Sterne, Kessler, Goldstein & Fox

Sterne, Kessler, Goldstein & Fox P.L.L.C., is a law firm specializing in the protection, transfer and enforcement of intellectual property rights.[1] Since its founding in 1978 with only two attorneys and a handful of employees, Sterne Kessler has grown to become the 4th largest IP specialty law firm in the United States.[2] The firm, based in Washington, DC, currently employs over 170 patent attorneys, agents, and technical specialists representing a broad range of entities, including emerging and established companies, venture capital firms, universities and select individuals. Attorneys represent clients such as Adidas, Google, Apple, Bristol-Myers Squibb, AbbVie, and The University of Maryland in many areas, including patent prosecution, litigation and appeals, and reexamination.[3]

Sterne, Kessler, Goldstein & Fox PLLC
Headquarters1100 New York Avenue NW, Washington, D.C.
No. of offices1
No. of attorneys130
No. of employees239
Major practice areasIntellectual property law
Date foundedOctober 2, 1978
FounderRobert Greene Sterne
Edward J. Kessler
Jorge A. Goldstein, Ph.D.
Samuel Fox
Company typeProfessional Limited Liability Company
Websitewww.sternekessler.com

Areas of practice

Sterne, Kessler, Goldstein & Fox practices intellectual property law, including patent prosecution, patent office litigation and appeals to the Federal Circuit court, district court litigation, Hatch-Waxman ANDA litigation, U.S. International Trade Commission litigation, design patents, business methods, licensing, trademark, advertising, and anti-counterfeiting.[4][5]

Some firm professionals hold advanced technical degrees with more than 60 firm employees holding a Ph.D.[6] Many members of Sterne Kessler's staff have previous technical, academic or government experience across various fields including: electronics, software, biotech, clean tech, pharmaceuticals, grid resiliency, chemical processes and consumer products or have previously worked as patent examiners at the US Patent and Trademark Office (USPTO).[7]

History

In 1978, Robert Greene Sterne set out to create a law firm that would "recognize the contribution every person makes and would place a high value on technical competency and service."[8]

It took a few years and the addition of Edward Kessler, Jorge Goldstein, and Samuel Fox before the goal was reached with the establishment of Sterne, Kessler, Goldstein & Fox. Founded in Washington, DC to serve U.S. companies in the field of intellectual property law, the firm now has over 170 IP professionals serving clients around the globe.

In 1988 Sterne, Kessler, Goldstein, & Fox secured a win on appeal in In re Wands. This case is the fundamental decision on enablement for biological patent claims.[9] In 1991 Sterne, Kessler, Goldstein, & Fox expanded their operations to include Silicon Valley clients. In 1999 Sterne, Kessler, Goldstein, & Fox responded to demands for highly qualified, technically adept candidates by developing the "Technical Specialist" position. In 2004 Sterne, Kessler, Goldstein & Fox formed a Stem Cell Task Force in response to California's Proposition 71.

From 2003 through 2013, Sterne, Kessler, Goldstein, & Fox's expansion continued with the launch of the Nanotechnology group, the CleanTech Industry Group, The Grid Industry Group, the Communications Industry Group, the IP and Human Rights Pro Bono Practice, the Patent Office Litigation Practice, and the Digital Healthcare Industry Group.

Notable alumni

Kenneth C. Bass III, the first chief of the U.S. Justice Department's Office of Intelligence Policy and Review, was of counsel to Sterne Kessler from 2002 until his death in 2009.[10] Bass helped write the Foreign Intelligence Surveillance Act and served on an advisory panel reviewing Judge Robert Bork's U.S. Supreme Court nomination.

Notable cases
  • In re Beauregard (1995) - Robert Greene Sterne served as lead attorney on this landmark case that signaled the end of the U.S. Patent and Trademark Office's resistance to allow patent applications that contained algorithms. The case resulted in the United States Patent and Trademark Office issuing new proposed software patent guidelines which expanded the scope of patent protection for software.
  • KSR v. Teleflex (2007) - Robert Greene Sterne served as co-counsel in this case deemed "one of the most significant patent cases heard by the Supreme Court in 40 years." The case addressed the fundamental question of when an invention is "obvious" and therefore not patentable.
  • i4i v. Microsoft (2011) - Robert Greene Sterne provided counsel on this case questioning the standard of proof necessary to invalidate an issued patent based on issues not considered by the US Patent and Trademark Office during examination. The U.S. Supreme Court upheld a patent-infringement verdict that will cost Microsoft Corp. $300 million and already has forced changes in its Word software.[11]
  • Alice Corp. v. CLS Bank International (2014) - Robert E. Sokohl provided counsel on this case questioning the validity and enforceability of patents referring to a computerized system for creating and exchanging financial instruments. The U.S. Supreme Court ruled that computerized abstract ideas are not patent eligible.

Rankings and awards

Sterne Kessler has been nationally ranked by a number of legal and business journals. Recognitions include "Top Workplace" from The Washington Post,[12] Washington Business Journal's "Best Places to Work,"[13] the National Law Journal's "IP Hot List,"[14] Corporate INTL's "IP Law Firm of the Year" and "Licensing Law Firm of the Year,"[15] U.S. News & World Report and Best Lawyer's "Best Law Firm," Global Law Experts' "Law Firm of the Year in Washington, D.C.,"[16] Managing Intellectual Property's "IP Stars,"[17] and Intellectual Asset Management Magazine's "IAM 1000."[18] Additionally, individual employees are regularly cited for their "unique combination of legal and technical skills."[19]

Miscellaneous

A scene in the 1994 movie True Lies was filmed at Sterne Kessler offices. The movie starred Arnold Schwarzenegger, Jamie Lee Curtis, Tom Arnold, Bill Paxton, Tia Carrere, Charlton Heston, and Art Malik and was directed by James Cameron. The movie was the third highest-grossing movie of 1994 behind Forrest Gump and The Lion King.[20]

Sterne Kessler's office is located in Washington, D.C.'s historic former Greyhound Bus Terminal.[21]

References
  1. "Sterne, Kessler, Goldstein & Fox P.L.L.C. - Washington, DC - Law Firm Profile - Chambers USA 2018 - Chambers and Partners". www.chambersandpartners.com. Chambers & Partners. Retrieved 15 August 2018.
  2. "Some IP Boutiques Take Hit Amid Shifting Patent Landscape - Law360". www.law360.com. Portfolio Media, Inc. Retrieved 29 July 2019.
  3. "Sterne, Kessler, Goldstein & Fox, P.L.L.C.|Company Profile|Vault.com". Vault. Vault.com, Inc. Retrieved 15 August 2018.
  4. "Sterne Kessler Goldstein & Fox PLLC". www.bloomberg.com. Bloomberg L.P. Retrieved 15 August 2018.
  5. "Sterne, Kessler, Goldstein & Fox P.L.L.C., USA | Chambers Rankings". chambers.com. Chambers and Partners. Retrieved 26 March 2019.
  6. "IP STARS - Sterne Kessler Goldstein & Fox". IP STARS. IP STARS. Retrieved 15 August 2018.
  7. "Law Firm Profile of Sterne, Kessler, Goldstein & Fox". The National Law Review. 2 October 2017.
  8. "Robert Greene Sterne - IPWatchdog.com | Patents & Patent Law". IPWatchdog.com | Patents & Patent Law. IPWatchdog, Inc. Retrieved 15 August 2018.
  9. "In Re Jack R. Wands, Vincent R. Zurawski, Jr., and Hubertj.p. Schoemaker, 858 F.2d 731 (Fed. Cir. 1988)". Justia Law. Justia. Retrieved 15 August 2018.
  10. Sullivan, Patricia (2 May 2009). "Justice Department Official Kenneth C. Bass III Dies at 65". Washington Post. Retrieved 18 October 2013.
  11. Stohr, Greg; Susan Decker (9 June 2011). "Microsoft Loses at Top U.S. Court on $300 Million I4i Award". Bloomberg Business Week. Retrieved 18 October 2013.
  12. "Top Workplaces 2018". Washington Post. Retrieved 15 August 2018.
  13. "2018 Best Places to Work". www.bizjournals.com. American City Business Journals. Retrieved 15 August 2018.
  14. "The 2016 IP Hot List | National Law Journal". National Law Journal. ALM Media Properties, LLC. Retrieved 15 August 2018.
  15. "Corporate INTL Previous Awards". www.corp-intl.com. JRS Corporate Limited. Retrieved 15 August 2018.
  16. "Sterne, Kessler, Goldstein & Fox P.L.L.C. - Firm Overview". bestlawfirms.usnews.com. U.S. News & World Report L.P. Retrieved 15 August 2018.
  17. "IP STARS - Sterne Kessler Goldstein & Fox". IP STARS. IP STARS. Retrieved 15 August 2018.
  18. "United States: National - Rankings - IAM Patent 1000 - IAM - Informing IP value". iam Media. Globe Business Media Group. Retrieved 15 August 2018.
  19. "Sterne, Kessler, Goldstein & Fox P.L.L.C." Chambers and Partners. Retrieved 19 October 2013.
  20. "1994 Domestic Grosses". Box Office Mojo. Retrieved 19 October 2013.
  21. "Washington Deco: The Old Greyhound Terminal". Retrieved 2019-07-29.
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