Patent reform is being very good to Washington-based Sterne, Kessler, Goldstein & Fox. The 107-lawyer firm specializes in patent re-examinations and interferences at the patent office, and the America Invents Act will add new procedures for challenging patents. “The AIA is making opportunities that few firms are equipped to deal with,” said Sterne Kessler managing director Mike Ray. “Our clients need specialists more than ever, not generalists,” Ray said.
Sterne Kessler often defends patents challenged by infringement defendants, while other firms represent the client in the concurrent litigation. In one high-profile example, the firm successfully defended in a re-examination i4i L.P.’s patents. Microsoft Corp. had challenged the patents after being sued for infringement by i4i. When the case went to the U.S. Supreme Court, Wilmer Cutler Pickering Hale and Dorr, lead counsel for i4i in the litigation, was able to use Sterne Kessler’s work to help it win a unanimous opinion for i4i.
The firm also helped Uniloc with a patent re-examination launched by Microsoft in Uniloc USA Inc. v. Microsoft Corp. The patent office upheld all of the claims on the patent, strengthening it in the litigation, in which Finnegan, Henderson, Farabow, Garrett & Dunner represented Uniloc. After the U.S. Court of Appeals for the Federal Circuit found infringement, the parties ultimately settled. Uniloc picked the firm based on its i4i re-examination experience, firm founder Rob Sterne said. The i4i and Uniloc matters were among more than 440 re-examinations the firm has handled during the past five years. “Being very connected to the process, knowing what’s going on at the agency and the courts has been very important for my success and the firm’s success,” Sterne said.
Trademark advice, district court patent litigation and representing pharmaceutical companies at the International Trade Commission (ITC) are also part of the mix. Generic pharmaceutical litigation “has been a phenomenal growth area,” Ray said. Last August, for example, the firm helped Intas Pharmaceuticals Ltd. settle an ITC investigation stemming from Eli Lilly and Co.’s complaint that Intas’ generic anti-cancer drug infringed Lilly’s Gemzar.
The firm’s lawyers also have access to relatively rare pro bono IP work. Its new Intellectual Property and Human Rights Pro Bono Practice was developed throughout 2011 and rolled out this March by founding director Jorge Goldstein, who also heads the firm’s biotechnology practice group. The practice helps impoverished and indigenous people obtain rights for their discoveries.
— Sheri Qualters