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.
  • We lead all firms in number of successful final written decisions, with nearly 100% of our completed trials resulting in positive outcomes for firm clients.
  • We lead the pack in institution success. When representing petitioners, Sterne Kessler obtains institution at a rate of 81%, significantly higher than the average rate of 76%.
  • When representing patent owners, Sterne Kessler has trial denied at a rate of 28%, well above the average of 23%.
  • Sterne Kessler is second in terms of the number of representations, with involvement in 256+ post-grant challenges.

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

(1) Success Stories

  • 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.

  • Sterne Kessler Goldstein & Fox

    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.

  • 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.

(4) Patent Office Litigation - We Wrote the Book.

Patent Office Litigation - We Wrote the Book.
A Case Study:

Patent Office Litigation - We Wrote the Book.

Our book Patent Office Litigation is a two-volume set focused on the new contested proceedings under the America Invents Act.


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