberg was counsel that resulted in published opinions are: Suresafe Industries, Inc. v. C.& R Pier Mfg., 850 F.SUPP. 869 and Andamiro USA v. Konami Amusement of America, Inc, 59 U.S.P.Q2d The 1094, 2001 WL 535667.

Epilog

Accordingly. Mr. Hoffenberg is well suited to help small and medium size business grow and prosper through the utilization of trademarks, patents, copyrights and other intellectual property rights. He can provide guidance regarding controlling exposure for infringement patents, trademarks and copyrights held by others and reduce the risk of litigation. If there is no getting around a patent, copyright or trademark held by another, Mr. Hoffenberg can assist with in-licensing rights. Mr. Hoffenberg has first hand familiarity with problems and weakness in patents and licenses that come out in litigation. He utilizes this knowledge to draft stronger patents and licenses. Finally, when litigation is needed, Mr. Hoffenberg is a heavy duty and innovative litigator.

Courthouse

Copyright 2010 The IP and Business Law Offices of Howard L. Hoffenberg, Esq. All Rights Reserved.

Ethics are

High

and

Prices are

Moderate

(By Zachary Gordon)

Pro Tem Judge in the Municipal Court

* Handling patents, trademarks, copyrights, business transactions and litigation

*Technical expertise for chemical, biotech, life science, medical device and mechanical device inventions