With the passage of the America Invents Act in September 2011, patent law underwent a major shift — and Sterne, Kessler, Goldstein & Fox saw a business opportunity.
The 117-lawyer intellectual property boutique, based in Washington, went beyond the obligatory client alert. A team of 40 lawyers literally wrote the book — a two-volume treatise published by Thomson Reuters Westlaw about the law’s new procedures to challenge patents. They surveyed their clients about what they wanted to know, held a seven-part webinar and put massive amounts of information online.
"It wasn’t just business as usual," said managing director Michael Ray. "We needed to help our clients deal with the new law and, clearly, there was a lot of work to be done."
Their efforts have paid off. Sterne now ranks first in the number of inter partes review representations before the U.S. Patent and Trademark Office, with 29 matters, and first in the number of instituted proceedings. The inter partes review is a new trial proceeding before the Patent Trial and Appeal Board to review patent claims on certain grounds.
The new law aside, Sterne lawyers are also known for their expertise in securing design patents — which, Ray pointed, out is "an often overlooked area of patent law."
The value of design patents was made clear last year by Apple Inc. in its mammoth patent infringement suit against Samsung Electronics Co., in the Northern District of California. Of the six Apple patents that the jury found were infringed, three were design patents prosecuted by Sterne partner Tracy Durkin, who has secured protection for much of Apple’s design portfolio.
Other big-name Sterne clients include Advanced Micro Devices Inc., Google Inc., Human Genome Sciences Inc., Reebok International Ltd. and Teva Pharmaceuticals North America.
The firm also prides itself on the clients no one has heard of — entities it represents in its human rights pro bono IP practice. Launched a year ago, the initiative focuses on protecting intellectual property rights that affect indigenous people in areas of underdevelopment or poverty. In one matter, the firm represents a small company in South America that has obtained access to certain rainforest fruits harvested by an indigenous community. Firm lawyers are helping the company obtain rights and license the fruit’s active ingredients to food, cosmetic and pharmaceutical companies.