Todd C. Thurheimer

Overview

Todd C. Thurheimer is counsel in Sterne Kessler’s Electronics Practice Group. His practice touches on a broad range of technologies and clients with a focus on the acquisition of software-based patents.

Todd’s patent prosecution expertise includes drafting patent applications that run ahead of any potential subject-matter eligibility, inventive step, or obviousness issues. Towards this end, he has extensive experience with integrating the technical story of an innovation into a patent application from the inventor disclosure call through to the allowance of the application. Todd has successfully applied these design principles to efficiently achieve results in high-end prosecution in the U.S., EPO, and across the globe.

In addition to his prosecution work, Todd has a robust practice before the Central Reexamination Unit, having filed dozens of Reexamination Requests on behalf of requestors and successfully represented patent owners defending patents. Todd also has extensive experience practicing in inter partes review proceedings at the Patent Trial and Appeal Board (PTAB), both defending and invalidating issued patents. He has experience supporting a variety of clients in U.S. district court litigation as well, representing patent owners and defendants.

Todd’s technological wheelhouse focuses on the fundamental software development bedrocks—e.g., programming, databases, distributed computer architectures, machine learning, and artificial intelligence. He has prosecuted hundreds of patent applications across a range of technologies including networking, computer graphics, natural language processing, big-data integration, autonomous vehicles, identity verification, high-frequency electronics, vector processing, blockchain, cutting-edge user interfaces, internet-of-things devices, financial systems, health care platforms, integration platforms, security systems, software development tools, and consumer devices. His reexamination and IPR work has touched on a similarly diverse set of technologies.

Todd has also prepared numerous strategic opinions on behalf of clients including invalidity and non-infringement opinions. He has advised clients on a wide-range of technology-related transactions including software licensing agreements.

With experience across several patent forums at different points in the lifecycle of a patent, Todd offers clients a unique perspective, particularly for startups and emerging companies.

Prior to his legal career, Todd worked for over a decade as a senior software engineer with a management consulting firm designing and implementing software solutions and maintaining computer architectures to support these tools. This hands-on, real-world, hard-technical experience during a nascent period of the Internet’s development provides an enormous competitive advantage to Todd as a patent practitioner today. Above all else, Todd retains the grinding, team-first mentality and ethos of a software engineer.

Todd is an avid user of Sterne Kessler’s Patent Assist AI, an internally developed AI-driven patent drafting tool that dramatically improves the quality of a patent deliverable in view of real-world budget constraints. He is the acting steward and curator of the Electronics Practice Group’s bi-weekly Patents Quarterly (PQ) meeting. In the PQ meeting, the practice group meets to discuss recent developments in patent case law, with a particular focus on skill development related to responsibly leveraging AI within the firm.

Prior to joining Sterne Kessler, Todd clerked for two years at the Commonwealth Court of Pennsylvania. He graduated summa cum laude from Suffolk University Law School, receiving an Intellectual Property Law Concentration with Distinction and serving as a staff member on the Journal of High Technology Law.

Education

• J.D., Intellectual Property Law Concentration with Distinction, Suffolk University Law School, summa cum laude
• B.S., Computer Science, Virginia Polytechnic Institute and State University, magna cum laude