Sterne, Kessler, Goldstein & Fox PLLC

Founded in 1978, Sterne Kessler Goldstein & Fox has grown through the ensuing four decades to become one of the leading IP boutiques in the nation, with a focus on the protection, transfer, and enforcement of intellectual property rights. The DC-based firm employs approximately 150 attorneys and represents clients like Google, Adidas, Apple, Bristol-Myers Squibb, Teva, PepsiCo, and the University of California. 

Shaping IP Law

Sterne Kessler has had its hands in some of the most important IP cases of the last few decades, helping to shape the way patents are granted and protected. In 1995, the firm served as lead counsel for IBM in the landmark In re Beauregard appeal to the Federal Circuit. The case was brought by IBM to establish that a computer program on a disk was patentable subject matter, and the decision resulted in the issuance of the Software Patent Guidelines by the U.S. Patent and Trademark Office. In 2007, name partner Rob Sterne represented the respondent in KSR v. Teleflex before the U.S Supreme Court, a case that addressed the fundamental question of when an invention is "obvious" and therefore not patentable. More recently, Sterne Kessler attorneys served as counsel in the seminal 2014 U.S. Supreme Court case Alice Corp. v. CLS Bank Int'l, which has led to a significant drop in the number of business method patents.

PTAB Kings

Sterne Kessler has been leading the way in a relatively new area of IP law, cases before the Patent Trial and Appeal Board (PTAB), which was created in 2012 as part of the America Invents Act (AIA). The new administrative law body handles challenges to patent validity, as well as appeals of patent examiner rejections. The PTAB has significantly cut the amount of patent litigation heard by federal courts because the proceedings are quicker and less expensive than full-blown district court trials. Sterne Kessler has developed one of the largest PTAB practices, litigating more cases to decisions from the PTAB. The firm's success in this newly established arena is particularly important because the new proceedings have disrupted the patent litigation landscape over the past few years and resulted in the downsizing of many other IP firms and practices in that time.

Promoting Human Rights Through IP

In 2012, Sterne Kessler launched its Intellectual Property and Human Rights Pro Bono Practice—the first of its kind—with a focus on the interplay of intellectual property principles and human rights. Through this program the firm has promoted the conservation of biodiversity through ethical sourcing practices for the Union for Ethical BioTrade, protected indigenous Peruvians from biopiracy on behalf of the National Working Group on Maca, and protected the trademarks of Operation Second Chance and the Discovery Creek Children's Museum of Washington. More recently, in response to associate interest, the firm has expanded into more areas of pro bono work, including immigration.

1. The firm represents 2021 Nobel Prize winners, Jennifer A. Doudna and Emmanuelle Charpentier on CRISPR-Cas9, the groundbreaking technology that has profoundly effected biology, agriculture, and medicine and is poised to treat thousands of intractable diseases.
   
   
2. In 2020, Sterne Kessler hit the milestone of handling 1,000 matters at The Patent Trial and Appeal Board, less than ten years after its establishment and remains a leader at the PTAB.
   
   
3. Sterne Kessler was instrumental in In re Beauregard, the 1995 case that led to the PTO developing guidelines for patenting software.
   
   
4. In 1988, Sterne Kessler secured a win on appeal in In re Wands, still today the fundamental decision on enablement for biological patent claims.