Sterne Kessler Building Interior

Robert E. Sokohl

Director
Robert E. Sokohl

Robert E. Sokohl is a director in Sterne Kessler’s Electronics Practice Group and is a member of the firm’s Executive Committee. He is a strategic adviser to multi-billion dollar companies, publicly-traded companies and start-ups.  Robert has prepared and prosecuted thousands of patent applications on various technologies and counsels on the procurement, enforcement and licensing of intellectual property.  He manages patent portfolios (both domestic and foreign) that range in size from just a few assets to well over a thousand.

Robert prepares patentability, state-of-the-art, infringement and validity opinions.  He has managed intellectual property due diligence investigations relating to the acquisition of portfolios and/or companies.  He has an extensive practice in post grant proceedings before the U.S. Patent and Trademark Office, such as ex parte reexaminations, inter partes reexaminations, inter partes reviews (IPR), and covered business method reviews (CBM).  He has managed and/or served as lead counsel for over dozen IPR and CBM matters 

Robert’s recent litigation experience includes a lead role in representing Jingle in Grape Technology Group, Inc. et al. v. Jingle Networks in the district court where the firm successfully defended Jingle at trial.   Additionally, Robert was lead counsel in the district court and an Appeal to the Federal Circuit in decisioning.com v. TD Ameritrade, et al. (D.S.C. 2007) where the court affirmed summary judgment of no infringement.  As part of these efforts, he was intimately involved with the preparation of the claim construction briefs, summary judgment briefs, as well as all aspects of discovery for the defendants.

Robert was also co-counsel in the seminal 2014 Supreme Court case Alice Corporation Pty Ltd. v CLS Bank International et al., which related to application of the abstract idea exception to computerized business method claims.  He was also co-author of the Appellants' Brief filed in In re Beauregard, 53 F3d 1583, 35 USPQ2d 1383 (Fed. Cir. 1995). This case was brought by IBM to establish that a computer program on a disk was patentable subject matter. It resulted in the USPTO issuing software patent guidelines, which expanded the scope of patent protection for software.

Robert earned his J.D. from American University Washington College of Law and his B.S. in computer engineering from Syracuse University.

Achievements

  • IAM Patent 1000, "Recommended Lawyer - Transactions, Prosecution, and Patent Litigation (Bronze Band)" (2017-2014)
  • The Legal 500, "Highly Recommended Lawyer - Patent Prosecution (including reexamination and post-grant proceedings)" (2017)

Representative Matters

 Mr. Sokohl has significant litigation experience, particularly in defending clients in intellectual property disputes:
  • Grape Technology Inc. et al. v. Jingle Networks, Inc.
  • decisioning.com v. TD Ameritrade
  • Toy v. TD Ameritrade
  • Supracor v. Reebok
  • Janigian v. Group 1 Software

Contact Information

Phone Number

Education

J.D.
American University Washington College of Law
B.S.
Computer Engineering
Syracuse University

Admissions

District of Columbia
United States Patent & Trademark Office