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1100 New York Avenue, NW
Washington, DC 20005
,
Tel: 202-371-2600
Fax: 202-371-2540
Website: www.sternekessler.com
Number of partners: 46
Number of lawyers: 130
Office Locations: Washington, D.C
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’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 nearly 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 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 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 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 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 fast track nature of the ITC proceedings, the complex issues involved in accused technologies, and following the precise agency rules associated with investigations. In 2016, the firm handled 10% of the ITC investigations at the US International Trade Commission.
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.
Lasted updated October 2018
US
General Patent Litigation
Hatch-Waxman Patent Litigation (Generic)
| Hatch-Waxman Patent Litigation (Generic) — Highly Recommended |
|---|
| Goodwin Procter |
| Knobbe Martens |
| Rakoczy Molino Mazzochi Siwik |
| Sterne Kessler Goldstein & Fox |
| Wilson Sonsini Goodrich & Rosati |
| Winston & Strawn |
| Hatch-Waxman Patent Litigation (Generic) — Recommended |
|---|
| Greenberg Traurig |
| Latham & Watkins |
| Morrison & Foerster |
| Perkins Coie |
| Robins Kaplan |
| Rothwell Figg Ernst & Manbeck |
| Taft Stettinius & Hollister |
| Willkie Farr & Gallagher |
Patent Prosecution
Patent Strategy & Management
| Lawyer | Section | Practice Area | Location |
|---|---|---|---|
| Ellison, Eldora | Intellectual Property | Patent Prosecution, Patent Strategy & Management, General Patent Litigation | Washington, D.C. |
| Longsworth, Gaby | Intellectual Property | Patent Prosecution, Patent Strategy & Management | Washington, D.C. |
| Rozendaal, John Christopher “JC” | Intellectual Property | Hatch-Waxman Patent Litigation | Washington, D.C. |
| Steffe, Eric | Intellectual Property | Patent Prosecution, Patent Strategy & Management, General Patent Litigation | Washington, D.C. |
| Sterling, Deborah | Intellectual Property | Patent Prosecution | Washington, D.C. |
| Varughese, Dennies | Intellectual Property | Hatch-Waxman Patent Litigation | Washington, D.C. |
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Intellectual Property
Sterne Kessler Goldstein & Fox
DC-based firm Sterne Kessler Goldstein & Fox earns top rankings across multiple practice areas in IP, including Hatch-Waxman litigation, patent prosecution and strategy. The firm is also well known as a destination shop for post-grant proceedings, an area of high activity for the group over the past year. "When I need an expert in PTAB appeals, I go to Sterne Kessler," a peer says. "That's my go to when I need an expert beside me to question how I'm viewing a rule."
Eldora Ellison is renowned for her expertise in patent strategy and post-grant proceedings. "I have loved working with her, and I think she is a fabulous PTAB attorney," a peer from a recent case says. "Eldora is very insightful, strategic, and a pleasure to work with," another peer says. Ellison is currently involved in the newsworthy CRISPR battle between the University of California and Broad Institute, which continues with the recent initiation of a patent interference by the Patent Office. For her work in this area, Ellison was awarded Post-Grant Proceedings Attorney of the Year by LMG Life Sciences.
Patent prosecution group chair Eric Steffe is deemed a "talented, excellent attorney" by a peer. He specializes in patent prosecution, portfolio development and post-grant proceedings. Steffe is also on the team representing University of California in CRISPR-related matters.
In litigation, John Christopher "JC" Rozendaal is co-chair of the firm's trial and appellate practice group. He recently acted for Teva in a notable case against Allergan dealing with tribal immunity. The case was decided in favor of client Teva at the Federal Circuit last year, and more recently the Supreme Court denied petition for writ of certiorari by Allergan. Dennies Varguhese is well-versed in Hatch-Waxman disputes for clients in the generic pharmaceutical space. He recently acted for Wockhardt in a matter against Janssen involving its branded product Zytiga.
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