2021 research period for North America is officially open
March 24, 2021
Research team is now accepting firm submissions, due June 1
1100 New York Avenue, NW
Washington, DC 20005
,
Tel: 202-371-2600
Fax: 202-371-2540
Website: www.sternekessler.com
Number of partners: 61
Number of lawyers: 148
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 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.
Lasted updated October 2018
US
General Patent Litigation
| General Patent Litigation — Recommended |
|---|
| Arnold & Porter |
| Cooley |
| Covington & Burling |
| Durie Tangri |
| Gibson Dunn & Crutcher |
| Knobbe Martens |
| Mayer Brown |
| McAndrews Held & Malloy |
| Morgan Lewis & Bockius |
| Sterne Kessler Goldstein & Fox |
| Venable |
| Weil Gotshal & Manges |
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 |
|---|
| Axinn Veltrop & Harkrider |
| Greenberg Traurig |
| Morrison & Foerster |
| Perkins Coie |
| Robins Kaplan |
| Rothwell Figg Ernst & Manbeck |
| Taft Stettinius & Hollister |
| Willkie Farr & Gallagher |
Patent Prosecution
Patent Strategy & Management
| Patent Strategy & Management — Recommended |
|---|
| Arnold & Porter |
| Dechert |
| Fenwick & West |
| Foley & Lardner |
| Greenberg Traurig |
| Hamilton Brook Smith & Reynolds |
| Leydig Voit & Mayer |
| McDonnell Boehnen Hulbert & Berghoff |
| Morgan Lewis & Bockius |
| Venable |
| WilmerHale |
| Lawyer | Section | Practice Area | Location |
|---|---|---|---|
| Ellison, Eldora | Intellectual Property | Patent Prosecution, Patent Strategy & Management, General Patent Litigation | Washington, D.C. |
| Kim, Carla Ji-Eun | Intellectual Property | Patent Strategy & Management | 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. Sterne Kessler earned significant awards attention from LMG Life Sciences in 2020, with recognition as Inter-Partes Review Firm of the Year and as lead firm in the Hatch-Waxman Impact Case of the Year Amneal v Almirall.
Eldora Ellison is renowned for her expertise in patent strategy and post-grant proceedings. “One of my all-time favorite people is Eldora Ellison,” a peer says naming recommended attorneys in the area, while another labels her “a very talented, excellent attorney.” 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. She is also active for Bristol-Myers Squibb in patent portfolio management related to small and large molecule products.
Biotech partner and patent prosecution chair Eric Steffe specializes in prosecution, portfolio development and post-grant proceedings. Steffe is also on the team representing University of California in CRISPR-related matters. Deborah Sterling and Gaby Longsworth are currently active for Teva in the appeal of PTAB rulings connected to its patent antibody product Ajovy. LMG Life Sciences newcomer Carla Ji-Eun Kim is a well-versed practitioner focused on patent prosecution and strategy, who advises on Bristol-Myers Squibb’s portfolios alongside Ellison.
In litigation, John Christopher "JC" Rozendaal is co-chair of the firm's trial and appellate practice group. This year he was active for Teva in a significant patent trial for Teva that ultimately cleared patents covering Narcan for generic market entry. Dennies Varguhese is a standout in the firm’s Hatch-Waxman practice who recently drew attention as a lead in the noteworthy Patent Impact Case Amneal v Almirall, which was a precedent-setting appeal involving attorneys’ fees. Gaby Longsworth was also active in the matter.