United States

Firm overview

Founded in 1978 and based in Washington, D.C., Sterne Kessler is a premier law firm dedicated exclusively to the protection, transfer, and enforcement of intellectual property rights. The firm has more than 160 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 more than 50 masters degrees and more than 50 doctorate degrees in science or engineering -- credentials wide and deep enough to fill the faculty of a science oriented university.

Patent Prosecution:

For over 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 trial & appellate group practices 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 50 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 U.S. 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 more than 1000 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 centers-- biotech and chemical, electrical, and mechanical.

Appellate Litigation:

The appellate litigation practice handles appeals to the U.S. Court of Appeals for the Federal Circuit, as well as circuit courts around the U.S. The practice handles appeals from district courts, the U.S. International Trade Commission, and the PTAB.

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 to the ITC headquartersin Washington, DC 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 fast track nature 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 95% of firms appearing there since 2015, and the firm successfully took 5 investigations through trial throughout 2018-19.

Trademark & Brand Protection:

The Trademark & Brand Protection 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.

Firm overview

Debevoise is a leading international firm whose lawyers work on some of the most important headline matters of the day. The firm was built on the bedrock principle of superior client service, the kind of service that can only be delivered by commercially savvy, ambitious lawyers on whom leading global enterprises rely for their most complex and important deals and matters.

With more than 600 lawyers in nine offices located in New York, Washington, D.C., London, Paris, Frankfurt, Moscow, Hong Kong, Shanghai, and Tokyo, we are well versed in the increasingly global issues facing our healthcare and life sciences clients.

Debevoise combines a laser-like focus on client objectives, with deep transactional and litigation experience across a wide range of sectors in the healthcare and life sciences industries. Our Healthcare and Life Sciences Group employs a highly coordinated, multidisciplinary approach to address transactional, litigation and intellectual property matters for leading healthcare and life sciences companies and their investors. The Group draws from a broad array of practices throughout the firm, leveraging its experience in private equity, M&A, finance, capital markets, restructuring, litigation, government and regulatory investigations, tax, intellectual property and antitrust, among others.

The team provides integrated, cross-practice legal advice with efficient and seamless execution covering all aspects of healthcare matters, including corporate and M&A, litigation and compliance, FDA/FTC regulatory, intellectual property, including licensing and collaboration agreements, and cybersecurity & data privacy. The group's transactional work includes mergers and acquisitions, financings, securities offerings, licensing, development and commercialization transactions. Debevoise lawyers are the long-time editors and contributors to the Healthcare Mergers and Acquisitions Answer Book (Practising Law Institute, 2018), an extensive reference guide, published yearly, addressing structuring, regulatory, due diligence and documentation issues in healthcare M&A and licensing transactions.

The litigation and enforcement practices advise on bet-the-company litigation, government and internal investigations and help navigate clients through complex civil matters, intellectual property issues, advertising disputes, and international dispute resolution. Debevoise lawyers also regularly counsel healthcare clients regarding compliance programs, preventive measures and assist with the collateral consequences that may arise from criminal proceedings. The group also routinely represents board committees conducting independent investigations and compliance reviews.

We are proud to offer cutting-edge transactional advice and broad litigation and regulatory experience that allow our clients to successfully complete deals, conclude enforcement actions, resolve disputes and implement industry-leading compliance programs. We are also extremely pleased that Debevoise partners Andrew L. Bab, Mark P. Goodman, Kevin Rinker, Paul D. Rubin and Edwin Schallert have been recognized as "Life Sciences Stars" in the LMG Life Sciences 2018 Guide.

Firm overview

Grüneberg and Myers turned the traditional law firm model on its head, to set a new standard for in-depth, personalized, cost-efficient patent counsel. Now in operation for over three years, the firm has grown into an all-star team, led by three partners with substantial experience in patent prosecution, appeals, litigation, post-grant proceedings, and counseling.

The firm is 100% women- and ethnic minority-owned, and includes diverse representation at all levels. Varied backgrounds strengthen the firm and provide wide-ranging perspectives.

Cost-Efficient High Quality

In an ever-changing market, Grüneberg and Myers offers cost savings for patent legal budgets. Because adaptations to modern business practices are difficult for traditional IP firms, Grüneberg and Myers started in 2017 to clean the slate and begin anew. With innovative office concepts and modern, high-tech law practice management systems, the firm reduced overhead, bringing prices to a very competitive level. Constantly-updated, state-of-the-art file and docket management software provide robust cybersecurity and increased efficiency, within a reasonable technology budget. A modern office concept encourages collaboration between team members.

The firm’s price-competitive and technically-savvy nature has enabled seamless adaptation and continued growth, even during the COVID-19 pandemic.

At the same time, the firm maintained high quality by recruiting experienced attorneys and staff. The firm itself was listed as a recommended patent prosecution firm in the Washington, DC area in IAM Patent 1000 after just a few years in business. Publications have also ranked some of the firm’s individual attorneys in LMG Life Sciences’ Life Sciences Stars, the IAM Strategy 300, the IAM Patent 1000, Managing IP’s IP Stars, and Thomson Reuters’s Super Lawyers. The team includes graduates from prestigious universities such as Cornell, Duke, Penn State, Johns Hopkins, George Mason University, and George Washington University, as well as a Lynen fellow of the Alexander von Humboldt Foundation. Team members have previously worked at the International Trade Commission, the Court of Appeals for the Federal Circuit, the U.S. Patent and Trademark Office, in-house positions, large general-practice firms, and IP boutiques.

The professionals include native German, Japanese and Korean speakers.

Experienced staff support the firm’s attorneys. While the firm itself started in 2017, the firm’s staff leadership has worked in managerial and supervisory roles in larger, high-volume patent prosecution firms and in-house at large companies, thus carrying forward decades of institutional knowledge in an innovative, efficient environment.

Life Sciences IP Strategy

Global pharmaceutical and life sciences companies trust Grüneberg and Myers with high-value, strategically-important intellectual property decisions. The firm has guided clients to optimal outcomes with Hatch-Waxman exclusivity, Patent Term Extension, Orange Book listings, Biologics Price Competition and Innovation Act strategy, and patent subject matter eligibility for diagnostics. Life sciences and pharmaceutical companies have relied on the firm’s life sciences expertise to provide counsel on licensing and post-grant matters with hundreds of millions of dollars or more at stake.

Patent Prosecution

The attorneys at Grüneberg and Myers prepare and prosecute U.S. and international patent applications with skill and experience. Using the full menu of options available at the USPTO, including Examiner interviews, pilot programs, and accelerated examination, Grüneberg and Myers pursues optimized, strong patent protection for its clients. The firm prides itself on detailed analysis of office actions and other requirements with fast turnaround, avoiding the need for extensions and facilitating greater familiarity with cases, both for applicants and Examiners.

The firm also coordinates global patent prosecution and portfolio management. Often traveling and maintaining relationships with patent procurement firms globally, the attorneys at Grüneberg and Myers consolidate patent strategies and take the work off of in-house counsel.

With its low-overhead model, Grüneberg and Myers can prosecute applications within competitive alternative fee structures.

Post-Grant Proceedings, PTAB Appeals, Counseling, and Freedom-to-Operate

The attorneys at Grüneberg and Myers have years of experience with counseling, freedom-to-operate, PTAB appeals, and post-grant matters. In addition, the attorneys at Grüneberg and Myers have performed large product IP-clearance projects, and have helped clients to navigate complex strategies in patent subject matter eligibility. The attorneys of the firm have also achieved substantial positive outcomes for clients in reexamination and in inter partes review.

When in-house counsel needs to operate on a budget, the firm can provide predictable costs.

Clients

Large, global corporations, including Fortune 50 companies and Fortune Global 200 companies trust Grüneberg and Myers with important roles in building and maintaining patent portfolios and in operating in competitive IP environments. The firm serves major companies in Europe, Asia, and the Americas, supporting in-house counsel in biotechnology, chemical, pharmaceutical, medical devices, AI and machine learning, electronics, and tools and machinery industries.

Clients have expressed a high level of satisfaction with the firm’s procedural and substantive handling of their patent matters, as well as with the firm’s flexibility to offer competitive pricing.

Firm overview

RMMS consists of over 30 attorneys focused exclusively in the field of pharmaceutical and biopharmaceutical patent and regulatory counseling, and litigation under Hatch-Waxman, the Medicare Modernization Act (MMA), the Biologics Price Competition and Innovation Act (BPCIA), as well as post-grant review before the Patent Trial and Appeal Board.

RMMS attorneys embrace the science of a case, and make it an integral part of our winning strategy.  Indeed, a majority of our attorneys have technical degrees or backgrounds in a variety of areas and disciplines, including chemistry, biochemistry, biology, molecular biology, microbiology, genetics, bacteriology, bioengineering, biomedical engineering, chemical engineering and pharmacy, and many of our attorneys are registered with the USPTO. RMMS also employs full-time Ph.D. technical advisors specializing in chemistry, biological sciences, and pharmaceutics/pharmacy.

Our experience is unparalleled in the industry.   Since the firm’s inception over 15 years ago, RMMS has handled over 300 Hatch-Waxman/BPCIA and related pharmaceutical litigation matters (including declaratory judgment, patent infringement, Administrative Procedure Act (APA), and commercial dispute matters) involving at least 160 different drug products for over 25 pharmaceutical clients. In addition to our substantial litigation experience, our attorneys also have extensive regulatory and legislative experience.

We understand that patent litigation is not an end-game, and that the business decisions made throughout the entire product and patent evaluation, regulatory review, litigation, and commercialization process are equally critical to the company’s strategic plans involving any one product or group of products.  Our goals are aligned with those of our clients:  to ensure that each client obtains value from its applications, whether through the eventual commercial marketing of the product, the sale or assignment of the asset, or relationship-building with other companies through joint development agreements, active pharmaceutical ingredient (API) and finished dosage form supply agreements, licensing agreements, and co-promotion and marketing agreements.