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Katherine L. Hoffee

Associate
+1.312.807.4325
Fax +1.312.345.9987

Katherine Hoffee is an intellectual property lawyer focusing on patent litigation and patent office litigation.  She has an undergraduate degree in chemical engineering and is registered to practice before the U.S. Patent and Trademark Office. 

As a PTO-registered lawyer, Ms. Hoffee has experience in post-grant proceedings before the Patent Trial and Appeals Board.  She has experience with preparing petitions for inter partes review, working with experts to prepare supporting declarations, defending and taking expert depositions, drafting Petitioner replies, and preparing for oral arguments.  Ms. Hoffee has also been involved in the appeals of the inter partes review decisions to the Federal Circuit.

Ms. Hoffee also has experience with patent litigation matters before the Northern District of Illinois, the District of Delaware, the District of Maryland, and the International Trade Commission both in supporting and defending charges of patent infringement.  She is experienced in many phases of patent litigation, including pre-suit investigation, pleadings, fact and expert discovery, claim construction, defending and taking depositions, discovery and dispositive motion practice, summary judgment hearings, trial preparation, trial, post-trial motions and hearings, and in drafting settlement agreements.

Ms. Hoffee has experience with a variety of technologies, including medical devices, automotive parts, pharmaceuticals, positive train control, and stem cell technology.  Ms. Hoffee also has experience in patent prosecution matters, and performs due diligence reviews. 

Professional Background

During law school, Ms. Hoffee worked as a summer associate for K&L Gates, along with several other Chicago law firms. Prior to law school, Ms. Hoffee worked as an engineer at Dow Corning Corporation, first as a process design engineer for global capital projects, and then as an application engineer supporting silicone technology in the textiles market.

Professional/Civic Activities

  • Chicago Volunteer Legal Services
  • Chicago Bar Association
  • Prepared and filed inter partes review petition at the Patent Trial and Appeal Board on behalf of Petitioner, Ethicon, relating to a bipolar electrosurgical instrument.  All claims were invalidated.  Federal Circuit appeal is currently pending.
  • Prepared and filed multiple inter partes review petitions at the Patent Trial and Appeal Board on behalf of Petitioner Westinghouse Air Brake Technologies Corporation (“Wabtec”) relating to positive train control patents.  Also serving as trial counsel in corresponding patent infringement action (D. Del) brought by Siemens, Inc.
  • Prepared and filed multiple inter partes review petitions at the Patent Trial and Appeal Board on behalf of Petitioner Praxair Distribution, Inc.  Some of the petitions have been instituted and the proceedings are on-going. 
  • Prepared and filed inter partes review petition at the Patent Trial and Appeal Board on behalf of Petitioner Praxair Distribution, Inc. relating to an ion implantation system for semiconductor manufacturing.  
  • Counsel for Endologix, Inc. in patent litigation matter involving medical device technology in the District of Delaware.  Prepared and filed inter partes review petition at the Patent Trial and Appeal Board on behalf of Petitioner Endologix, Inc.  Petition was instituted but was withdrawn as part of the settlement of the corresponding infringement case. 
  • Counsel for Baxter International Inc., Baxter Healthcare Corporation, Baxter Healthcare SA, Baxalta Inc., Baxalta U.S. Inc., and Baxalta GmbH in International Trade Commission Investigation related to recombinant Factor VIII technology.
  • Counsel for LKQ Corporation in patent litigation matter involving automotive coating process in the Northern District of Illinois.  Received a favorable ruling of invalidity on summary judgement, which led to parties settling the dispute.
  • Trial counsel for NeuralStem, Inc. on issue of standing with respect to the StemCells, Inc. patents at issue.  Received ruling in favor of NeuralStem, which led to parties settling the dispute.
  • Prepared and filed multiple inter partes review petitions at the Patent Trial and Appeal Board on behalf of Petitioner Par Pharmaceutical, Inc.  Some of the petitions have been instituted and the proceedings are on-going.