Mind + Muscle

technical minds + legal muscle



Patent Office Litigation

Since the implementation of the America Invents Act of 2011, the IP arena has been in a state of flux.  In this environment, our Patent Office Litigation team has emerged as a dominant force, having represented both petitioners and patent owners, in a wide range of the USPTO's technology centers – biotech and chemical, electrical, and mechanical.

 Why Sterne Kessler?

  • We filed four of the first ten inter partes reviews at the USPTO.
  • Whether representing petitioners or patent owners, Sterne Kessler gets results at the Final Written Decision.  91% of Sterne Kessler's client instituted claims received a positive outcome in the Board's Final Written Decision.
  • We lead the pack in institution success. When representing petitioners, Sterne Kessler obtains institution for 76% of challenged claims, significantly higher than the average of 62%.
  • When representing patent owners, Sterne Kessler has trial denied for 49% of challenged claims, well above the average of 38%.
  • Sterne Kessler is second in terms of the number of representations, with involvement in over 500 post-grant challenges.
  • Sterne Kessler has handled 400+ reexams on behalf of both patent owners and third party requesters.  Also retained as special reexamination counsel or reexamination expert in many others.  


Sterne Kessler is experienced in all proceedings before the Patent Trial and Appeal Board, including:

Thought Leadership

(1) Success Stories

  • Alembic Pharmaceuticals Limited

    Cleared the Way for Generic Drug

    Successfully represented Alembic in defeating a motion for a preliminary injunction and temporary restraining order brought by Otsuka Pharmaceuticals. We overcame multiple grounds including claim construction, direct infringement, induced infringement, invalidity, immediate and irreparable harm, balance of hardships, and the public interest factors. The decision is significant, clearing the way for Alembic to launch a generic version of Otsuka's multi-billion dollar blockbuster drug Abilify®.

  • Apotex, Inc.

    1st Pharma IPR

    Filed the first IPRs related to pharmaceutical products involved in Hatch-Waxman litigation.  Succeeded in having  IPR trial instituted on the patent and ultimately reached a favorable settlement of both the IPR and the concurrent district court litigation with the patent owner.

  • SAP SE

    IPRs & CBMs

    Engaged to file four inter partes reviews and two covered business method patent reviews against four Pi-Net patents - - patents that have been asserted against a number of companies.  To date all challenged claims in three of the patents have been found unpatentable, while two IPR trials have been instituted against the remaining patent.

  • Tessera Technologies, Inc.

    $128.3 Million

    Secured confirmation of all key claims in a patent that served as the basis for a $128.3 million arbitration award against the IPR petitioner.

  • ContentGuard

    6 Patents

    Asked to defend six of ContentGuard's digital rights management patents - - ultimately, we secured a no-trial decision for key claims on one patent, and for a second, determined a reissue application was the best approach.  The remaining four faced a full trial before the PTAB where we achieved full confirmation of all challenged claims.

  • Sterne Kessler Goldstein & Fox

    Firm of the Year

    Named the 2015 PTAB Firm of the Year by Managing Intellectual Property for superior work representing petitioners and patent owners before the USPTO's Patent Trial and Appeal Board on matters involving inter partes review, post grant review, derivation and covered business method proceedings.

(4) Sterne Kessler Publishes Report on CAFC Appeals from the PTAB

Sterne Kessler Publishes Report on CAFC Appeals from the PTAB
A Case Study:

Sterne Kessler Publishes Report on CAFC Appeals from the PTAB

Today, the U.S. Patent and Trademark Office's Patent Trial and Appeal Board (PTAB) reviews over 1,500 patents each year. Final written decisions from the PTAB are directly appealable to the Federal Circuit. We have summarized the outcomes of the top 10 most important Federal Circuit appeals in 2016 from the PTAB. In this report, our authors explore important insights associated with each of these decisions. To view a copy of the PDF, please click here.


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