FacultyFaculty/Author Profile
Robert Greene Sterne

Robert Greene Sterne

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Washington, DC, USA


Robert 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 Reexamination
Center (www.reexamcenter.com). 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.

Robert Greene Sterne is associated with the following items:
CHB Chapters  CHB Chapters Reexam (and AIA) and Its Impact on Enforcement, Monetization and Valuation of Patents (PowerPoint Slides) - Patent Litigation 2012 , Thursday, September 27, 2012
Reexaminations, Contested Proceedings, and Concurrent Litigation - Patent Litigation 2012 , Thursday, September 27, 2012
The Trial, Chapter 11, Patent Office Litigation, First Edition: October, 2012, 2 Volumes, (Thomson Reuters 2012) - USPTO Post-Grant Patent Trials 2013 , Monday, March 04, 2013
Federal Circuit Standard of Review for Inter Partes Patentability Challenges - USPTO Post-Grant Patent Trials 2013 , Monday, March 04, 2013
Introduction to Patent Office Litigation, Chapter 1 Patent Office Litigation, First Edition: October, 2012, 2 Volumes, (Thomson Reuters 2012) - USPTO Post-Grant Patent Trials 2013 , Monday, March 04, 2013
The Patent Trial and Appeal Board (PTAB), Chapter 6, Patent Office Litigation, First Edition: October, 2012, 2 Volumes, (Thomson Reuters 2012) - USPTO Post-Grant Patent Trials 2013 , Monday, March 04, 2013
Board Decisions Involving the First Wave of Contested Proceedings - USPTO Post-Grant Patent Trials 2013 , Monday, March 04, 2013
Web Segment  Web Segment Parallel Patent Reexaminations - Patent Litigation 2012 , Friday, September 28, 2012
The U.S. District Court & ITC Judicial Perspectives - USPTO Post-Grant Patent Trials 2013 , Wednesday, April 03, 2013
Appeals to the Court of Appeals for the Federal Circuit - USPTO Post-Grant Patent Trials 2013 , Wednesday, April 03, 2013
Practice Before the PTAB Rountable - USPTO Post-Grant Patent Trials 2013 , Wednesday, April 03, 2013
Transcripts  Transcripts Parallel Patent Reexaminations - Parallel Patent Reexaminations , Friday, September 28, 2012
Appeals to the Court of Appeals for the Federal Circuit - Appeals to the Court of Appeals for the Federal Circuit , Wednesday, April 03, 2013
Practice Before the PTAB Rountable - Practice Before the PTAB Rountable , Wednesday, April 03, 2013
MP3 Audio  MP3 Audio Patent Litigation 2012: Parallel Patent Reexaminations - Parallel Patent Reexaminations , Monday, October 01, 2012
USPTO Post-Grant Patent Trials 2013: Appeals to the Court of Appeals for the Federal Circuit - Appeals to the Court of Appeals for the Federal Circuit , Friday, April 05, 2013
USPTO Post-Grant Patent Trials 2013: The U.S. District Court & ITC Judicial Perspectives - The U.S. District Court & ITC Judicial Perspectives , Friday, April 05, 2013
USPTO Post-Grant Patent Trials 2013: Practice Before the PTAB Rountable - Practice Before the PTAB Rountable , Friday, April 05, 2013
MP4 - Mobile Video Seg  MP4 - Mobile Video Seg Patent Litigation 2012: Parallel Patent Reexaminations - Parallel Patent Reexaminations , Monday, October 01, 2012
USPTO Post-Grant Patent Trials 2013: The U.S. District Court & ITC Judicial Perspectives - The U.S. District Court & ITC Judicial Perspectives , Friday, April 05, 2013
USPTO Post-Grant Patent Trials 2013: Appeals to the Court of Appeals for the Federal Circuit - Appeals to the Court of Appeals for the Federal Circuit , Friday, April 05, 2013
USPTO Post-Grant Patent Trials 2013: Practice Before the PTAB Rountable - Practice Before the PTAB Rountable , Friday, April 05, 2013
On-Demand Web Programs  On-Demand Web Programs Patent Litigation 2012 , Friday, October 12, 2012 , San Francisco, CA
USPTO Post-Grant Patent Trials 2013 , Wednesday, April 10, 2013 , New York, NY
Audio CD  Audio CD Patent Litigation 2012 , Friday, October 26, 2012 , San Francisco, CA
DVD Video  DVD Video Patent Litigation 2012 , Friday, November 09, 2012 , San Francisco, CA
Course Handbooks  Course Handbooks USPTO Post-Grant Patent Trials 2013
Live Seminar  Live Seminar Intellectual Property Law Institute 2013 , Monday, September 09, 2013 , New York, NY
Intellectual Property Law Institute 2013 , Monday, October 07, 2013 , San Francisco, CA
Patent Litigation 2012 , Thursday, September 27, 2012 , San Francisco, CA
USPTO Post-Grant Patent Trials 2013 , Wednesday, March 27, 2013 , New York, NY
USPTO Post-Grant Patent Trials 2013 , Monday, April 15, 2013 , San Francisco, CA
USPTO Post-Grant Patent Trials 2013 , Monday, March 04, 2013 , Chicago, IL
USPTO Post-Grant Patent Trials 2013 , Monday, April 29, 2013 , Austin, TX
Live Webcast  Live Webcast Intellectual Property Law Institute 2013 , Monday, October 07, 2013 , San Francisco, CA
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