Jason currently heads Sterne Kessler’s Reexamination and Reissue Practice after serving as the Electronics Practice Group Leader for several years.

Jason D. Eisenberg

Director

jasone@sternekessler.com
+1 202.772.8645
LinkedIn

Overview

Jason D. Eisenberg is a director in Sterne Kessler’s Electronics Practice Group and a Practice Leader for the Reexamination and Reissue Practice. Jason was previously a Practice Group Leader in the Electronics Practice Group, Editor and Author of the PTAB Strategies and Insights monthly newsletter, and Chair of the Docketing Committee. Jason and Robert Greene Sterne were co-editors and authors of several chapters of the Second Edition of Patent Office Litigation (Thomson Reuters, 2017).

Jason provides strategic counsel for global portfolio building, reissue (over 100 projects and as a litigation expert), reexamination (over 50), inter partes and post grant review (over 250), Federal Circuit (20) and Supreme Court appeals (cert petitions and amici briefs), opinions (over 100), diligence, enforcement, and defense from nearly thirty years of patent experience.

Jason gained his experience before law school as a public searcher and a U.S. Patent and Trademark Office (USPTO) patent examiner and during law school as a patent agent in several Cleveland, Columbus, and D.C. law firms and as an extern at the Ohio Supreme Court for Justice Cook.

Jason has also taught as an adjunct professor for Patent Writing Theory & Practice at Antonin Scalia Law School at George Mason University in Fall 2022 and Patent Office Litigation at the University of Baltimore School of Law in Fall 2021 and George Mason University in Fall 2019 and 2020.

Before law school, Jason spent over four years as a patent examiner in previous-Group 2500 and current Group 2800 examining cases in Optical Measuring and Testing, Optical Elements, Optical and Magnetic Information Storage and Retrieval, and Antennas. In addition to his core examination duties, Jason analyzed, classified, and assigned all cases for his art unit and was also a voluntary equal opportunity employment counselor at the USPTO, where he performed fact investigations for EEO complaints filed by USPTO employees. Finally, during college breaks, Jason spent several years as a patent/public searcher for a law firm and spent a summer as a USPTO patent clerk for a group director and a supervisory patent examiner in previous-Group 2500.

Jason earned a J.D. at The Ohio State University Moritz College of Law, a B.S. in Accounting at University of Maryland University College, and a B.S. in Electrical Engineering at The Ohio State University.

Representative Matters

Jason has been substantially involved in nearly 250 AIA proceedings (IPR, CBM, and PGR): 200 patent owner cases and more than 50 petitioner cases at the PTAB. The following is a list of some of his appellate cases as of January 14, 2021:

  • Federal Circuit Appeal No 20-1994: Rovi Guides v. Iancu (Intervenor)
  • Federal Circuit Appeal No 20-2111: Rovi Guides v. Iancu (Intervenor)
  • Federal Circuit Appeal No 20-2202: Rovi Guides v. Iancu (Intervenor)
  • Federal Circuit Appeal No 20-2206: Rovi Guides v. Iancu (Intervenor)
  • Federal Circuit Appeal No 20-2214, -2215, -2216, -2217: Veveo v. Iancu (Intervenor)
  • Federal Circuit Appeal No 20-2288: Rovi Guides v. Iancu (Intervenor)
  • Federal Circuit Appeal No 19-2438; 19-2439: Vivint, Inc. v. Alarm.com Inc.
  • Federal Circuit Appeal No 19-1215, 1216, 1218: Rovi Guides, Inc. v. Comcast Cable Communications
  • Federal Circuit Appeal No 19-1293, 1294, 1295: Rovi Guides, Inc. v. Comcast Cable Communications
  • Federal Circuit Appeal No 19-1309: Rovi Guides, Inc. v. Comcast Cable Communications
  • Federal Circuit Appeal No 18-2422: Veveo, Inc. v. Comcast Cable Communications
  • Federal Circuit Appeal No 19-1129, 1131: Rovi Guides, Inc. v. Comcast Cable Communications
  • Federal Circuit Appeal No 19-1188: Rovi Guides, Inc. v. Comcast Cable Communications
  • Federal Circuit Appeal No 13-1549: K/S HIMPP v. Hear-Wear Technologies, LLC
  • Federal Circuit Appeal No 14-1357: Hear-Wear Technologies, LLC v. K/S HIMPP
  • Federal Circuit Appeal No 14-1369: Hear-Wear Technologies, LLC v. K/S HIMPP
  • Federal Circuit Appeal No 16-2394; 16-2395; 17-1105; 17-1106; 17-1107; 17-1108: Capella Photonics, Inc. v. Cisco Systems, Inc., et. al.
  • Federal Circuit Appeal No 17-1726: Tinnus Enterprises, LLC v. Telebrands Corporation
  • Federal Circuit Appeal No 17-2076: Vivint, Inc. v. Alarm.com Inc.
  • Federal Circuit Appeal No 17-2112: Vivint, Inc. v. Alarm.com Inc.
  • Federal Circuit Appeal No 17-2218; 17-2219; 17-2220: Vivint, Inc. v. Alarm.com Inc.
  • U.S. Supreme Court Case. No. 14-744, Petition for a Writ of Certiorari for K/S HIMPP v. HearWear Technologies, Denied Feb. 23, 2015.
  • U.S. Supreme Court Case. No. 18-314, Petition for a Writ of Certiorari for Capella Photonics v. Cisco Systems, Denied Nov. 5, 2018.
  • U.S. Supreme Court Cases No. 20-74, 20-273, 20-414, Petition for a Writ of Certiorari for US v. Rovi Guides; Rovi Guides v. Comcast Cable Communications; Comcast Cable Communications v. Rovi Guides.
  • U.S. Supreme Court Cases (Combined). No. 19-1434, 1452, 1458, Amicus for Petition and Merits stages for TiVo in Arthrex v. Smith & Nephew cases.

Accolades

  • Patexia, “100 Best Performing Attorneys Representing Patent Owners – PTAB (Ranked #4)” (2023)
  • Patexia, “100 Best Performing Attorneys Overall – PTAB (Top 50)” (2023)
  • Patexia, “100 Most Active Attorneys Representing Patent Owners – PTAB (Top 50)” (2023)
  • Patexia, “100 Most Active Attorneys Overall – PTAB” (2023)
  • Patexia, “100 Most Active Attorneys Representing Patent Owners – Inter Partes Review (Top 50)” (2022)
  • Patexia, “100 Best Performing Attorneys Representing Patent Owners – Inter Partes Review (Top 50)” (2022)
  • Patexia, “100 Most Active CAFC Attorneys Representing Patent Appellants (Top 10)” (2022)
  • Patexia, “100 Most Active CAFC Attorneys Overall (Representing Appellants and Appellees) (Top 50)” (2022)
  • Patexia, “100 Best Performing CAFC Attorneys Representing Appellants (Top 50)” (2022)
  • Patexia, “100 Best Performing CAFC Attorneys Overall (Representing Appellants or Appellees) (Top 50)” (2022)
  • JD Supra, “Reader’s Choice Award” (2020)

Education

  • J.D., The Ohio State University Moritz College of Law
  • B.S., Accounting, University of Maryland University College
  • B.S., Electrical Engineering, The Ohio State University

Admissions

  • District of Columbia
  • Ohio
  • Supreme Court of the United States
  • U.S. Court of Appeals for the Federal Circuit
  • United States Patent & Trademark Office

Related Resources From Jason D. Eisenberg

Press Release Award-Winning PTAB Team Publishes 2023 PTAB Year in Review: Analysis & Trends Report Sterne, Kessler, Goldstein & Fox February 8, 2024
Press Release Sterne Kessler Achieves Top Litigation Rankings in Patexia’s 2023 PTAB Intelligence Report Sterne, Kessler, Goldstein & Fox September 18, 2023
In the News Patexia Insight 161: Top CAFC Law Firms of 2022 Patexia December 1, 2022
In the News Patexia Insight 158: Top IPR Firms of 2022 Patexia November 10, 2022
Firm Announcements Sterne Kessler Raises Over $34,000 for the Legal Aid Society of the District of Columbia Sterne, Kessler, Goldstein & Fox August 8, 2022
Firm Announcements Sterne Kessler and D.C. Bar Pro Bono Center Host Sixth Annual Small Business Clinic Sterne, Kessler, Goldstein & Fox June 9, 2022
Press Release Sterne Kessler Publishes 2021 PTAB Year in Review: Analysis & Trends Report Sterne, Kessler, Goldstein & Fox March 7, 2022
In the News Fed. Circ. Rules 'Abusive' IPRs Can't Be Revived As Reexams Law360 September 29, 2021
In the News Fed. Cir. Limits Review of Serial Patent Challenges (Correct) Bloomberg Law September 29, 2021
Press Release Sterne Kessler Recognized as a “Top Tier” Patent Prosecution Firm by The Legal 500 Sterne, Kessler, Goldstein & Fox June 14, 2021
In the News Juniper, Nokia Lose Board Challenge to Optical Networking Patent Bloomberg Law April 19, 2021
In the News PTAB H1 Filing Rankings: Top Petitioners, Owners and Law Firms Managing Intellectual Property July 24, 2020
Press Release Two Sterne Kessler Directors Recognized as “Top Authors” by JD Supra Sterne, Kessler, Goldstein & Fox P.L.L.C. April 29, 2020
Press Release Sterne Kessler Again Receives Sole Band 1 Chambers Ranking for Patent Prosecution Among D.C. Firms Sterne, Kessler, Goldstein & Fox P.L.L.C. April 24, 2020
In the News Are PTAB Appointments Unconstitutional? A Closer Look Law360 September 5, 2018
In the News Tessera Semiconductor Patent Mostly Survives AIA Review Law360 October 14, 2014