Jason D. Eisenberg

Overview

Jason D. Eisenberg is a director in Sterne Kessler’s Electronics Practice Group and a Practice Leader for the Reexamination and Reissue Practice, which includes being a co-editor of a monthly Reexamination, Reissue, and Supplemental Examination newsletter. Jason was previously a Practice Group Leader in the Electronics Practice Group, Editor and Author of the PTAB Strategies and Insights monthly newsletter, and Chair of the Docketing Committee. Jason and Robert Greene Sterne were co-editors and authors of several chapters of the Second Edition of Patent Office Litigation (Thomson Reuters, 2017).

Jason provides strategic counsel for global portfolio building, reissue (over 100 projects and as a litigation expert), reexamination (over 125), inter partes and post-grant review (over 275), Federal Circuit (20) and Supreme Court appeals (cert petitions and amici briefs), opinions (over 125), diligence, enforcement, and defense from nearly 30 years of patent experience.

Jason gained his experience before law school as a public searcher and a U.S. Patent and Trademark Office (USPTO) patent examiner and during law school as a patent agent in several Cleveland, Columbus, and D.C. law firms and as an extern at the Ohio Supreme Court for Justice Cook.

Jason’s technical experience includes work across all electrical and mechanical technologies, including analog and digital electronics, complex optics and optical theory, software and hardware, artificial intelligence, machine learning, deep learning, neural networks, natural language processing, bioinformatics, data signal processing, telecommunications, semiconductors and memory, lithography, and many more.

Jason has also taught as an adjunct professor for Patent Writing Theory & Practice at Antonin Scalia Law School at George Mason University in Fall 2022 and Patent Office Litigation at the University of Baltimore School of Law in Fall 2021 and George Mason University in Fall 2019 and 2020.

Before 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 250 AIA proceedings (IPR, CBM, and PGR): 200 patent owner cases and more than 50 petitioner cases at the PTAB. The following is a list of some of his appellate cases as of January 14, 2021:

• Federal Circuit Appeal No 20-1994: Rovi Guides v. Iancu (Intervenor)
• Federal Circuit Appeal No 20-2111: Rovi Guides v. Iancu (Intervenor)
• Federal Circuit Appeal No 20-2202: Rovi Guides v. Iancu (Intervenor)
• Federal Circuit Appeal No 20-2206: Rovi Guides v. Iancu (Intervenor)
• Federal Circuit Appeal No 20-2214, -2215, -2216, -2217: Veveo v. Iancu (Intervenor)
• Federal Circuit Appeal No 20-2288: Rovi Guides v. Iancu (Intervenor)
• Federal Circuit Appeal No 19-2438; 19-2439: Vivint, Inc. v. Alarm.com Inc.
• 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.
• U.S. Supreme Court Cases No. 20-74, 20-273, 20-414, Petition for a Writ of Certiorari for US v. Rovi Guides; Rovi Guides v. Comcast Cable Communications; Comcast Cable Communications v. Rovi Guides.
• U.S. Supreme Court Cases (Combined). No. 19-1434, 1452, 1458, Amicus for Petition and Merits stages for TiVo in Arthrex v. Smith & Nephew cases.

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