Mind + Muscle

technical minds + legal muscle

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Sterne Kessler Goldstein Fox
Jason D. Eisenberg

Mind + Muscle

Jason D. Eisenberg

Director

 

Mr. Eisenberg, a director in the Electronics Group, provides strategic counsel from a quarter century of patent experience gained before and after law school. As reported by Managing Intellectual Property, in 2016 Mr. Eisenberg made an appearance as counsel in 53 of his almost 140 proceedings at the Patent Trial and Appeal Board (PTAB) of the USPTO.  In addition, he is both an editor and author of several chapters of the newly released Second Edition of Patent Office Litigation (Thomson Reuters, 2017). Mr. Eisenberg’s leadership at the PTAB belies the fact that he maintains a balanced practice and is much sought after for his keen abilities as a patent prosecutor and strategic management of global patent portfolios, for example specializing in the use of Reissue Practice to extend U.S. patent portfolios. Mr. Eisenberg 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 proofing patents and obviousness strategies for patent owners.

In addition to his AIA proceedings, Mr. Eisenberg’s diverse practice is built on an experience base that includes: patent examination of over 500 U.S. patent applications, preparation and prosecution of thousands of worldwide patent applications, management of 70 reissue applications, prosecution of 30 reexaminations, and management of several Federal Circuit appeals and a Supreme Court cert petition. This depth of understanding of global patent prosecution and PTO litigation, as well as appellate practice, allows Mr. Eisenberg to craft creative solutions for the companies he represents. In addition, Mr. Eisenberg is currently the chair of the firm's Docketing Committee, and a member of the Patent Office Litigation Practice, in addition to the  Conflict Clearance Taskforce.

Mr. Eisenberg has also rendered nearly a hundred patentability, invalidity, non-infringement, inventorship, and expert opinions. He has performed patent portfolio audits and due diligence related to patent asset purchases, interference pre-analysis, and an initial public offering.

During law school, Mr. Eisenberg spent six months as a judicial extern for the Honorable Deborah L. Cook, an Associate Justice of the Supreme Court of Ohio, preparing bench memorandum for pending appeals. He 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, Mr. Eisenberg spent over four years as a patent examiner in Groups 2500 and 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, Mr. Eisenberg 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, Mr. Eisenberg spent several years as a patent searcher for a law firm and a summer as a USPTO patent clerk for a group director and a supervisory patent examiner.

Mr. Eisenberg earned a J.D. at The Ohio State University Moritz College of Law, a B.S., Accounting, at University of Maryland University College, and a B.S. in Electrical Engineering at The Ohio State University.

Publications

  • "Ways To Cure Patents That Leave IPR Alive But Damaged," Jason D. Eisenberg, Richard M. Bemben and Sreekar R. Gadde, Law360, 2015.
  • "Use IPR Decisions to Better Write and Prosecute Patents," Eric K. Steffe, Jason D. Eisenberg, Law360, 2015.
  • "Board decisions involving the first wave of contested proceedings." Robert Greene Sterne, Jason D. Eisenberg, USPTO Post-Grant Patent Trials 20132013.

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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