Sterne Kessler Building Interior

Jason D. Eisenberg

Director
Jason D. Eisenberg
Jason heads Sterne Kessler’s Electronics Group and has handled nearly 200 patent office litigation matters. His thought leadership includes serving as editor of the monthly “PTAB Strategies and Insights” e-newsletter.

Jason D. Eisenberg, a director and practice group leader in Sterne Kessler’s Electronics Practice Group, provides strategic counsel from nearly thirty years of patent experience gained before law school as a public searcher and a USPTO patent examiner, during law school as a patent agent and extern at the Ohio Supreme Court, and after law school in private practice. Jason was previously the Chair of the firm’s Docketing Committee. Jason also teaches as an adjunct for Patent Office Litigation at Antonin Scalia Law School at George Mason University.

Jason was a co-editor and author of several chapters of the Second Edition of Patent Office Litigation (Thomson Reuters, 2017) and is currently the Editor and frequent contributing author of the PTAB Perspectives monthly newsletter. Jason bases the current topics of the newsletter on his over two hundred PTO Litigation proceedings, both AIA and reexaminations.

Jason’s leadership at the PTAB belies the fact that he maintains a balanced practice. His much sought after for both strategic management of global patent portfolios and his keen abilities in rendering a wide range of opinions. He has rendered opinions as a litigation expert (reissue prosecution) and for patentability, invalidity, nonifringement, and other issues. And Jason has spent considerable time practicing in the use of reissue and patent owner reexaminations to extend U.S. patent portfolios during pre-litigation assessment and after successful and unsuccessful litigation. For example, Jason has authored numerous articles, including a piece on strategic use of reissues and supplemental examination to cure issues raised in AIA proceedings, as well as articles on AIA and Alice proofing patents and obviousness strategies for patent owners.

During law school, Jason spent six months as a judicial extern for the Honorable Deborah L. Cook, then an Associate Justice of the Supreme Court of Ohio, preparing bench memorandum for pending appeals. Jason was also a patent agent and student associate in Cleveland and Columbus, Ohio and Washington, D.C. for six local, regional, and multi-national law firms.

Prior to 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 200 AIA proceedings (IPR, CBM, and PGR): 143 patent owner cases and 46 petitioner side cases at the PTAB. The following is a list of some of his Appellate Litigation cases as of December 1, 2018:
  • 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.
 

Thought Leadership

Contact Information

Phone Number

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