Steven M. Hoffberg

Steven M. Hoffberg

Of Counsel

6462019100

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Practice Areas
  • Intellectual Property Law
Practice Locations
  • Manhattan, NY

As head of Tully Rinckey PLLC’s patent law practice, Steven’s practice areas include patent and trademark prosecution and counseling, litigation, licensing, transactions, opinions, and strategic IP portfolio development. Steven assists clients with developing, protecting, asserting, defending, licensing and monetizing their patents and trademarks, and more generally defining and implementing an enduring IP policy and consistent strategies. Steven advocate’s his client’s IP before patent and trademark examiners, and represents clients in negotiations with adversaries, before the Patent Trial and Appeal Board, Trademark Trial and Appeal Board, and Federal Courts, as well as in alternate dispute resolution proceedings.

Prior to joining Tully Rinckey PLLC, Steven worked for nearly 30 years at a number of intellectual property firms in the New York City metropolitan area, including one he founded and ran for more than a decade. Steven has extensive knowledge across a broad range of technologies, including biotech and pharma, biomedical devices, chemical compositions and processes, high tech, communications, cryptography, user interfaces, game theory, and business methods, nanotech, mechanical devices, and aerodynamics. In addition to representing clients, he is also named as inventor on over 90 US patents. He has founded a company that focuses on inter-vehicle communications, ad hoc networking, driver assistance, navigational and imaging radar technologies.

Steven received his juris doctorate from the Benjamin N. Cardozo School of Law, where he graduated Magna Cum Laude. He received a bachelor’s degree in Applied Biology, and a master’s degree in Human Nutrition and Metabolism (Department of Nutrition and Food Science, now Bioengineering) both from the Massachusetts Institute of Technology, and a master’s degree in Electrical Engineering from Rensselaer Polytechnic Institute. He also attended three years of medical school at the University of Connecticut. He is a registered United States Patent Attorney, admitted to practice in New York and Connecticut, and a Certified Licensing Professional.

Representative Matters

  • Verify Smart Corp. v. Bank of America, The Clearing House, and Askeladden (D.N.J. 2017)
  • Askeladden v. Verify Smart Corp. (IPR2017-00726, PTAB)

Public Interest Advocacy

  • Amicus Curiae brief filed eBay Inc. v. MercExchange (U.S. Supreme Court, Docket 05-130).
  • Comments on Revision of the Duty To Disclose Information in Patent Applications and Reexamination Proceedings, November 16, 2016
  • Comments on Prior Art Access, October 26, 2016
  • Comments on Changes To Implement the First Inventor To File Provisions of the Leahy-Smith America Invents Act
  • Comments on Changes to Implement Micro Entity Status for Paying Patent Fees, July 24, 2012
  • Comments on Changes to Practice for the Examination of Claims in Patent Applications
  • Comments on Changes To Practice for Continuing Applications, Requests for Continued Examination Practice, and Applications Containing Patentably Indistinct Claims, May 1, 2006
  • Comments on Information Disclosure Statements in patent applications, September 8, 2008
  • Comments on “One-way Interferences” in patent applications, January 16, 2001

Articles and Publications

  • “An enzymatic system for removing heparin in extracorporeal therapy,” Science 217:261-263, Langer, R., Linhardt, R., Hoffberg, S., Larsen, A., Cooney, C., Tapper, D. and Klein, M. (1982)
  • Linhardt, R. J., R. Langer, C. L. Cooney, P. M. Galliher, M. M. Flanagan, and S. M. Hoffberg. “Blood Deheparinization Using Immobilized Microbial Heparinase.” In Proceedings of the Second World Congress of Chemical Engineering, vol. 1. 1981.
  • “New Media: An Essential Primer,” American Lawyer’s Corporate Counsel Magazine, Cathy J. Frankel and Steven M. Hoffberg (February 1998)
  • “Privacy Issues in Telematics Services,” Telematics Update, Steven M. Hoffberg and Jackie Hutchinski (Oct. 8, 2001)
  • CRC Handbook of Chemistry & Physics, Chapter on Intellectual Property, David Rabinowitz and Steven M. Hoffberg (2003)

Court & Bar Admissions

  • Connecticut
  • New York
  • United States District Courts for the Eastern and Southern districts of New York
  • U.S. Federal Circuit Court of Appeals
  • U.S. Supreme Court

Education

  • SB: Massachusetts Institute of Technology (1980)
  • SM: Massachusetts Institute of Technology (1981)
  • MSEE: Rensselaer Polytechnic Institute (1985)
  • JD: Benjamin N. Cardozo School of Law (1989), Magna cum Laude

Accreditations/Awards

  • U.S. Patent Attorney
  • Certified Licensing Professional

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