Overview
Gerard von Hoffmann focuses on client practice in the medical device industry including offensive and defensive competitive strategies, infringement studies, financings, strategic transactions and patent prosecution.
His technical experience involves a variety of cardiovascular inventions, including peripheral and coronary angioplasty, balloon expandable and self-expandable stents, absorbable stents, drug eluting coatings, intracranial access and procedures, drug delivery, abdominal aortic aneurysm grafts, transluminal mitral annuloplasty, left atrial appendage occlusion devices, intravascular brachytherapy, rotational atherectomy, steerable angioplasty guidewires, and a variety of additional diagnostic and therapeutic devices and procedures.
He has been involved in a variety of orthopedic device projects, including ultrasonic total hip revision devices, bone fracture fixation devices, and various devices and procedures relating to the spine, including spinal fusion, mobility preservation, access, nucleotomy, spinal stenosis, and posterior instrumentation.
Gerard has also served on the Board of Directors of CardioVascular Dynamics, Inc. (angioplasty, drug delivery and related intravascular products), Radiance Medical Systems, Inc. (intravascular brachytherapy), Triage Medical, Inc. (orthopedic fixation devices), NeoMatrix, LLC (breast cancer screening), ValenTx, Inc. (implants for morbid obesity) and Osseon Therapeutics Inc. (unipedicular vertebroplasty). He also manages KnobbeMedical.com.
Gerard was featured in The Legal 500 firm rankings editorial section for his focus on the medical device industry and recognized for assisting startup companies Claret Medical and Direct Flow Medical on building patent portfolios.
Gerard has received multiple awards and has been honored in both national and international forums for his legal accomplishments. In 2018 – 2023, he was named one of the “World’s Leading Patent Professionals” in the Patent 1000 guide for Transactions and Prosecution by Intellectual Asset Management (IAM) magazine and has been recognized by The Legal 500 “United States” for his work in Patent Licensing and Patent Prosecution (2019 – 2021). Gerard has also been ranked in the prestigious Chambers USA Guide (2015 – 2017) Life Sciences: Intellectual Property category for his medical device practice. He has repeatedly been named a “Life Science Star” in the Legal Media Group (LMG) “Life Sciences Survey” (2012 – 2018 and 2022 – 2023), recognized as a Patent Star in Managing IP’s “IP STARS” guide (2018 – 2021, 2023), and selected for inclusion in “Southern California Super Lawyers” lists for his work in intellectual property law by Super Lawyers magazine (2004, 2006, 2013 – 2020). In 2013, Gerard was recognized by American Lawyer Media as a Top Rated Lawyer in Intellectual Property Law, and in 2011 was named among the 25 leading biotech attorneys in California and the 100 leading intellectual property (IP) attorneys in California by the Daily Journal. In 2014, Gerard was also named a winner in the 2014 “Innovator Awards” by The Recorder for his work on KnobbeMedical.com.
Clerk Experience
Honorable Helen W. Nies, Circuit Judge, U.S. Court of Appeals for the Federal Circuit, 1984 -1986
Education
- University of San Diego School of Law (USD) (J.D., 1983), cum laude
- Rice University (B.A. Chemistry, 1978)
- Occidental College
- University of Oxford (1982)
- The George Washington University Law School (1986)
Recognition
Awards & Honors
Gerard has received multiple awards for his legal accomplishments:
- Recognized for outstanding work in patent law in the 2024 edition of the Intellectual Asset Management (IAM) “Patent 1000 Guide” for Prosecution and Transaction (2024)
- Recognized as a Patent Star in Managing IP’‘s “2024 IP STARS” (2024)
- Selected by The Legal 500 “United States” for Patent Licensing and Patent Prosecution (2019 – 2021).
- Named one of the “World’s Leading Patent Professionals” in the Patent 1000 guide for Transactions and Prosecution by Intellectual Asset Management (IAM) magazine (2018 – 2023). Gerard was described as “the fulcrum” at the firm, who advises early-stage companies at a “deeply strategic and commercial level”.
- Recognized as a Patent Star in Managing IP’s “IP STARS” guide for his outstanding intellectual property legal work (2018 – 2021, 2023).
- Repeatedly selected for inclusion in “Southern California Super Lawyers” lists for his work in intellectual property law by Super Lawyers magazine (2004, 2006, 2013 – 2020).
- Named a “Life Science Star” in the Legal Media Group (LMG) “Life Sciences Survey” (2012 – 2018 and 2022 – 2023). He was recognized for his patent advisory, strategy & management and general patent litigation/protection practice. Gerard was also recognized for his work in the areas of cardiovascular devices, cosmetic devices, diagnostic implants and prosthetics, neurovascular devices, ophthalmology devices, orthopedic devices, respiratory devices and spinal implants.
- Ranked in the “Chambers USA Guide” Life Sciences: Intellectual Property category for his medical device practice by Chambers and Partners (2015 – 2017)
- Named a winner in the 2014 “Innovator Awards” by The Recorder for his work on KnobbeMedical.com.
- Recognized by American Lawyer Media as a Top Rated Lawyer in Intellectual Property Law for 2013.
- Recognized by the Daily Journal among the 25 leading biotech attorneys in California for 2011.
- Recognized by the Daily Journal among the 100 leading intellectual property (IP) attorneys in California for 2011. He was also included in the 25 Leading Portfolio Managers and Patent Prosecutors list. von Hoffmann was recognized for his patent strategy practice for early-stage companies and IP due diligence for investors in medical device firms.
Affiliations
- American Bar Association
- ABA Section on Patent, Trademark and Copyright Law
- American Intellectual Property Law Association
- Federal Circuit Bar Association
News & Insights
Articles
“5 Things an IP Attorney Will Make You Do Before You Launch a Crowdfunding Campaign,” Entrepreneur (November 2017)
“Another Patent Law Win for Orange County-Based Masimo Corporation,” Orange County Business Journal (November 2016)
“Intellectual Property Implications of the Medical Wearable and Wellness Device Revolution for Startups,” MD+DI (August 2016)
“Evaluating Freedom to Operate,” Endovascular Today (June 2014)
“Beginning the Patent Process,” Endovascular Today (May 2014)
“Protecting Your Inventions, From Idea to Marketplace,” Endovascular Today (March 2014)
“Protecting Intellectual Property in the United States and Japan: Comparing the Approaches,” The Japan America Society of Southern California, Orange County Round Table — Science/Biotech, Irvine, California, (November 19, 1991), co-author
“Nonstatutory Defenses Part II: Laches and Equitable Estoppel” Practicing Law Institute Patent Litigation course book (1991)
“Patent Drafting with Litigation in Mind,” California Republic (April 23, 1991)
“Reduction to Practice, Experimental Use, and the ‘On Sale’ and ‘Public Use’ Bars to Patentability,” 63 St. John’s Law Review 1 (1988), co-author
Speeches & Seminars
“A Healthy Dose of IP: The Evolving Legal Landscape of the Health Field,” PIPG Tenth Annual Symposium, University of Pennsylvania Law School (March 16, 2017).
“The Brave New World of Wearable Technology: How to Protect Your IP and Minimize Infringement Risks,” The Knowledge Group, (January 16, 2017).
“The Access Closure Patent Litigation Story: Success was the ONLY option,” Silicon Valley IP Impact Seminar, Palo Alto, California (November 6, 2014).
“Recent Medical Device Litigation and Lessons to be Learned,” Silicon Valley IP Impact Seminar, Palo Alto, California (November 6, 2014).
“Examination of Recent Medical Device Patent Litigation and Lessons to be Learned,” Silicon Valley IP Impact Seminar, Palo Alto, California (September 26, 2013)
“Gestation of a Medical Device Company from an Intellectual Property Perspective,” Stanford Biodesign, Palo Alto, California (February 27, 2013)
“Dealing Strategically with the America Invents Act,” Silicon Valley IP Impact Seminar, Palo Alto, California (September 24, 2012)
“Gestation of a Medical Device Company,” UCI Merage School of Business (February 9, 2012)
“Managing the Cost of IP Diligence,” OCTANe Medical Device & Investor Forum, Newport Beach, California (October 26, 2011)
“Preparing Your IP Portfolio for Investment, Acquisition, and/or Litigation Events”, Palo Alto, California (October 5, 2011)
“Stepping Forward: Calit2’s eHealth Collaboratory,” Calit2 Igniting Technology, UC Irvine, California (June 2, 2011)
“Due Diligence: A Thorough Examination of an Integral Piece of M&A,” Mergers & Acquisitions Conference, San Mateo, California (April 4-5, 2011)
“Mock Due Diligence,” CA Medical Device & Investor Forum, Irvine, California (November 10, 2009)
“How Do Companies Achieve Significant Growth Even in a Recession?,” Harvard Business School Association of Orange County, Irvine, California (October 1, 2009)
“From Idea to the Marketplace: Managing the Intellectual Property Aspects of Product Development,” Agordo, Italy (October 1, 2008)
“Aligning IP and Business Strategies,” Santa Rosa, California (August 26, 2008)
“The Impact of Recent Patent Infringement Decisions and Litigation Outcomes on Your Medical Device Company,” MedTech Insight Medical Device Summit. San Francisco, California (June 18, 2008)
“Mock IP Due Diligence,” IP Impact, San Francisco, California, (October 11, 2007)
“IP Due Diligence Survival Strategies for Medical Device Companies,” MedTech Insight In³ Medical Device Summit, San Francisco, California, (June 3, 2007)
“Why IP is C-Level,” IP Impact, San Francisco, California, (October 20, 2006)
“Survival Strategies for IP Due Diligence: A Corporate Perspective,” IP Impact, San Francisco, California, (October 20, 2006)
“Telemedicine Comes of Age: Network Technology Supports a New Model of Care,” U.C. Irvine, California, (September 14, 2006)
“Strategic Planning: Checkmating the Competition,” Stanford Law School, California, (February 8, 2006)
“IP Due Diligence Strategy,” Kauffman Fellows Program, Center for Venture Education, San Francisco, California (July 12-15, 2005)
“Channeling Intellectual Property: ‘I have a great idea…what do I do with it?’” American Thoracic Society 99th International Conference, Seattle, Washington, (May 20, 2003)
“Significant Patent Law Events Affecting the Medical Device Industry,” Sapient Capital Investors Conference, Jackson Hole, Wyoming, (March 4, 2003)
“Building and Maintaining a Strong Patent Portfolio,” Las Vegas, Nevada (October 3, 2002)
“Intellectual Property Checklist,” Harvard Business School Fifteenth Annual Entrepreneurs Conference, Irvine, California (May 3, 1999)
“Intellectual Property Issues for the Early Stage Technology Company,” Harvard Business School Fourteenth Annual Entrepreneurs Conference, Irvine, California (May 11, 1998)
“Optimizing the Value of Intellectual Property” Harvard Business School Thirteenth Annual Entrepreneurs Conference, Irvine, California (May 12, 1997)
“Patent Strategies to Enhance your Competitive Position,” The Orange County Venture Network, University of California, Irvine (February 27, 1997)
“Minimizing the Risks and Cost of Patent Litigation,” Knobbe, Martens, Olson & Bear LLP, International Intellectual Property Law Seminar, Newport Beach, California (1996)
“Patent Strategies for the Medical Industry,” Life Science Research & Technology Showcase ’96, University of California, Irvine (September 25-27, 1996)
“Getting Rich Through Patents,” Harvard Business School Twelfth Annual Entrepreneurs Conference, Irvine, California (May 20, 1996)
“Achieving and Maintaining Market Exclusivity: Non-Conventional Intellectual Property Strategies,” 4th Annual San Diego Biotech Expo and Western Biotech Conference, San Diego, California (October 19, 1995)
“Forgotten Assets: Patent, Trade Secrets, Trademarks and Copyrights,” An introductory seminar on the use of intellectual property to enhance your competitive advantage, Riverside, California (June 20, 1995)
“International Trademarks and Patents,” Sports International Forum and Reverse Trade Show, Chicago, Illinois (July 14-15, 1995)
“Getting Rich Through Patents” Harvard Business School Eleventh Annual Entrepreneurs Conference, Irvine, California (April 24, 1995)
“Intellectual Property Series Seminar: intellectual property bases for maintaining market exclusivity,” University of California, Irvine, Accelerate Technology Small Business and Development Center (April 4, 1995)
“Intellectual Property Bases for Maintaining Market Exclusivity,” The Bureau of Export Administration, U.S. Department of Commerce, 1994 Resource Matching Program, Santa Clara, California (November 17, 1994)
“Intellectual Property Bases for Maintaining Market Exclusivity,” The Bureau of Export Administration, U.S. Department of Commerce, 1994 Resource Matching Program, November 15, 1994, Long Beach, California.
“Developing a Patent Strategy; Marketing, Money and Management: An Entrepreneur’s Tool Kit,” Harvard Business School Tenth Annual Entrepreneurs Conference, Irvine, California (April 25, 1994)
“Minimizing the Risks and Costs of Patent Litigation,” La Jolla, California (March 23, 1994)
“General Principles of Patentability in the United States,” Accelerate Technology SBDC Seminar (January 19, 1994), Irvine, California
“Minimizing the Risks and Costs of Patent Litigation,” Knobbe, Martens, Olson & Bear LLP, International Intellectual Property Seminar, Newport Beach, California (November 10, 1993)
“United States Patent Litigation Seminar,” Osaka, Japan (May 31-June 1, 1993)
“United States Patent Litigation Seminar,” Tokyo, Japan (May 28-29, 1993)
“Basic Principles of Patentability” Knobbe, Martens, Olson & Bear LLP, International Intellectual Property Seminar, Newport Beach, California (February 1993)
“Strategic Patent Prosecution with Litigation in Mind, with Emphasis on the Medical Devices and Biotechnology Industries,” Kansai Tokyo Kyokai, Patent Association for West Japan, Tokyo, Japan (April 13, 1992)
“Inequitable Conduct and the Duty of Disclosure in the United States Patent and Trademark Office,” Tokyo, Japan (April 9, 1992)
“Maintaining Market Exclusivity: Patent vs. Trade Secret,” MIT Enterprise Forum of San Diego, San Diego, California (February 12, 1992)
“Nonstatutory Defenses, Inequitable Conduct, Laches and Equitable Estoppel; Practicing Institute’s Patent Litigation Seminar,” Los Angeles, California (October 10-11, 1991)
“Medical Services and Device: Venture Creation and Management in the 90’s,” Harvard Business School Association of Orange County, Venture Conference (April 25, 1991), Costa Mesa, California.