PTAB Spotlight Series with Graham Phero

Recently named U.S. Post-Grant Firm of the Year, Sterne Kessler has industry-leading experience in all proceedings before the Patent Trial and Appeal Board (PTAB). In our PTAB Spotlight Series, attorneys will share their valuable insights on PTAB practice today, the challenges and opportunities clients face, and the trends practitioners should follow.

Graham Phero is a director in Sterne Kessler’s Mechanical & Design Practice Group. He leverages his extensive technical and legal expertise on each new project, and clients appreciate his scientific, yet creative approach to complex problems.

Graham has served as counsel to some of the largest corporations in the world in their most important inter partes review, post grant review, and reexamination matters. In fact, his success against serial patent challenges resulted in a “bulletproof” patent portfolio that ultimately resulted in a favorable settlement. Graham is a contributing author in Patent Office Litigation, Second Edition, published in 2017, which provides a fresh and comprehensive exploration of all aspects of the contested patent proceedings before the PTAB.

As co-lead of Sterne Kessler’s engagement in the PTAB’s Legal Experience and Advancement Program (LEAP), Graham has advised dozens of associates who have participated in the program. LEAP provides associates with training and development opportunities in PTAB proceedings, including oral argument. Sterne Kessler held the top position for LEAP requests during the program’s first two years, and our participation has continued since.

Graham is currently the Chair Emeritus of the Young Lawyers and Agents Committee of the PTAB Bar Association and served as Chair in 2022 and 2023.

What is the biggest challenge your clients are facing today?

Value. Intellectual property needs are becoming increasingly complex, but business units often do not have a corresponding budget to adequately resolve these issues. Intellectual property departments are being asked to do more with less and must therefore be creative in determining which patents/cases to pursue and which to let go. As a result, strategic partnerships with outside counsel are more critical than ever.

What are some recent trends you’re seeing at the PTAB?

One noticeable trend is the increase in LEAP participation at the PTAB. Sterne Kessler has been an advocate and leader since the inception of LEAP, but many other firms and clients now see the benefit in supporting their less experienced attorneys and agents through this program. This is a win for the attorneys, the clients, and the PTAB.

What do you enjoy most about your role leading Sterne Kessler’s participation in PTAB LEAP?

Arguing your first case is a huge step in your growth and development. In years past qualified attorneys/agents often had to wait numerous years for the “right opportunity” for that first oral argument. LEAP and the corresponding training sessions provided by the PTAB and internally within Sterne Kessler allow excellent candidates the opportunity to argue their first case much earlier and with much less pressure. I have truly enjoyed witnessing the tremendous growth from each of our attorneys and agents as they LEAP from spectator onto the playing field.