J.D., University of Maryland with honors
M.S., Engineering, Tufts University
B.S., Electrical Engineering, Tufts University
IAM Patent 1000 2013 Recommended Lawyer
2013 Managing IP Magazine 'IP Star'
2012 Attorney of the Year "Good Scout" Award Recipient
The Best Lawyers in America 2006-2014
IAM 300 - A Guide to the World's Leading IP Strategists 2009-2013
Chambers & Partners USA 2004-2012
Washington DC Super Lawyers 2007-2013
IAM 250 - Leading Patent and Technology Licensing Lawyer, 2010
The Washington Post - Top Lawyers 2009-2012
Martindale AV Preeminent Peer Rating 5.0/5.0
District of Columbia
United States Court of Appeals for the Federal Circuit
United States Patent and Trademark Office
United States Supreme Court
American Intellectual Property Law Association
ITC Trial Lawyers Association
Mr. Sterne is one of the leading patent attorneys in the United States in patent reexamination and concurrent patent litigation both in the federal courts and the United States International Trade Commission. He is recognized by his peers as a thought leader on board of director responsibility and best practices concerning intellectual property. He specializes in the area of intellectual property for cutting edge technologies in the electronics, computer, communications, biomedical and nanotech arenas, the monetization of patents, patent litigation and patent licensing.
Mr. Sterne has been consistently recognized in peer-based directories and lists as a leading attorney in the intellectual property arena. Clients rely on his negotiation skills and big picture approach to patent procurement and protection, licensing and enforcement that considers the product, distribution, network and market conditions. Additionally, Mr. Sterne is a sought after expert witness, has written and spoken extensively on the subject of patent reexamination and concurrent patent litigation, and is Chairperson of the Editorial Board of The PTO Litigation Center. He has served as a Special Master for Judge Marvin J. Garbis in a case involving patent inventorship, ownership, and U.S. and foreign patent applications and prosecution.
Mr. Sterne has played a role in groundbreaking, precedent-setting case law. Most recently, he served as co-counsel in KSR International Co. v. Teleflex, Inc., one of the most significant patent cases heard by the Supreme Court in 40 years. The case addressed the fundamental question of when an invention is “obvious” and therefore not patentable. Since the Court's decision in April 2007, Mr. Sterne has been sought by the media and fellow practitioners to provide analysis and insight on the implications of the ruling on patent law and innovation. Additionally, he was the lead attorney in In re Beauregard, 53 F3d 1583,35 USPQ2d 1383 (Fed. Cir. 1995). This groundbreaking case was brought by IBM at the Federal Circuit to establish that a computer program on a disk was patentable subject matter. The case resulted in the United States Patent and Trademark Office issuing new proposed software patent guidelines which expanded the scope of patent protection for software. He was counsel for appellants in In re Jung et al, before the Federal Circuit, which involves the prima facie anticipation requirement in patent prosecution.
Mr. Sterne acts as an IP strategic advisor to start ups, emerging companies and investors and serves on the boards of directors of a publicly traded company and a number of charitable organizations. He is a member of the University of Maryland School of Law, IP Program Advisory Board and the Advisory Board of The Sedona Conference. He served as the co-chair of the Sedona Patent Litigation Conference in 2001, 2002, 2007, 2008, 2009 and 2010 (to be held October 2010). For more than twenty years, Mr. Sterne was a member of the Advisory Board of BNA's Patent, Trademark and Copyright Journal. He holds an Extra Class radio license (WK3W) from the FCC.
Mr. Sterne is the Editor-in-Chief of Patent Office Litigation, a two-volume set focused on the new contested proceedings under the America Invents Act published in 2012 by Thomson Reuters Westlaw. This book examines how the proceedings interact with other aspects of patent procurement and enforcement, and delivers practical analysis and advice.
Mr. Sterne is a strong proponent of diversity and inclusion. He is a member of the Women’s Bar Association of the District of Columbia, on the firm’s diversity task force, and actively involved in mentoring both in the firm and with outside organizations. Mr. Sterne is also active in the community. He was elected to the Executive Board of the National Capital Area Council, Boys Scouts of America (BSA), in 2003. He was awarded the Silver Beaver by the NCAC in 2010, the highest award given at the Council level. He was very involved in Scouting as a youth, and now serves as the Eagle Scout Coach/Advisor to Troop 1983 in Oakton, Virginia. He was the founder of the Attorney of the Year: "Good Scout" Award Luncheon, and chaired this event in 2006 - 2009.
Mr. Sterne is often asked to comment in the media about recent events within the intellectual property community. Most recently, he commented on Judge Randall Rader's elevation to Chief Judge of the U.S. Court of Appeals for the Federal Circuit in The National Law Journal. Mr. Sterne is also featured in a series of videos discussing key topics in patent reexamination. You can see the most recent video here.