Mind + Muscle

technical minds + legal muscle

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Sterne Kessler Goldstein Fox
Jason D. Eisenberg

Mind + Muscle

Jason D. Eisenberg

Director

 

Jason D. Eisenberg, a Director and Practice Group Leader in the Electronics Group, provides strategic counsel from a quarter century of patent experience gained before law school as an examiner, during law school as a patent agent and extern at the Ohio Supreme Court, and after law school in private practice. Jason leveraged his nearly two hundred PTO Litigation proceedings, both AIA and reexaminations, as an editor and author of several chapters of the Second Edition of Patent Office Litigation (Thomson Reuters, 2017). Jason’s leadership at the PTAB belies the fact that he maintains a balanced practice and is much sought after for his keen abilities in rendering a wide range of opinions, including expert opinions, in appeals of PTO proceedings to the Federal Circuit and Supreme Court, as a patent prosecutor, and for strategic management of global patent portfolios. For example Jason has spent considerable time practicing in the use of reissue patent applications to extend U.S. patent portfolios during pre-litigation assessment. Jason is also a thought leader and has authored numerous articles, including a recent 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. Jason is currently the chair of the firm's Docketing Committee and a member of the firm’s Patent Office Litigation Practice .

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. During college breaks, Jason spent several years as a patent 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.

Mr. Eisenberg has been substantially involved in over 35 PTAB cases on file, and many more in the preliminary stages. 

PTO and Appellate Litigation

  • Federal Circuit Appeal No 13-1549 - K/S HIMPP v. Hear-Wear Technologies, LLC, Representing Third Party Requester HIMPP in Appeal from PTAB as appellant challenging decision that confirmed claims.
  • Federal Circuit Appeal No 14-1369 – Hear Wear Technologies, LLC v K/S HIMPP, Representing Third Party Requester HIMPP in Appeal from PTAB as appellee defending decision that found all claims unpatentable.
  • Federal Circuit Appeal No 14-1357 – Hear Wear Technologies, LLC v K/S HIMPP, Representing Third Party Requester in Appeal from PTAB as appellee defending decision that found all claims unpatentable.
  • Defended Patent Owner Tessera (Semiconductor Packaging)
    IPR2012-00033; IPR2013-00242
  • Defended Patent Owner NuTech (Femtosecond Laser Utilization Methods And Apparatus And Method For Producing Nanoparticles)
    IPR2013-00101
  • Defended Patent Owner ContentGuard (Digital Rights Management)
    IPR2013-00133; IPR2013-00134; IPR2013-00136; IPR2013-00137; IPR2013-00138; IPR2013-00139; IPR2013-00454
  • Defended Patent Owner Magna (Automotive Light Detection Systems and Controls)
    IPR2014-00251; IPR2014-00255; IPR2014-00256; IPR2014-00266; IPR2014-00261; IPR2014-00262; IPR2014-00264; IPR2014-00260; IPR2014-00257; IPR2014-00258; IPR2014-00259; IPR2014-00263; IPR2014-00265; IPR2014-00293; IPR2014-00294; IPR2014-00296; IPR2014-00297; IPR2014-00298
  • Defended Patent Owner ParkerVision (Down-Converting Electromagnetic Signals By Sampling And Integrating Over Apertures)
    IPR2014-00946; IPR2014-00947; IPR2014-00948; IPR2014-01107
  • Defended Patent Owner Lockwood (Decision Making Automated Sales and Service System)
    CBM2014-00025; CBM2014-00026
  • Defended Patent Owner Capella (Reconfigurable Optical Add-Drop Multiplexers With Servo Control And Dynamic Spectral Power Management Capabilities)
    IPR2014-01166; IPR2014-01276
  • For Petitioner Ricoh/Xerox
    IPR2013-00302
  • Representative Matters

      Mr. Eisenberg has been substantially involved in over 35 PTAB cases on file, and many more in the preliminary stages. 

      PTO and Appellate Litigation

      • Federal Circuit Appeal No 13-1549 - K/S HIMPP v. Hear-Wear Technologies, LLC, Representing Third Party Requester HIMPP in Appeal from PTAB as appellant challenging decision that confirmed claims.
      • Federal Circuit Appeal No 14-1369 – Hear Wear Technologies, LLC v K/S HIMPP, Representing Third Party Requester HIMPP in Appeal from PTAB as appellee defending decision that found all claims unpatentable.
      • Federal Circuit Appeal No 14-1357 – Hear Wear Technologies, LLC v K/S HIMPP, Representing Third Party Requester in Appeal from PTAB as appellee defending decision that found all claims unpatentable.
      • Defended Patent Owner Tessera (Semiconductor Packaging)
        IPR2012-00033; IPR2013-00242
      • Defended Patent Owner NuTech (Femtosecond Laser Utilization Methods And Apparatus And Method For Producing Nanoparticles)
        IPR2013-00101
      • Defended Patent Owner ContentGuard (Digital Rights Management)
        IPR2013-00133; IPR2013-00134; IPR2013-00136; IPR2013-00137; IPR2013-00138; IPR2013-00139; IPR2013-00454
      • Defended Patent Owner Magna (Automotive Light Detection Systems and Controls)
        IPR2014-00251; IPR2014-00255; IPR2014-00256; IPR2014-00266; IPR2014-00261; IPR2014-00262; IPR2014-00264; IPR2014-00260; IPR2014-00257; IPR2014-00258; IPR2014-00259; IPR2014-00263; IPR2014-00265; IPR2014-00293; IPR2014-00294; IPR2014-00296; IPR2014-00297; IPR2014-00298
      • Defended Patent Owner ParkerVision (Down-Converting Electromagnetic Signals By Sampling And Integrating Over Apertures)
        IPR2014-00946; IPR2014-00947; IPR2014-00948; IPR2014-01107
      • Defended Patent Owner Lockwood (Decision Making Automated Sales and Service System)
        CBM2014-00025; CBM2014-00026
      • Defended Patent Owner Capella (Reconfigurable Optical Add-Drop Multiplexers With Servo Control And Dynamic Spectral Power Management Capabilities)
        IPR2014-01166; IPR2014-01276
      • For Petitioner Ricoh/Xerox
        IPR2013-00302
  • Admissions
      • District of Columbia

      • Ohio

      • United States Patent and Trademark Office

      • United States Court of Appeals for the Federal Circuit

      • United States Supreme Court

  • Education
    • J.D., The Ohio State University

    • B.S., Accounting, University of Maryland University College

    • B.S., Electrical Engineering, The Ohio State University

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