Our trial lawyers have led more than 150 district court cases over the past five years, and are active in all of the busiest jurisdictions around the country (e.g., District of Delaware, District of New Jersey, Eastern District of Virginia, Eastern District of Texas, Northern and Central Districts of California). Our wins cover a broad range of IP – from golf clubs, to liquid crystal displays, to software, to prescription pharmaceuticals.
Our integrated litigation teams are well positioned to achieve positive outcomes very efficiently. We begin with the end in mind – identifying winning issues and themes at the outset; focusing our efforts on those issues; and avoiding tangential issues that waste time and money. We provide early and ongoing analysis of the relevant patents, prior art and products involved. And, we formulate strong positions on invalidity, non-infringement and claim construction at the outset of the litigation, ensuring that our tactics are focused on winning.
“Impact Case of the Year Award” Allergan, et al v Teva Pharmaceuticals USA, et al Sterne Kessler represented client Teva and successfully invalidated all patents in suit following a bench trial. Allergan later transferred its patent rights to the St. Regis Mohawk Tribe.
- Managing Intellectual Property 2019
Sterne Kessler’s Trial & Appellate Practice has experience in a wide range of technologies where, paralleling areas in which we have demonstrated technical expertise including biologics, pharmaceuticals, biotechnology, electronics, communications, software, semiconductors, complex mechanical systems, and consumer products.
“They’re just terrific. They have a bench of great litigators who are very good at relating technical information in terms the layperson can understand.”
- Chambers & Partners 2018
Our Competitive Advantage
We have a distinctive advantage in IP litigation: we successfully integrate a team of winning trial lawyers with Sterne Kessler’s unmatched technical depth and patent expertise. Our trial teams draw on the technical knowledge available through our scientist lawyers (100+ advanced technical degrees and 50+ Ph.D.s in hard sciences and engineering).
That competitive advantage is amplified by the fact that Sterne Kessler has one of the most accomplished PTAB litigation practices in the country. With patent validity often contested at the PTAB (in addition to district court), it is imperative to have a litigation team that can win at the PTAB. Sterne Kessler’s ability to coordinate positions and to work efficiently across multiple venues, dramatically improves the odds of achieving a favorable outcome – at the PTAB, at trial in district court, or via settlement.
Sterne Kessler’s Trial & Appellate Practice is a leader across all patent litigation venues in the U.S. – district courts, the U.S. International Trade Commission (ITC), the USPTO’s Patent Trial and Appeal Board (PTAB), and the Court of Appeals for the Federal Circuit. Our trial teams are particularly adept at coordinating actions across multiple venues, when a multi-venue strategy can create highly favorable outcomes for clients.
Representative Cases
Recent cases underscore the effectiveness and diversity of our district court litigation practice.
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Parsons Xtreme Golf, LLC v. Taylor Made Golf Company (D. Az.) PXG asserted 8 patents, seeking a temporary restraining order to prevent Taylor Made from launching a new product. Defeated the plaintiff’s request for a temporary restraining order. This case and a countersuit settled favorably after the PTAB instituted IPRs challenging the validity of all asserted patents.
- MiiCs & Partners America, LLC et al. v. Funai Electric Co., Ltd. et al. (D. Del.) – Narrowed a 10-patent case down to 2 patents through use of IPRs and summary-judgment motions. Precluded plaintiff’s damages expert from testifying as to one of the two remaining patents, which led to a stipulated final judgment in Funai’s favor.
- Allergan, Inc. v. Teva Pharmaceuticals USA Inc. (E.D. Tex.) – On behalf of Teva, successfully invalidated all patents in suit following a bench trial. The drug at issue in the case – Restasis® – generates about $1.4 billion in annual revenues for Allergan. Prior to final judgment, Allergan transferred the patents to the St. Regis Mohawk Tribe.
- Intellectual Capital Consulting, Ltd., v. Audi AG Audi of America, LLC, Audi Of America, Inc., Volkswagen Ag, and Volkswagen Group of America, Inc. (E.D. Tex.) – Case favorably dismissed based largely on a successful pocket IPR strategy (i.e., the threat of invalidation at the PTAB led plaintiff to dismiss the case).
- Warner Chilcott (US) LLC v. Teva Pharmaceuticals USA Inc. (E.D. Tex.) – Secured a summary judgment ruling of noninfringement in the Delzicol® ANDA litigation. A summary judgment win is unusual both in the ANDA litigation context and in the Eastern District of Texas.
- TRUSTID, Inc. v. Next Caller Inc. (D. Del.) – Filed a complaint alleging that Next Caller infringed three TRUSTID patents related to telephone call authentication technology, also alleging false advertising, trade secret misappropriation, and tortuous interference with a business relationship. The Court sided with TRUSTID on every contested claim term in its Markman order, and the case is currently pending with trial scheduled by July 2020. The PTAB denied institution on three of four IPR petitions filed by Next Caller, with one IPR instituted and pending. Sterne Kessler filed an IPR against a key Next Caller patent and a final written decision has issued cancelling all the claims.