Michael D. Specht is a director and chair of Sterne Kessler’s Electronics Practice Group.

He has a unique combination of over twenty-five years of telecommunications, electronics and Internet-related technical, legal, and business development experiences. His practice spans high value patent prosecution and inter partes matters, including Patent Trial and Appeal Board (“PTAB”), district court, and International Trade Commission (“ITC”) litigation. His extensive patent prosecution and technical experiences provide a formidable advantage in inter partes proceedings. Additionally, he counsels clients on the development and implementation of intellectual asset management plans to maximize the economic potential of their intellectual property through portfolio development, licensing, and litigation strategies.

Mike has long been a leader in post grant proceedings before the U.S. Patent and Trademark Office, such as ex parte reexaminations, inter partes reexaminations, inter partes reviews (“IPR”), covered business method reviews (“CBM”), and post grant reviews (“PGR”). He was the co-creator and editor of the award-winning website, www.reexaminationcenter.com, which was the most sought out industry source for reexamination decisions and analysis. He subsequently was a contributing author to the seminal treatise, Patent Office Litigation and is also a contributing author to Patent Litigation Strategies Handbook Third Edition 2014 Cumulative Supplement, “Patentability Challenges at the U.S. Patent and Trademark Office.” Mike has served as counsel in nearly 100 IPRs, CBMs, and PGRs, with more than 50 representations on behalf of petitioners, and more than 40 appearances on behalf of patent owners. Whether challenging or defending patents before the PTAB, Mike’s lead counsel track record is superior to the PTAB averages on the basis of challenged claims instituted and instituted claims cancelled at final written decision.

Mike has served as an advisor to associates participating in the PTAB’s Legal Experience and Advancement Program (LEAP), which provides associates with training and development opportunities in PTAB proceedings, including oral argument.

Mike’s primary areas of technical experience include telecommunications networks, broadband communication systems, wireless communications, GPS location-based services, Signaling System 7 (“SS7”), VoIP, communications protocols, e-commerce and Internet applications, graphic processors, and automotive technologies.

Prior to joining the firm, he co-founded and served as President and General Counsel of OnLine Living, a company providing high speed Internet and web services to residents of apartment communities. He led the company’s efforts to secure venture capital and debt financing, managed legal affairs and directed the technology team. He was responsible for architecting and deploying the company’s broadband wired and wireless network and web services. He began his career as an electrical engineer at Bell Communications Research (“Bellcore”), a world renowned research and development laboratory supporting the Bell System telecommunication companies. At Bellcore, he developed switching system technical requirements, conducted field performance analysis, led multi-disciplinary network operations reviews of the local telephone company networks and co-managed the SS7 product.

Mike has his J.D. from Georgetown University Law Center cum laude, his M.S. in electrical engineering from Purdue University and his B.S. in electrical engineering from Case Western Reserve University highest honors, IEEE Most Outstanding Electrical Engineering Student.

Patent Trial and Appeal Board (“PTAB”) Litigation

  • Inter partes review of U.S. Patents No. 7,986,426 (IPR2013-00302, Ricoh Americas Corporation and Xerox Corporation v. MPHJ Technology Investments LLC, technology involves networked copiers) – successfully had all claims that were being enforced cancelled.
  • Inter partes reviews of U.S. Patents No. 8,488,173 (IPR2014-00538) and 7,477,410 (IPR2014-00539) (Ricoh Americas Corporation, Xerox Corporation and Lexmark, Inc. v. MPHJ Technology Investments LLC, technology involved networked copiers) – successfully had all claims that were being asserted cancelled on three separate grounds.
  • Inter partes reviews of U.S. Patents No. 7,860,222 (IPR2014-01278 and IPR2014-01282) and 7,805,457 (IPR2014-01283) (Global Tel Link v. Securus Technologies, Inc., technology involves prison communication monitoring and data analysis systems) – successfully had IPRs instituted against all claims in both patents, which are involved in co-pending litigation. Awaiting final written decisions.
  • Inter partes Review of U.S. Patent No. 6,89,332 (IPR2015-00323) (LG Electronics, Inc. v. Advanced Micro Devices, technology involves integrated circuit performance) – successfully defended patent, which is involved in co-pending litigation with PTAB denying institution of the IPR.
  • Post grant review of U.S. Patent No. 8,929,525 (PGR2015-00014) (Global Tel Link v. Securus Technologies, Inc., technology involves video communication systems for prisons) – prepared and filed PGR, awaiting institution.

District Court

  • Voxathon LLC v. Volkswagen Group of America, Inc. (E.D. Tex.) (co-lead counsel, 2015) (Technology involved automotive caller id interface);
  • Intellectual Capital Consulting, Ltd., v. Audi AG Audi of America, LLC, Audi Of America, Inc., Volkswagen Ag, and Volkswagen Group of America, Inc. (E.D. Tex.) (Co-lead counsel, 2015) (Technology involved smartwatches.);
  • Digital Air Inc. v. Volkswagen Group of America, Inc. (C.D. Cal.) (co-lead counsel, 2014) (Technology involved video production techniques);
  • Asentinel, LLC v. Anchorpoint, Inc. et al. (W.D. Tenn) (co-lead, 2010) (Technology involved telecommunication invoice processing systems.)
  • Grape Technology Group and kgb USA v. Jingle Networks, Inc. (D. Del.) (co-lead counsel, 2010) (obtained jury verdict in favor of defendant Jingle Networks in infringement action involving directory assistance technology)

  • Patexia, “The 100 Best Performing Attorneys Representing Patent Owners – PTAB (Top 25)” (2023)
  • Patexia, “The 100 Best Performing Attorneys Representing Petitioners – PTAB (Top 25)” (2023)
  • Patexia, “The 100 Best Performing Attorneys Overall – PTAB” (2023)
  • Patexia, “The 100 Most Active Attorneys Representing Patent Owners – PTAB” (2023)
  • Patexia, “The 100 Most Active Attorneys Representing Petitioners – PTAB (Top 50)” (2023)
  • Patexia, “The 100 Most Active Attorneys Overall – PTAB (Top 50)” (2023)
  • IAM Patent 1000, “National: Recommended – Post-Grant Proceedings; Washington, DC: Recommended – Patent Prosecution” (2023)
  • Patexia, “100 Most Active Attorneys Representing Petitioners – Inter Partes Review (Top 50)” (2022)
  • Certified Licensing Professional, 2008
  • Chairman of the Board of Trustees, Hugh O’Brian Youth Leadership (HOBY), 2004-2007
  • Case Institute of Technology Most Outstanding Electrical Engineering Student, 1987

  • J.D., Georgetown University Law Center, cum laude
  • M.S., Electrical Engineering, Purdue University
  • B.S., Electrical Engineering, Case Western Reserve University, highest honors, IEEE Most Outstanding Electrical Engineering Student

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

  • American Intellectual Property Law Association
  • ITC Trial Lawyers Association
  • Institute of Electrical and Electronics Engineers
  • Tau Beta Pi/Eta Kappa Nu

Speaking Engagement

PTAB Bar Association 2024 Annual Conference

Washington, DC, Ritz Carlton, March 6, 2024

Webinar

2023 PTAB Year in Review: Analysis & Trends

Virtual, February 7, 2024 1:00 PM - 2:00 PM PST

Speaking Engagement

Learn About Handling Issues that Typically Arise During an AIA Proceeding Before the PTAB

Alexandria, VA, United States Patent and Trademark Office, January 18, 2024 12:00 PM - 1:00 PM PST

Webinar

Patent Speaker Event

Virtual, October 16, 2023 12:00 PM - 1:00 PM PST

Speaking Engagement

2023 Focus on Pharma

Washington, DC, April 14, 2023 8:30 AM - 6:00 PM PST

Speaking Engagement

Bootcamp: Nuts and Bolts of Proceedings Before the PTAB

Washington, DC & Virtual, The Ritz-Carlton, March 8, 2023 1:00 PM - 2:00 PM PST

Webinar

2022 PTAB Year in Review: Analysis and Trends

Virtual, February 28, 2023 1:00 PM - 2:00 PM PST

Speaking Engagement

Industry Review 2022: Automotive

Virtual, December 12, 2022 9:00 AM - 10:15 AM PST

Speaking Engagement

Winning IP Strategies for the Auto Technological Revolution

Munich, Germany, The Charles Hotel, November 2, 2022 9:05 AM - 10:05 AM PST

Webinar

PTAB Analysis, Trends, and Forecast: Fintiv and Discretionary Denials

VIRTUAL, March 21, 2022 1:00 PM - 2:00 PM PST

Speaking Engagement

IP Challenges in the Automotive Industry

Virtual, September 1, 2020 11:35 AM - 12:35 PM PST

Speaking Engagement

Data Business Congress

San Jose, CA, San Jose Marriott, February 3, 2020 12:00 AM - 11:59 PM PST

Speaking Engagement

Auto IP Europe

Munich, Germany, The Westin Grand Munich, May 16, 2019

Speaking Engagement

2019 Global IP Strategy Conference

Washington, DC, March 15, 2019

IEEE GLOBECOM 2014

December 9, 2014

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Sterne Kessler Publishes Federal Circuit IP Appeals: Summaries of Key 2023 Decisions Report

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January 22, 2024

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October 20, 2023

Sterne Kessler Honored as US Post-Grant Firm of the Year at Global IP Awards

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September 18, 2023

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September 6, 2023

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May 3, 2023

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January 25, 2023

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Tidal Escapes Patent Suit Over Music Playlist Tech

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SDNY Finds Patent for Processing Financial Transaction Data Invalid Under 101

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Dorsey’s Block Slips Suit Saying It Copied Payments Software (2)

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District Court Patent Win for Client Block, Inc.

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Patent Tribunal Judges Urge Firms to Send Women, Diverse Lawyers

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April 26, 2022

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April 25, 2022

District Court Patent Victory in Infringement Suit

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July 24, 2020

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April 29, 2020

IP Firms Cheer PTAB Program Giving New Attys Opportunities

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Press Release

April 24, 2020

Sterne Kessler Again Receives Sole Band 1 Chambers Ranking for Patent Prosecution Among D.C. Firms

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April 21, 2020

Supreme Court Holds That PTAB Time-Bar Rulings Are Non-Appealable

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April 3, 2020

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March 25, 2020

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March 17, 2020

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March 4, 2020

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Publication

February 28, 2020

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February 27, 2020

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Webinar Recordings & Materials

January 14, 2020

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November 20, 2019

PTAB Wrestles With How To Construe Anti-Spoofing Patent

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November 19, 2019

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Bylined Articles

October 31, 2019

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October 23, 2019

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October 17, 2019

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March 19, 2019

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Client Alert

March 15, 2019

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January 31, 2019

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November 30, 2018

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October 29, 2018

New AIA Plan May Be A Tough Path To Patent Amendments

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August 7, 2018

Apple, Fitbit Get Heart Sensor Patent Slashed At PTAB

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Bylined Articles

July 31, 2018

The impact of Oil States and SAS on the post-grant landscape

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Client Alert

June 1, 2018

SAS Decision’s Impact on Pending Appeals from the PTAB

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Webinar Recordings & Materials

May 11, 2018

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December 6, 2017

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Bylined Articles

September 14, 2017

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July 19, 2017

Fed. Circ. Rejects Rehearing For Nixed Call Patent

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In the News

July 17, 2017

Fed. Circ. Backs PTAB Ruling Upholding Prison Phone Patent

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Bylined Articles

April 26, 2017

IP Management Plans: A Key to Company Success

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In the News

February 13, 2017

Scan-to-Email Patent Finally Done; Claim Scope Broadened by Narrow Provisional Application

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In the News

February 13, 2017

Fed. Circ. Affirms PTAB Ax Of MPHJ Scanner Patent

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In the News

November 16, 2016

PTAB Shifts 'Midstream,' Puts Unusual End to CBM Review

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News

August 2, 2016

Troll' Asks Fed. Circ. To Save Scanner IP In Xerox Row

Law360 Michael D. Specht, Karen Wong-Chan

Press Release

June 17, 2016

Legal 500 Ranks Sterne Kessler Among Best IP Firms in the United States

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In the News

April 14, 2016

Global Tel Link's Inmate Calling Patent Survives AIA Review

Law360 Michael D. Specht, Karen Wong-Chan

In the News

March 23, 2016

LG Says AMD Misreading Prior Art In Video Patent Fight

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In the News

February 25, 2016

PTAB Finds Patent For Monitoring Prison Gangs Is Obvious

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In the News

February 4, 2016

LG Again Loses Bid For AIA Review Of Display Patent's Claim

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In the News

May 27, 2015

Xerox, Others Slam Scanner "Patent Troll" IP in PTAB Review

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March 17, 2015

Toshiba Rips Intellectual Ventures' Chip Patent At PTAB

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February 10, 2015

Docket Navigator Year in Review 2014

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Firm Announcements

December 15, 2014

Sterne Kessler Attorneys Author Patent Office Litigation Chapter of The Patent Litigation Strategies Handbook Supplement

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