Overview

David Hoffman’s hardworking, budget-aware approach to the law helps him build long-term relationships with clients who trust him to make decisions not only about litigation, but also about whether to settle or take an entirely different path.

David's practice focuses on patent litigation, inter partes review proceedings, commercial and civil litigation, patent prosecution, intellectual property counseling, and patent portfolio management.

He has a highly successful record in regular appearances before many tribunals, including:

  • U.S. District Courts, with extensive familiarity with the Western District of Texas
  • U.S. International Trade Commission, with considerable high-stakes patent litigation experience
  • Patent Trial and Appeal Board, where he has appeared in more than 60 IPRs

    • In addition to his expertise in patent opinions, David 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.

    David has emerged as a go-to authority in the Western District of Texas. Since 2018, that court has quickly transformed into a highly active venue for patent infringement litigation. David has read nearly every order issued by the court and has a deep understanding of its procedures on claim construction hearings, motions for transfer of venue, and other proceedings, as well as comprehensive knowledge of the nuances surrounding jury trials in one of the hottest venues for patent cases.

    David’s technical background includes working as a configuration engineer and production supervisor for Applied Materials, Inc. (2000-2003), where 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. He was also a system analyst for Ford Motor Company (1995). Before practicing law, David served in the U.S. Army as an infantry platoon leader (1998-2000) and company executive officer (1999). He then continued that service in the Texas National Guard as a platoon leader (2000-2002).

    Experience

    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

  • IPR2016-01621    Kingston Technology Company v. Polaris Innovations Limited (Final decision — asserted claims invalid)
  • IPR2017-00974    Kingston Technology Company v. Polaris Innovations Limited (Final decision — asserted claims invalid)
  • IPR2017-00114    Kingston Technology Company v. Polaris Innovations Limited (Final decision — instituted claims invalid)
  • IPR2017-00116    Kingston Technology Company v. Polaris Innovations Limited (Final decision — asserted claims invalid)

    • NVIDIA

  • IPR2017-00381     NVIDIA Corp. v. Polaris Innovations Limited (Final decision — asserted claims invalid)
  • IPR2017-00901     NVIDIA Corp. v. Polaris Innovations Limited (Final decision — asserted claims invalid)
  • IPR2017-01500     NVIDIA Corp. v. Polaris Innovations Limited (Final decision — asserted claims 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)

    • Heil Environmental

  • IPR2018-00139 The Heil Co. v. Advanced Custom Engineered Systems & Equipment Co. (Final decision — asserted claims invalid)

    • Patent Litigation

  • 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). Represented plaintiff SRI against Cisco in a patent infringement suit involving network security technology. Jury verdict for $23.7 million.
  • Twenty-First Century Technologies v. Chicony Electronics, 1:16-cv-00016 (Western District of Texas). Represented defendant in breach of contract suit involving electroluminescent keyboards. Case settled favorably.
  • 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 online printing. Case dismissed by plaintiff
  • CATR v. Kingston, 8:14-cv-1352-JLS (Central District of California). Represents 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. Case 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.  Case 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 a 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). Represented 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). Represented 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). Represented 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., No. 10-0243-C (Western District of Wisconsin). Represented 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). Represented 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 transferred 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 a seven-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.

    • Trade Secret

  • Windrock v. Advanced Machinery Solutions (Southern District of Texas). Represented plaintiff Windrock in a trade secrets matter involving pump monitoring equipment. Attained temporary restraining order and preliminary injunction in favor of Windrock. Case settled favorably for client.
  • Confidential Matter. Representing a major technology company in connection with an assertion of trade secret theft by new employees.
  • Downhole Technology v. Stormfield Innovative Technology (Southern District of Texas). Represented Defendant Stormfield in matter asserting patent and trade secret related to downhole production equipment. Case settled favorable for client with no finding of trade secret violation.

    • Other 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.

    • Testimonials

  • “David Hoffman is exceptionally smart, solutions-oriented, and practical. He has no ego and feels like a true partner.” – Client Testimonial, 2023 Chambers & Partners USA
  • "I’d highly recommend David Hoffman. He’s very strategic and client focused. He has great patent litigation skills." — Client Testimonial, 2022 Chambers and Partners USA
  • “David Hoffman is an incredible attorney and I would recommend him to anyone.” — Client Testimonial, 2021 Chambers and Partners USA

    • Pro bono activities 

    David has dedicated his time to numerous pro bono causes, most particularly voting rights matters aimed at ensuring equal access to the polls. He serves as the pro bono coordinating attorney for the firm’s Austin office. 

    Case work 

  • Represented the Asian American Legal Defense and Education Fund and other plaintiffs in a pro bono case involving limited-English-proficient voters bringing interpreters to assist at the polls. Texas law, which was ultimately changed due to the lawsuit, required interpreters to be registered voters. The federal district judge said the law was a contradiction of the Voting Rights Act. Fish was subsequently granted $191,000 in attorneys’ fees, which was used to create a new $100,000 scholarship at the University of Texas School of Law and to make donations to three nonprofit organizations. (OCA Greater Houston, et al. v. State of Texas, et al., No. 1:15cv679 [W.D. Tex. August 1, 2016]).

  • Represented plaintiff in the case referenced: “Texas voting law on language interpreters violates Voting Rights Act, court says,” Texas Tribune (August 17, 2017). 

    • Organizations 

  • Volunteer Legal Services of Central Texas, Board of Directors