District Court Litigation

Sterne Kessler's 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, including the District of Delaware, District of New Jersey, Eastern District of Virginia, Eastern District of Texas, and Northern and Central Districts of California.

Our wins cover a broad range of IP and products—from golf clubs, to liquid crystal displays, to software, to prescription pharmaceuticals. Our integrated litigation teams are well positioned to achieve positive outcomes 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. We also formulate strong positions on invalidity, non-infringement, and claim construction at the outset of the litigation, ensuring that our tactics are focused on winning.

Sterne Kessler’s Trial & Appellate Practice has experience in a wide range of technologies, including biologics, pharmaceuticals, biotechnology, electronics, communications, software, semiconductors, complex mechanical systems, and consumer products.

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 team of lawyers, patent agents, and technical specialists with 100+ advanced technical degrees, including 60+ Ph.D.s in science and engineering.

That competitive advantage is amplified by the fact that Sterne Kessler has one of the most accomplished Patent Trial and Appeal Board (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 across venues. 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.

  • 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.

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Bylined Articles

Success of Motions to Stay Rising, But Why?

Sterne, Kessler, Goldstein & Fox February 28, 2020

Speaking Engagement

International IP Skills Summit (IIPSS)

February 26, 2020 12:00 AM - 11:59 PM PST

In the News

How Patent Litigation Changed In 2019

Law360 February 26, 2020

In the News

Rival Says Allergan Muscle Toner Not As Strong As Claimed

Law360 February 20, 2020

Presentations

2019 Focus on Pharma Conference (presentations)

October 25, 2019

Speaking Engagement

13th Annual Paragraph IV Disputes

April 29, 2019

PTAB Strategies and Insights

PTAB Strategies and Insights – February 2019

February 22, 2019

Bylined Articles

Federal Circuit Issues Further Guidance On AIA Proceeding Standing To Appeal

Sterne, Kessler, Goldstein & Fox P.L.L.C February 22, 2019

Bylined Articles

What Cannabis Patent Applicants Can Learn From Biopharma

Law360 January 17, 2019

In the News

J&J Tells Fed. Circ. Judge Was Wrong To Nix Zytiga Patent

Law360 December 4, 2018

In the News

Allergan, Generic Cos. Battle Over Restasis Launch Plans

Law360 October 31, 2018

In the News

Fed. Circ. Rejects Bid For PTAB Tribal Immunity Rehearing

Law360 October 22, 2018

Press Release

IP Powerhouse Sterne, Kessler, Goldstein & Fox Celebrates 40th Anniversary

Sterne, Kessler, Goldstein & Fox October 2, 2018

Press Release

Sterne Kessler Recognized By LMG Life Sciences Among The Top IP Firms and Attorneys

Sterne, Kessler, Goldstein & Fox September 25, 2018

In the News

No Need To Reconsider Immunity At PTAB, Fed. Circ. Hears

Law360 September 19, 2018

In the News

5 Recent PTAB Decisions Attys Need To Know

Law360 June 6, 2018

Bylined Articles

Trans-Pacific Partnership Lost Important IP Provisions

Law360 April 6, 2018

In the News

Patent Litigation Trends To Watch In 2018

Law360 January 1, 2018

Global Patent Prosecution

Global Patent Prosecution Newsletter – July 2017

July 17, 2017

Bylined Articles

Biosimilar Uptake and Patent Litigation in Japan

Sterne, Kessler, Goldstein & Fox July 17, 2017

Publication

Approved Biosimilar Products Around the World

Sterne, Kessler, Goldstein & Fox July 17, 2017

Bylined Articles

The Future of Forum-Shopping in a Post-TC Heartland World

IP Watchdog January 11, 2017

Bylined Articles

Patent Term Extension Considerations For Regulated Products

Law360 March 18, 2016

Bylined Articles

The DAIMLER Series: Five Personal, Specific Lessons Learned for Hatch-Waxman ANDA Litigants

Bloomberg BNA Pharmaceutical Law & Industry Report September 11, 2015

Bylined Articles

FOCUS: Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc.

Maryland Bar Bulletin March 15, 2015

Bylined Articles

The Daimler Confusion And Its Impact On ANDA Litigation

Law360 March 6, 2015

Bylined Articles

IPR: A 2nd Bite At The Apple For Hatch-Waxman Litigants

Law360 March 11, 2014