Counsel

With 20 years as a practicing technologist and lawyer, Josh Van Hoven works with clients to create valuable intellectual property assets, litigates cases involving complex technologies, and regularly advises companies and strategic investors on the sale, purchase, and valuation of IP assets. Josh’s practice includes patent prosecution, client counseling, and technology litigation.    

Josh works with both large and small companies to develop patent portfolios. He brings a deep understanding of technological principles and emerging trends to his practice.  This allows him to establish a rapport with inventors and develop far-sighted patent portfolio strategies.  Although Josh has experience with many technical areas, his practice is focused on complex electrical and computing technologies, including hardware and algorithm-heavy software.  Exemplary technology areas include wireless communications, encryption, surveillance and biometric systems, graphics processors, voice codecs, video codecs, machine learning systems, data storage systems, battery systems, physiological monitoring devices, surgical devices, hybrid vehicles, and software. 

Josh also counsels clients regarding competitive threats and patent transactions.  He helps operating companies identify and acquire patents for use in competitor litigation.  On multiple occasions, these efforts have allowed Josh’s clients to achieve patent parity with a competitor that previously held a litigation advantage.  He also assists clients during product development to avoid infringement allegations. Josh also represents clients in mergers and acquisitions, with a focus on patent diligence and patent valuation.  

Josh frequently leads the technical portion of patent litigation, focusing on testimony of experts and technical witnesses, strategy regarding infringement and invalidity, and other patent-specific issues.  Josh represents clients in most of the primary patent litigation venues, including before the International Trade Commission, Northern District of California, Eastern District of Texas, the Court of Appeals for the Federal Circuit, and the Patent Trial and Appeal Board.  Josh has also prosecuted numerous reexamination and inter partes review petitions. 

Joshua's Experience

  • Served as Special Master on technical patent issues in DATATRAK International, Inc. v. Medidata Solutions, Inc, 1:11-cv-00458 (N.D. Ohio).
  • Identified, evaluated, and acquired numerous patents from individual inventors and operating companies for a large hardware company facing several potential infringement lawsuits.
  • Invensense, Inc. vs. ST Microelectronics, Inc. (USPTO) – Following denial of an Ex Parte Reexamination filed by another firm, identified new art and successfully initiated Ex Parte Reexamination on patent relating to microelectromechanical device features, with all claims currently under final rejection.  
  • Patent portfolio development and drafting for large hardware, software, medical device, and automotive companies.
  • Certain Microelectromechanical Systems (“MEMS Devices”) and Products Containing Same (USITC) – Hired three months before trial, successfully defended against five asserted patents relating to microelectromechanical devices, neutralizing  a number of asserted patents prior to trial.  Case resolved successfully during first week of trial. 
  • Stambler vs. Amazon, Inc. et al. (E.D. Tex) – Represented QVC, Inc. in litigation involving SSL/TSL encryption technologies.  Plaintiff settled with client on favorable terms following Markman hearing.
  • Following threats of a patent lawsuit against an electronics manufacturer by a competitor, prepared inter partes review petitions for critical patents of the competitor.  Upon reviewing IPRs, the competitor declined to file suit.   
  • Certain Wireless Communication System Server Software, Wireless Handheld Devices and Battery Packs(USITC) – Represented Motorola, Inc. in action filed against Research in Motion relating to smart phone hardware, software, and battery features.  Representation resulted in favorable conclusion of years-long countersuits between the parties.
  • Progressive Casualty Insurance Co. vs. Safeco Insurance Company (N.D. Ohio) – Represented defendant insurance companies in litigation relating to vehicle telematics systems for use in insurance rating.  Successfully obtained early stay of litigation following filing of Ex Parte Reexamination petitions.
  • Negotiated patent portfolio purchases from a number of large companies for a software client facing an imminent competitor lawsuit.
  • Motorola, Inc. vs. Research In Motion (USPTO) – Identified prior art and successfully initiated Ex Parte reexamination on all claims for two wireless communications patents involved in co-pending litigation.    
  • Bender vs. Linear Techs. (N.D. Cal.) – Represented Linear Technologies in patent lawsuit relating to discrete hardware technologies.  Following successful motion practice, case settled favorably.
  • Certain Consumer Electronics and Display Devices and Products Containing Same (USITC) – Represented third-party Silicon Graphics in lawsuit relating to graphics processors, successfully quashing prohibitively expensive third-party discovery.
  • Successfully initiated numerous Ex Parte reexamination petitions for a medical device client relating to critical competitor technologies.  Petitions were granted with many claims still under rejection.
  • Certain Gaming and Entertainment Consoles (USITC) – Represented Motorola, Inc. as Complainant in ITC action against Microsoft Corp. relating to wireless technologies and gaming consoles. 
  • Tria Beauty, Inc. vs. Radiancy, Inc. (N.D. Cal.) — Represented Tria Beauty, an FDA-regulated medical device manufacturer, in a false advertising lawsuit brought against a competitor marketing an unregulated device with false claims. Case settled favorably before scheduled trial in the Northern District of California.
  • Barreca v. South Beach Beverage (D. Colo., Fed. Cir.) – Successfully obtained summary judgment of non-infringement in patent action relating to consumer supplement.  Ruling was affirmed on appeal.
  • Automated Integrated Systems, Inc. vs. Roll-Rite, Inc. (W.D. Mich, 6th Cir.) – Represented trucking equipment manufacturer in defense of trade dress lawsuit by competitor.  Obtained summary judgment that the purported trade dress was functional.  Ruling was affirmed on appeal.
  • Tower Automotive vs. Lamb Technicon (Mich. St.) – Represented automotive component manufacturer in lawsuit against integrator for failures of robotic welding line for a high-volume vehicle.  Client received large settlement on the eve of trial. 

Honors & Awards

  • California Super Lawyers, Rising Star, Intellectual Property Litigation, 2013-present

Clerkships

  • Honorable Patricia A. Gaughan
  • United States District Court for the Northern District of Ohio