Sterne, Kessler, Goldstein & Fox PLLC

IAM Research

The Patent 1000 focuses exclusively on patent practice and has firmly established itself as the definitive 'go-to' resource for those seeking world-class legal patent expertise.

Silver - Firms: litigation

Highly-recommended - Firms: transactions

Highly-recommended - Firms: prosecution

One of the largest IP-focused firms in the United States, Sterne Kessler has more than 230 IP professionals on board, including over 60 PhDs. Founded as a predominantly prosecution-focused outfit, it has diversified significantly since then, and is now one of the preeminent patent groups for prosecution, litigation, appeals and PTAB work. The stellar non-contentious team includes Carla Ji-Eun Kim, Donald Featherstone, Michael Specht, Eric Steffe, Deborah Sterling and Richard Coller. Ji-Eun Kim chairs the prosecution department and is a biotechnology expert. She has been busy supporting Codiak BioSciences and Lyell Immunopharma with their prosecution needs over the past 12 months. Featherstone focuses on electrical patents and also leads the set’s foreign filing committee. He was an examiner at the USPTO prior to joining the firm. Specht is a PTAB expert who has acted in nearly 100 IPRs, covered business methods and post-grant reviews. He makes his debut in the guide this year. Steffe focuses on the biotechnology and chemical fields and has been representing the University of California in relation to CRISPR technology. Sterling is a PhD who provides strategic guidance to pharmaceutical and biotechnology companies that are looking to expand their patent protection across the globe. Coller is a leading strategist and portfolio management expert, who is well versed in a range of industries. Three more top performers are Jorge Goldstein, Michael Lee and Michael Ray. Goldstein is one of the group’s founders and is widely regarded as a leader in the biotechnology space, with more than 45 years of experience prosecuting patents in this field. Lee is a member of the electronics practice group and is a key part of the team that protects Roku’s hardware and software inventions. Ray acts as managing director but still has an active practice. He is also highly skilled in the electronics space. The litigation team is equally esteemed, thanks to the expertise of Eldora Ellison, Daniel Yonan, Jon Wright, Dennies Varughese, John Christopher Rozendaal and Michael Joffre. Ellison is a biochemistry, molecular and cell biology PhD, who is one of the nation’s leading PTAB practitioners, featuring in more than 70 IPRs and PGRs. She is crucial in the work for the University of California, along with Steffe. Yonan founded and chairs the firm’s ITC group, which he has helped to quadruple in size since its establishment. He knows Section 337 processes inside and out. Wright spends most of his time handling appeals and issues before the PTAB. During his career he has been lead or back-up counsel in almost 200 IPRs. Varughese is experienced in disputes in all major US forums. Pharmaceutical litigation is his main speciality. Rozendaal is another pharmaceutical ace and during the past year has represented the likes of Teva Pharmaceuticals and Adapt Pharmaceuticals. Joffre worked closely with him on the latter brief. He is a seasoned trial lawyer who has advocated in courts throughout the United States, boasting an impressive track record. Operating on both sides of the contentious and non-contentious divide are Tracy-Gene Durkin, Robert Sokohl and Robert Greene Sterne. Durkin is one of the best when it comes to design patents. She has an exceptional reputation and works with top companies such as Apple and PepsiCo. Sokohl is a multi-talented strategist who features on the prosecution, litigation and transactions tables again this year. Sterne founded the practice at the age of 26 and has gone on to become one of the most experienced and reputable practitioners in the industry.

Recommended - Firms: post-grant proceedings

Recommended - Firms: prosecution

Firm Profile

Sterne, Kessler, Goldstein & Fox PLLC is a leading IP law firm based in Washington, DC and is distinguished by the strong technical experience and knowledge of its team. The firm has 45 years’ experience helping companies strategise, build and enforce worldwide IP portfolios, including inter partes matters (lawsuits, appeals, oppositions and post grant proceedings such as inter partes review and covered business method patent review); the preparation and prosecution of patent and trademark applications before the US and foreign patent offices; and advice on portfolio strategies (valuation, acquisition and due diligence).

Sterne Kessler is noted for its strength in litigation and has received national rankings as a Best Law Firm in patent litigation and prosecution categories from Best Lawyers as well as a 2022 Hatch-Waxman Impact Case of the Year Award from LMG Life Sciences. The firm launched its USPTO litigation service as a response to the implementation of the America Invents Act, beginning in 2012. The law ushered in a variety of ways to either challenge or strengthen patents at the PTAB of the USPTO, including inter partes review, post grant review, covered business method patent review, derivations, interferences and reexamination. In 2020, the firm was named PTAB Firm of the Year for the third time by a leading IP journal.

Sterne Kessler’s attorneys and agents, over 60 of whom have PhDs, are carefully recruited for their technical expertise and industry experience. Most have earned an advanced technical degree and have significant industry or academic experience across a wide spectrum of technical areas, including electronics, software, biotechnology, clean technology, pharmaceuticals, chemical products and processes, and consumer products. Many of the firm’s patent prosecution attorneys have previously worked as patent examiners and have unique insights into the inner workings of the USPTO.

Sterne Kessler lawyers are trained to evaluate IP in the context of client business issues to ensure alignment with company goals. Strong patent claims constructed around strategic goals are invaluable as companies commercialise ideas or defend leadership positions against interferences, reexaminations and oppositions.

Practising in Washington DC is a distinct advantage. The firm’s proximity to the USPTO, the US Court of Appeals for the Federal Circuit, the ITC, the US Supreme Court and Congress gives it the opportunity to help shape the IP landscape. Over four decades, Sterne Kessler attorneys have formed substantive professional relationships with examiners, given their regular presence at the USPTO.

Sterne Kessler’s client base includes emerging and established companies, venture capital firms, individual entrepreneurs and universities – from bleeding-edge technologies, pharmacogenomics, nanomedicine and biofuels to next-generation electronics and other consumer products.

While the firm provides the full range of services, it is organised internally around four main practice groups:

  • the trial and appellate (litigation) group;
  • the biotechnology/chemical group;
  • the electrical group; and
  • the mechanical/consumer products group.

In total, more than 400 people are employed by the firm.

The firm’s main service areas include patent litigation and appeals, patent prosecution (utility, design, and business methods), USPTO PTAB trials, reissue, reexamination, due diligence, Hatch-Waxman (generic and proprietary), IP valuation, inventorship dispute resolutions, ITC Section 337 investigations, licensing, patent forensics, product lifecycle management, opinions, oppositions, strategic IP advice, trademarks and trade secrets/unfair competition.

Key industries serviced by the firm include pharmaceuticals, biosimilars, biotechnology, chemistry, clean technology, consumer products, electronics and software, food science and packaging, industrial products, medical devices, nanotechnology and automotive.

The firm is consistently ranked among the premier IP firms in the United States. Awards and recognition for the firm range from many consecutive years of Band 1 rankings in Chambers & Partners USA to consistent top-tier rankings in the IAM Patent 1000 and other market recognition programmes. Law360Vault and the National Law Journal have recognised Sterne Kessler for its diverse partnership, and the firm is consistently distinguished as a great place to work by The Washington Post based on attorney and staff survey results.

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