Mind + Muscle

technical minds + legal muscle

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Sterne Kessler Goldstein Fox
"An agile thinker, he identifies the best solutions quickly"
IAM Patent 1000 2016

“An easy-going straight shooter who is very sound both technically and legally"  
IAM Patent 1000 2013
Robert E. Sokohl

Mind + Muscle

Robert E. Sokohl

Director

 

Mr. Sokohl, a director in the Electronics Group, is a strategic adviser to multi-billion dollar companies, publicly-traded companies and start-ups.  He has prepared and prosecuted thousands of patent applications on various technologies and counsels on the procurement, enforcement and licensing of intellectual property.  He manages patent portfolios (both domestic and foreign) that range in size from just a few assets to over a thousand.

Mr. Sokohl prepares patentability, state-of-the-art, infringement and validity opinions.  He has managed intellectual property due diligence investigations relating to the acquisition of portfolios and/or companies.  He has also filed numerous petitions for reexamination against third party patents and prosecuted both ex parte and inter parte reexaminations.

Mr. Sokohl's recent litigation experience includes a lead role in representing Jingle in Grape Technology Group, Inc. et al. v. Jingle Networks in the district court where the firm successfully defended Jingle at trial.   Additionally, Mr. Sokohl was lead counsel in the district court and an Appeal to the Federal Circuit in decisioning.com v. TD Ameritrade, et al. (D.S.C. 2007) where the court affirmed summary judgment of no infringement.  As part of these efforts, he was intimately involved with the preparation of the claim construction briefs, summary judgment briefs, as well as all aspects of discovery for the defendants.

Mr. Sokohl was also co-counsel in the seminal 2014 Supreme Court case Alice Corporation Pty Ltd. v CLS Bank International et al., which related to application of the abstract idea exception to computerized business method claims.  Mr. Sokohl was also co-author of the Appellants' Brief filed in In re Beauregard, 53 F3d 1583, 35 USPQ2d 1383 (Fed. Cir. 1995). This case was brought by IBM to establish that a computer program on a disk was patentable subject matter. It resulted in the USPTO issuing software patent guidelines, which expanded the scope of patent protection for software.

Mr. Sokohl is a member of the firm’s Executive Committee and is the chair of the Client Committee.

 Mr. Sokohl has significant litigation experience, particularly in defending clients in intellectual property disputes:

  • Grape Technology Inc. et al. v. Jingle Networks, Inc.
  • decisioning.com v. TD Ameritrade
  • Toy v. TD Ameritrade
  • Supracor v. Reebok
  • Janigian v. Group 1 Software
  • Representative Matters

       Mr. Sokohl has significant litigation experience, particularly in defending clients in intellectual property disputes:

      • Grape Technology Inc. et al. v. Jingle Networks, Inc.
      • decisioning.com v. TD Ameritrade
      • Toy v. TD Ameritrade
      • Supracor v. Reebok
      • Janigian v. Group 1 Software
  • Admissions
      • District of Columbia

      • United States Patent and Trademark Office

  • Education
    • J.D., American University

    • B.S., Computer Engineering, Syracuse University

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