John Hoel

John E. Hoel


Of Counsel

 

Overview

John E. Hoel 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.

John 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.

John's experience includes 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. John has counseled clients on various types of intellectual property agreements, software development agreements, licenses and employee invention agreements.

Representative Experience

John's representative experience includes:

  • 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 14 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

Professional History

  • Of Counsel, Locke Lord LLP
  • Partner, Morgan & Finnegan
  • Physicist and Patent Attorney, IBM Corporation

Professional Affiliations and Recognitions

  • Virginia State Bar, IP Law Section
  • New York Intellectual Property Law Association
  • American Intellectual Property Law Association