John E. Hoel is of counsel at Locke Lord LLP. He has 30 years of intellectual property experience primarily in the fields of computer technology and the electrical arts. He has been actively involved in litigation, infringement and validity studies, licensing negotiations and the drafting and prosecution of hundreds of original patent applications in the computer and electrical arts.
Mr. Hoel has counseled both large and small companies in the telecommunication and computer industries. He has conducted patent portfolio development projects for large and mid-sized companies and for startups. He has conducted IP due diligence investigations for clients acquiring subsidiary companies and for compliance with IPO registration requirements. He has conducted freedom-to-operate studies prior to the rollout of new products and services. He has counseled clients on various types of intellectual property agreements, software development agreements, licenses, and employee invention agreements.
Education
- J.D., Georgetown University Law Center, 1974
- B.S., Physics, University of Missouri-Rolla, 1964
Bar Admissions
- Virginia, 1974
- District of Columbia, 2004
Admitted To Practice
- U.S. Court of Appeals for the Federal Circuit, 1975
- U.S. Patent and Trademark Office, 1972
Representative Experience
- Compuware Corp. v. IBM Corp. (E.D.Mich.)
- IBM Corp. v. Compuware Corp. (S.D.N.Y.)
Represented IBM in parallel cases asserting infringement of fourteen software patents against the Compuware Corp.
- Data General v. IBM (D. Mass.)
Represented IBM in counterclaim against Data General for patent infringement involving cache memory technology.
Publications & Presentations
- Guest Editor, "Section 337 Reporter," ITC Trial Lawyers Association (Spring/Summer 2005).
- Author, "Judicial Enforcement of Commission Subpoenas: Standards Clarified," 337 Reporter, Vol. XXI, Pg. 9 (2005).
Professional History
- Of Counsel, Locke Lord LLP
- Partner, Morgan & Finnegan
- Physicist and Patent Attorney, IBM Corporation
Professional Affiliations & Achievements
- American Intellectual Property Law Association
- IP Law Section of Virginia State Bar
- New York Intellectual Property Law Association
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