Firm / Organisation

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

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This content is provided by Sterne, Kessler, Goldstein & Fox P.L.L.C..

Managing Partner: Michael B Ray
Number of partners: 52
Number of lawyers: 130
Languages: Arabic, Catalan, Chinese, English, Finnish, French, German, Greek, Gujarati, Hindi, Indonesian, Italian, Japanese, Korean, Malay, Persian, Russian, Serbian, Spanish, Swedish, Ukranian

Firm Overview:
Founded in 1978 and based in Washington, DC, Sterne Kessler is a premier law firm dedicated exclusively to the protection, transfer, and enforcement of intellectual property rights. The firm’s lawyers, registered patent agents, students, and technical specialists number over 170 and include some of the country’s most respected practitioners of IP law. Most of these professionals hold an advanced level degree, including approximately 55 masters degrees and more than 55 doctorate degrees in science or engineering — credentials wide and deep enough to fill the faculty of a science oriented university.

PRACTICE AREAS:
Patent Prosecution,
Patent Litigation,
PTO Litigation,
Appellate Litigation,
International Trade Commission,
Trademark, Advertising & Anti-Counterfeiting,
Design Patents,
Opinions & Strategic IP Advice

Main Areas of Practice:
Patent Prosecution:
For 40 years, the patent prosecution group has been preparing and prosecuting patent applications. This renowned group prosecutes and enforces utility and design patents for Fortune 500 companies with extensive, active patent portfolios, as well as small startup companies that rely on the patent system to obtain funding and to head off competition.

Patent Litigation:
The patent litigation and appeals group practises before Federal District Courts throughout the United States in complex IP cases involving software, biotech products, medical devises, pharmaceuticals, electronics, and consumer products. With more than 55 PhDs on staff, the group seamlessly blends disciplines to ensure the right team is handling the legal and technical challenges specific to the IP dispute at hand. The group provides counsel across a broad spectrum of IP issues, including patent infringement actions, trademark and copyright issues, licensing disputes, breach of contract, trade secrets and Lanham Act matters to name a few.

PTO Litigation:
Since the inception of the US America Invents Act (AIA) in 2012, the patent office litigation practice has worked on more AIA reviews than any other law firm at the United States Patent and Trademark Office Patent Trial and Appeal Board -- the PTAB. The group has handled over 700 IPRs and other post-grant reviews on behalf of both patent owners and third party requesters. The PTO litigation group represents both petitioners and patent owners, in a wide range of the PTAB’s technology centres — biotech and chemical, electrical, and mechanical.

Appellate Litigation:
The appellate litigation practice handles appeals to the US Court of Appeals for the Federal Circuit, as well as circuit courts around the US. The practice handles appeals from district courts, the US International Trade Commission, and the PTAB. Sterne Kessler is counsel in more than 100 Federal Circuit appeals since 2002.

International Trade Commission:
The ITC Section 337 investigations team represents complainants and respondents of international companies before the US International Trade Commission (ITC). The team uses its technical expertise and proximity in Washington, DC to the ITC headquarters to assist clients in navigating the multifaceted process related to Section 337 investigations. These complex, fast-paced matters require a unique and essential blend of skills in litigation, administrative law, and patent law, as well as technical skills. The team’s clients include commercial manufacturers and importers, in addition to retailers of accused products. The team is highly experienced in managing the fasttrack ature of the ITC proceedings, the complex issues involved in accused technologies, and following the precise agency rules associated with investigations. Sterne Kessler has more experience at the ITC than over 95% of the firms appearing there since 2014.

Trademark, Advertising & Anti-Counterfeiting:
The trademark, advertising, and anti-counterfeiting practice draws on more than 30 years of experience meeting the intellectual property needs of companies developing and maintaining strong brands around the world. Comprehensive and strategic IP protection and enforcement helps businesses both differentiate their product and service offerings from those of competitors, and helps them achieve their full market potential. The practice’s well thought-out IP strategies guard against patent, trademark, and copyright infringers, knock-offs and counterfeiting, online fraud, and idea theft by competitors, insiders, partners, and manufacturers — all of which can harm the reputation and brand of companies large and small.

Design Patents:
Long before other law firms saw the value of design patents for their clients, the Sterne Kessler team was breaking new ground in the field. With almost three decades of in-depth experience, the comprehensive programs help companies protect their unique product designs and eliminate knock-offs in the marketplace. The firm’s design patent team has been sought out to help protect some of the most iconic designs in the world. For example, the design patents obtained by the firm for the world’s leading smart phone innovator survived one of the most contentiously fought patent litigations in history. In 2018 alone, the firm’s design patent team filed more than 1,000 applications to protect clients’ designs in more than 27 countries, including almost 500 before the United States Patent & Trademark Office.

Opinions & Strategic IP Advice:
Sterne Kessler lawyers have rendered opinions and served as strategic IP advisors for decades. They work closely with their clients’ management teams to determine whether a third party may be infringing the claims of patents and to develop a road map to preserve their freedom-to-operate. The firm handles opinions related to freedom-to-operate, non-infringement, invalidity, patentability, registerability of trademarks, and enforceability of patents and trademarks. Opinions range from formal opinions of counsel, upon which clients have successfully relied at trial, to less formal letter opinions, all of which provide strategic advice to assist companies in making critical business decisions.