Stephen A. Soffen
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Stephen Soffen focuses his practice on high technology electronic, semiconductor, and medical device patent matters, including client counseling, licensing, and litigation.
Mr. Soffen has assisted numerous domestic and foreign clients in developing and strengthening their intellectual property portfolios. In addition, he has extensive experience handling complex reexamination, reissue, and interference proceedings before the U.S. Patent and Trademark Office, where he has successfully defended the patents of his clients and challenged the patents of his client’s competitors. He also has assisted many clients in avoiding litigation and settling disputes by preparing and negotiating licensing agreements.
Intellectual Property Procurement and Counseling
Mr. Soffen devotes a substantial portion of his practice to rendering opinions and counseling clients in intellectual property matters. Under his direction, a number of clients have substantially bolstered their competitive position and derived significant additional income from their intellectual property assets. His opinions also have been successfully used both offensively and defensively in litigation.
Intellectual Property Litigation and Licensing
He has been involved in numerous intellectual property lawsuits on technologies ranging from laser and video recording, to power MOSFET transistor structure and fabrication, to arthroscopic medical devices and instruments. Favorable judgments and settlements in these cases have resulted in millions of dollars of income for his clients, in some cases fundamentally improving the bottom line of the companies he represented.
On a number of occasions, Mr. Soffen has served as intellectual property counsel in connection with transactional matters, involving, for example, the acquisition of a subsidiary or the transfer of technology associated with a joint venture.
Following graduation from Cornell University, he was employed as an electrical engineer for the Polaroid Corporation in Cambridge, Massachusetts, from 1978 to 1981, working primarily in the field of electro-optics. He then began his career in the patent field as a patent examiner in the data processing art unit of the U.S. Patent and Trademark Office from 1981 to 1982. He next served as a law clerk and technical adviser to the Honorable Helen W. Nies at the U.S. Court of Appeals for the Federal Circuit from 1983 to 1985. Following his clerkship, he joined an IP boutique firm in 1985, became a partner in 1990, and served as a member of the firm’s Executive Committee from 1996 to 2001.
COMMUNITY SERVICE & AFFILIATIONS
During his tenure at the U.S. Court of Appeals for the Federal Circuit, Mr. Soffen organized and conducted the 1984 National Finals of the Giles S. Rich Moot Court Competition. He has lectured for the Practicing Law Institute on the subjects of Electronic and Computer Patent Law – Post-Issuance Activities before the U.S. Patent and Trademark Office (1990) and on the Discovery and Use of Opinions in Litigation (2001).
- 2013–2015, Legal 500
- 2015, Capital Pro Bono Honor Roll
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