Mr. Sterne is one of the leading patent attorneys in the United States in all phases of patent office litigation, including Federal Circuit and Supreme Court appeals, for patents involved in concurrent litigation both in the federal courts and the United States International Trade Commission. He is also recognized by his peers as a thought leader for best practices concerning all areas of intellectual property. He specializes in cutting edge technologies in the electronics, computer, communications, biomedical and nanotech arenas, for the monetization of patents, patent litigation and patent licensing.
Throughout his career, Mr. Sterne has been consistently recognized as an outstanding IP law practitioner and thought leader. In 2015, the Financial Times ranked Mr. Sterne among the "Top Ten Innovative Lawyers in North America." 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. In 2007, he served as co-counsel in KSR International Co. v. Teleflex, Inc., one of the most significant patent cases heard by the U.S. Supreme Court in 50 years. The case addressed the fundamental question of when an invention is “obvious” and therefore not patentable. Mr. Sterne 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 involve the prima facie anticipation requirement in patent prosecution.
Mr. Sterne serves 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, 2010, 2011, 2012, 2013, and 2015. For more than 20 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 (NCAC), 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.