March 22, 2023

Volume XIII, Number 81

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Sterne, Kessler, Goldstein & Fox P.L.L.C.

Sterne, Kessler, Goldstein & Fox is a leading specialty IP law firm, based in Washington, DC and distinguished by the strong technical experience and knowledge of its team. Sterne Kessler has more than 35 years’ experience helping companies to strategize, build and enforce worldwide IP portfolios, including inter partes matters (lawsuits, appeals, oppositions, and post-grant proceedings like inter partes review and covered business method patent review), preparing and prosecuting patent and trademark applications before the US and foreign patent offices and advising on portfolio strategies (valuation, acquisition and due diligence).

Sterne Kessler attorneys and agents are carefully recruited for their technical expertise and industry experience. Most have earned an advanced technical degree (more than 60 hold a Ph.D.) and have significant industry or academic experience across a wide spectrum of technical areas, including electronics, software, biotechnology, clean technology, pharmaceuticals, grid resiliency, chemical products and processes and consumer products. Many of our patent prosecution attorneys have previously worked as patent examiners and have unique insights into the inner workings of the US Patent and Trademark Office (USPTO).

Sterne Kessler’s client base includes emerging and established companies, venture capital firms, individual entrepreneurs, and universities – from technology fields such as carbon footprint technologies, pharmacogenomics, nanomedicine, biofuels, next-generation electronics and other consumer products. While the firm provides a full range of services, it is organized internally around four main practice groups in the Washington DC office: the biotechnology/chemical group, the electrical group, the mechanical/consumer products group and the litigation group. In total, more than 350 people are employed at the firm.

Sterne Kessler announced its patent office litigation service as a response to the implementation of the America Invents Act beginning in 2012. The law has ushered in a variety of ways either to challenge or to strengthen patents at the USPTO, including inter partes review, post-grant review, covered business method patent review, derivations, interferences, and reexamination. The service relies on extensive knowledge of the USPTO to assist clients in navigating these new litigation proceedings at the patent office.

The firm’s main areas of service include: business methods filings; design patents; due diligence; Hatch-Waxman: generic and proprietary; IP valuation; interferences; inventorship dispute resolutions; ITC Section 337 investigations; licensing; litigation and appeals; patent forensics; patent prosecution; patent re-examination; product lifecycle management; opinions; oppositions; strategic IP advice; trademarks; and trade secrets/unfair competition.

Key industries serviced by the firm include biosimilars, biotechnology, chemistry, clean technology, consumer products, electronics, food science and packaging, industrial products, internet, infectious diseases, medical devices, nanotechnology, software, pharmaceuticals and the grid.

Contributing authors from Sterne, Kessler, Goldstein & Fox P.L.L.C.:

Mr. Ainsworth is a Director in the Litigation Group. His practice is focused on representing patent owners in enforcement proceedings and in representing pharmaceutical industry clients in...
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Gaurav Asthana, patent agent, Sterne Kessler Law Firm, Electronics, Washington DC
Mr. Asthana is an associate and registered patent agent in the firm's Electronics Group. His practice involves patent prosecution in a variety of Electrical and Computer Engineering...
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Richard M. Bemben, Patent Law prosecutor, Sterne Kessler Law Firm
Mr. Bemben is an associate in the firm’s Electronics Group.  His practice currently focuses on patent prosecution and post-grant matters before the United States Patent and Trademark Office...
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Salvador M. Bezos, Sterne Kessler Law Firm, Patent and Trademark Director
Mr. Bezos is a Director in the firm's Electronics Group where he provides services in the preparation and prosecution of patent applications before the United States Patent & Trademark...
www.skgf.com
Jon Boljesic, Intellectual Property Litigation Attorney, Sterne Kessler law firm
Mr. Boljesic is an associate in the litigation group.  His practice involves complex intellectual property disputes in the U.S. District Courts and the ITC. Mr. Boljesic is admitted to...
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Lori M. Brandes, Biotechnology, Chemical Attorney, Sterne Kessler, Law Firm
Dr. Brandes is an associate in the firm's Biotechnology/Chemical Group where she counsels domestic and international clients on the preparation, prosecution, and management of complex...
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Amy Bray, Ph.D. is an associate in the Biotechnology/Chemical Group. Dr. Bray is admitted only in VA and works under the supervision of D.C. bar member Carla Kim.
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Paul Calvo, Intellectual Property Attorney, Sterne Kessler Law Firm
Dr. Calvo, a director in the Biotechnology/Chemical Group, represents a diverse group of U.S. and international companies innovating in the biotechnology and pharmaceuticals industries.  He...
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Michele A. Cimbala, Biotechnology, Chemical, Attorney, Sterne Kessler, Law firm
Dr. Cimbala is a director in the Biotechnology/Chemical Group.  Her practice is focused on biotechnology patent procurement and evaluation, including the preparation of patent applications...
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Richard D. Coller III, Sterne Kessler, Technology Lawyer, IP Attorney, Patent
Mr. Coller counsels clients as they develop new technologies and bring them to market. His practice includes developing both offensive and defensive patent strategies to help clients...
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David K.S. Cornwell, CleanTech Patent Forensics Attorney Sterne Kessler law firm
Mr. Cornwell heads the CleanTechSM Industry Group and the Patent Forensics Practice Group.  He is also a director in the Mechanical Group.  His technological experience is primarily in the...
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John M. Covert, Biotechnology, Chemical Attorney, Sterne Kessler, Law Firm
Mr. Covert is a director in the Biotechnology/Chemical Group.  His practice is focused in technologies that involve organic chemistry, such as pharmaceuticals, coatings, fuels, lubricants...
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John H. Curry, Intellectual Property, Attorney, Sterne Kessler, Law firm
Mr. Curry is an associate in the Electronics group.  His practice focuses on patent preparation and prosecution, patent reexamination, patent office litigation before the Unites States...
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Ms. Dalier is an associate in the Trademark, Advertising, and Anti-Counterfeiting Practice.  She focuses her practice on trademark portfolio management, prosecution, and matters before the...
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Nirav N. Desai, Patent Litigation Attorney, Sterne Kessler, Law firm
Mr. Desai is an associate in the firm's Litigation and Electronics Groups and specializes in patent litigation.  He has been involved in various district and appellate court litigation...
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Tracy-Gene Durkin, Mechanical Patent Trademark Attorney, Sterne Kessler law firm
Ms. Durkin leads the Mechanical Patent and Trademark Group.  With over twenty years of experience obtaining and enforcing intellectual property rights, she melds her expertise with utility...
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Jason Eisenberg, Electronics, Patent Counsel, Washington DC, Sterne Kessler Law Firm
Mr. Eisenberg, a director in the Electronics Group, provides strategic counsel from a quarter century of patent experience gained before and after law school. As reported by Managing...
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Eldora Ellison Ph.D. Biotech Chemical Attorney Sterne Kessler law firm
Dr. Ellison is a Director in the Biotech/Chemical and Litigation Practice Groups. Over the course of her nineteen-year career, she has gained extensive experience in inter partes patent...
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Stephanie L. Elmer, Ph.D., Biotechnology Attorney, Patent Lawyer, Sterne Kessler, Law Firm
Dr. Elmer is an associate in the Biotechnology/Chemical Group.  She assists in the preparation and prosecution of U.S. and foreign patent applications.  She also provides support in the...
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Robert W. Esmond, Ph.D., Biotech, Chemical Attorney, Sterne Kessler Law firm
Dr. Esmond is a director in the Biotechnology/Chemical Group.  His intellectual property law experience has principally been in the biotechnology and chemical areas.  His legal experience...
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Ivy Clarice Estoesta, Mechanical Design Attorney, Sterne Kessler Law Firm
Ms. Estoesta is an associate in the Mechanical and Design practice group at Sterne Kessler.  Ms. Estoesta’s practice focuses on trademarks, design patents, and copyrights.  Her legal...
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Jeremiah B. Frueauf, Biotechnology, Chemical Attorney, Sterne Kessler, law firm
Mr. Frueauf is an associate in the Biotechnology/Chemical Group where he counsels domestic and international clients on the preparation, prosecution, and management of complex worldwide...
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Daniel Gajewski, Sterne Kessler Law Firm, Intellectual Property Law Attorney
Mr. Gajewski is an associate in the Mechanical Group. His work centers on utility and design patent application prosecution, and challenges to issued patents of both types. The look—or...
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Miklos Gaszner, Sterne Kessler Law Firm, International Patent Attorney
Dr. Gaszner is an associate in the Biotechnology Group where he prosecutes US and international patent applications.  He also contributes to the preparation of freedom-to-operate analyses...
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Miklos Gaszner, Biotechnology attorney, Sterne Kessler law firm
Dr. Gaszner is an associate in the Biotechnology Group where he prosecutes US and international patent applications.  He also contributes to the preparation of freedom-to-operate analyses...
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Marsha Rose Gillentine, Ph.D., Director, Sterne Kessler Law Firm
Dr. Gillentine is a Director in the Biotechnology/Chemical Group focusing on the pharmaceutical industry.  Because Dr. Gillentine is intimately familiar with the Hatch-Waxman Act, and...
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Dallin G. Glenn, Sterne Kessler Law Firm, Intellectual Property Attorney
Mr. Glenn is an associate in the Litigation Group.  His work involves complex intellectual property disputes in U.S. District Courts and before the ITC.
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Jorge A. Goldstein, Ph.D. Biotechnology Patent Attorney, Sterne Kessler law firm
A Pioneer in Biotechnology Patent Law, he is considered by his peers and clients to be one of the country’s pioneers in biotechnology patent law. He has more than thirty years’ experience...
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Lori A. Gordon Intellectual Property Litigation Attorney Sterne Kessler law firm
Lori Gordon is a director in both the Litigation and Electronics practice groups, focusing on inter partes matters, including district court litigation and contested case proceedings at the...
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Elizabeth J. Haanes, Ph.D., Biotechnology, IP Attorney, Sterne Kessler, Law firm
Dr. Haanes advises biotechnology companies on best practices for worldwide protection of their intellectual property.  She and her team are focused on formulating innovative long-term legal...
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Richard P. Hadorn, Pharmaceutical Litigation Attorney, Sterne Kessler, law firm
Mr. Hadorn is a member of the firm’s Litigation Group and concentrates his practice on pharmaceutical litigation under the Hatch-Waxman Act. During his career, he has managed all phases of...
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Ms. Haley is an associate in the Litigation Group and concentrates her practice in the area of patent litigation, particularly in front of the International Trade Commission, federal...
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Benedict Hanrahan, Sterne Kessler Goldstein Fox, student associate, mechanical group law, manufacturing process change, legal administrative tasks
Mr. Hanrahan is a student associate in the Mechanical Group. Mr. Hanrahan joined the firm in 2015 as a summer associate and transitioned to a student associate after the summer. Prior to...
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John T. Haran, Patent Infringement Attorney, Sterne Kessler, law firm
Mr. Haran is Of Counsel in the Mechanical Group. His intellectual property practice focuses on strategic client counseling, including preparing patent infringement and validity opinions,...
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Erin J. Heenan PhD, Biotechnology Attorney, Patent Prosecution Lawyer, Sterne Kessler, Law Firm
Dr. Heenan is an associate in the Biotechnology/Chemical Group. She assists in the preparation and prosecution of U.S. and foreign patent applications. Dr. Heenan's professional expertise...
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Michelle K. Holoubek, Patent Prosecution Attorney, Sterne Kessler, law firm
Ms. Holoubek is a director in the Electronics Group.  She focuses on the preparation and prosecution of patents, including reissues and reexaminations.  She has provided infringement and...
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Kenley Hoover, PHd, Intellectual Property, Sterne Kessler Law Firm
Dr. Hoover, a Director in the Biotechnology/Chemical Group, has firsthand understanding of his clients’ intellectual property and business needs and how they are impacted by an increasingly...
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Peter A. Jackman, Biotechnology, Chemical, Attorney, Sterne Kessler, law firm
Mr. Jackman is a director in the Biotechnology/Chemical Group.  His  practice includes counseling clients in areas such as global patent portfolio procurement and management strategies, FDA...
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Michael Joffre, Sterne Kessler Law Firm, Intellectual Property Litigation Attorney
Michael E. Joffre, a director and co-chair of Sterne Kessler’s Appellate Group, focuses his practice on intellectual property disputes before trial and appellate courts. He has briefed and...
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Lauren Johnson, Sterne Kessler, Patent Infringement Lawyer, PTAB Litigation Attorney
As an associate in the Firm’s Litigation Group, Ms. Johnson concentrates her practice in the area of patent litigation, including matters before federal district courts, the Patent Trial...
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Dana Justus is an associate in the Trademark, Advertising, and Anti-Counterfeiting Practice, with a practice focused on U.S. and international trademark clearance, prosecution, enforcement...
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Kelley Keller is an associate in the firm's Trademark, Advertising, and Anti-Counterfeiting Practice, with a practice focused on domestic and international trademark clearance, prosecution...
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Mr. Kenton is an associate in the Electronics Group.   His practice areas include the preparation and prosecution of patent applications,  reexaminations, infringement and validity opinions...
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Pratibha Khanduri, Ph.D, Sterne Kessler, Patent Litigator, Technology Lawyer, IP
Dr. Khanduri is an associate in the firm's Biotechnology/Chemical group. She assists in the preparation and prosecution of patent applications, in reexamination proceedings, and in patent...
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Carla Kim, Sterne Kessler Law Firm, Patent Law Attorney
Carla Ji-Eun Kim is a director in the Biotechnology/Chemical Practice Group. She focuses primarily on preparing and prosecuting U.S. and foreign patent applications in the areas of...
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Josephine Kim, patent infringement litigation attorney, Sterne Kessler, law firm
A member of the Firm's litigation group, Ms. Kim concentrates her practice on patent-infringement dispute litigation, including matters before federal district courts and before the United...
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Judith U. Kim, Biotechnology, Chemical, Attorney, Sterne Kessler, Law firm
Ms. Kim, a director in the Biotechnology/Chemical Group, counsels entities around the world on patent portfolio strategy and long-term corporate development.  Her practice involves the...
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William P. Ladd, Patent Prosecution Attorney, Sterne Kessler, law firm
Mr. Ladd is an associate in the Electronics Group.  He assists in the preparation and prosecution of patent applications in a broad variety of technical fields including computer software,...
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Michael Lee, Sterne Kessler Law Firm, IP Asset Protection Attorney
Mr. Lee, a director in the Electronics Group, focuses his practice on working with companies to strategically protect and leverage their IP assets. He has extensive experience protecting...
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Gaby L. Longsworth, PhD. Biotechnology Chemical Attorney Sterne Kessler law firm
Gaby L. Longsworth, Ph.D., is a Director in the Biotechnology/Chemical Group.   Dr. Longsworth is sought out by both innovator and generic pharmaceutical companies for her insights and...
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Chenghua Luo, Ph.D., Patent Portfolio Attorney, Sterne Kessler, law firm
Dr. Luo is an associate in the Biotechnology/Chemical Group.  She collaborates with clients on their patents and patent portfolio strategies.  She drafts, procures, and protects patents and...
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Mr. Evens, former chair of the Litigation Group, focuses his practice on IP litigation.  With over thirty years of trial and appellate experience, he has the requisite skills to persuade...
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Kevin W. McCabe, Intellectual Property Attorney, Sterne Kessler, law firm
Mr. McCabe specializes in complex client counseling issues, such as product clearance opinions, patent validity and infringement opinions, performing due diligence investigations, and...
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Mr. Merrell is an Associate in the Electronics Group.  His practice includes patent prosecution and PTO litigation. His prosecution work is primarily focused on preparation and prosecution...
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Michael V. Messinger, Patent Prosecution attorney, Sterne Kessler, law firm
Mr. Messinger is a director in the Electronics Group. He handles complex patent matters involving inter partes and post-grant review, reexamination, reissue and appeals. He works with...
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Mr. Miller is an associate in the Litigation Group.  His work involves complex intellectual property disputes in the U.S. District Courts and in the ITC. Mr. Miller joined the firm after...
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Robert C. Millonig, Jr., Pharmaceutical Attorney, Sterne Kessler, law firm
Dr. Millonig, a director in the Biotechnology/Chemical Group, has significant experience developing and analyzing complex multi-patent portfolios for marketed pharmaceutical products. His...
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Tracy L. Muller, Patent Portfolio Attorney, Sterne Kessler, law firm
Ms. Muller counsels domestic and international biotechnology clients on the strategic preparation, prosecution, and management of complex worldwide patent portfolios.  Ms. Muller also...
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Ms. Olson is a senior paralegal in the Mechanical Group, where her work focuses on design patent, trademark, and copyright matters.  She has significant experience in the preparation and...
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Olga Partington, Sterne Kessler Law Firm, Life Sciences and Intellectual Property Attorney
Dr. Partington is an Associate in the Biotechnology/Chemical Group. Dr. Partington has substantial experience in inter partes review proceedings. In addition, Dr. Partington has been...
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Pauline M. Pelletier, sternekessler, litigation lawyer, trade, trademark, patent
Ms. Pelletier is an associate in the firm’s Litigation Group. She focuses her practice on patent litigation before the courts and the International Trade Commission as well as post-grant...
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Graham Phero, Sterne Kessler, Intellectual Property Lawyer, Post Grant Proceeding Attorney
Mr. Phero specializes in obtaining patent protection for cutting edge technologies, providing opinions of counsel, and conducting complex post-grant proceedings at the USPTO. In the area of...
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Mr. Pickard, a director and Practice Group Leader of the firm's Litigation Group, focuses his practice on patent litigation, trademark and trade-dress issues, copyright matters, licensing...
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R. Wilson Powers III, Ph.D., Sterne Kessler Fox, IP Attorney, Patent Portfolio Lawyer, molecular biology
Dr. Powers is an associate in the Litigation Group.  He is responsible for a variety of matters including district court litigation, inter partes review proceedings, intellectual property...
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PTO Litigation Center
PTO Litigation Center is published by Washington, DC based intellectual property specialty firm Sterne, Kessler, Goldstein & Fox.  Founded in 1978, Sterne Kessler represents both...
www.ptolitigationcenter.com
Robert L. Ratcliffe, Sterne Kessler, litigation lawyer, patent, IP
Mr. Ratcliffe is an associate in the Litigation Group. His work involves all aspects of patent litigation in U.S. District Courts and before the USITC. Mr. Ratcliffe joined the firm as a...
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Mark W. Rygiel, Intellectual Property, Sterne Kessler Law Firm
Mark Rygiel, a director in the Mechanical Group, counsels a broad spectrum of entities ranging from large multi-national companies to small start-ups in developing IP strategies and...
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Timothy J. Shea, Jr., Ph.D., Biotech Patent Attorney, Sterne Kessler, Law firm
Director
Mr. Shea is a director in the Biotechnology/Chemical Group where he specializes in advising biotech and chemical companies and research institutions on complex legal issues relating to the...
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Julie D. Shirk, Patent & Trademark Specialist, Sterne Kessler Law Firm
Patent & Trademark Specialist
Julie D. Shirk joined Sterne Kessler in 1989 and continues to specialize in patents and trademarks in the firm's Mechanical Group.
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Matt Smith, Sterne Kessler Law Firm, BioChem and Patent Preparation Attorney
Associate
Dr. Smith is an associate in the Biotechnology/Chemical Group. Dr. Smith’s technical expertise is molecular biology and biochemistry. He assists in the preparation and prosecution of U.S....
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Robert Sokohl, Intellectual Property, patent prosecutor, Sterne Kessler Law firm
Director
Mr. Sokohl, a director in the Electronics Group, is a strategic adviser to multi-billion dollar companies, publicly-traded companies and start-ups.  He has prepared and prosecuted thousands...
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Ian Soule, Sterne Kessler, Student, IP Lawyer, Tehcnology, Patent Prosecution
Student Associate
Mr. Soule is a student associate in the Mechanical Group. His work focuses on the preparation and prosecution of patent applications for various mechanical, electromechanical, and...
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Director
Mr. Specht is a director in the firm and is the Practice Group Leader of the firm’s Electronics Group.  He also co-chairs the firm’s Communications Industry Group.  He has a unique...
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Eric K. Steffe, Biotechnology Attorney, Sterne Kessler, Law firm
Director
Mr. Steffe is a director in the Biotechnology/Chemical Group where he counsels domestic and foreign clients in various matters involving biotechnology patent law. Mr. Steffe leads teams who...
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Deborah Sterling, PhD., Biotechnology, Attorney, Sterne Kessler, law firm
Director
Dr. Sterling is a Director in the Biotechnology/Chemical Group. Her practice is focused in the biotechnology and pharmaceutical industries, where she is involved in all areas of patent...
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Robert Greene Sterne, Patent Attorney, Sterne Kessler, Law Firm
Director
Mr. Sterne is one of the leading patent attorneys in the United States in patent reexamination and concurrent patent litigation both in the federal courts and the United States...
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Jonathan Strang, Attorney, Sterne Kessler Law Firm
Associate
Mr. Strang is an associate in the firm's Litigation Group. He specializes in patent litigation in the courts and complex reexamination practice before the United States Patent &...
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Monica Riva Talley, Trademark Attorney, Sterne Kessler, Law Firm
Monica Talley brings more than 17 years of experience protecting some of the world's most recognizable brands to her role as a Director in the firm’s Trademark practice.  Ms. Talley...
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Krishan Thakker, Sterne Kessler, pharmaceutical litigation lawyer, patent infringement Attorney
Mr. Thakker is an associate in the firm’s Litigation Group and focuses his practice on general intellectual property enforcement and patent infringement, with a special emphasis on...
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Mr. Thurheimer is an associate in the Electronics Group. His practice currently focuses on patent prosecution before the United States Patent and Trademark Office. Mr. Thurheimer has also...
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Dennies Varughese, Patent litigation Law, SterneKessler Law FIrm
Mr. Varughese concentrates his practice on patent litigation with a special emphasis on pharmaceutical patent litigation under the Hatch Waxman Act.  Mr. Varughese has litigated cases...
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Jon Wright, Attorney, Sterne Kessler Law Firm
Mr. Wright is active in all aspects of the firm’s patent practice, with a focus on contested proceedings before the United States Patent & Trademark Office.  He is a recognized leader...
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Daniel E. Yonan, Sterne Kessler Law Firm, Intellectual Property Attorney
Daniel E. Yonan is an experienced intellectual property trial attorney focusing on complicated patent disputes before federal district courts and fast-track investigations before the U.S....
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Sterne Kessler has been selected for a 2018 NLR Go-To Thought Leadership award for their coverage of the Patent Trial and Appeal Board (PTAB),  which decides issues of patentability. Sterne Kessler has shown a dedication to writing on Patent litigation including Inter Partes Review, Post Grant Review in front of the PTAB, providing insightful analysis of decisions, and actionable takeaways for NLR readers.

Recent Sterne, Kessler, Goldstein & Fox P.L.L.C. Contributions