Mind + Muscle

technical minds + legal muscle

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Communications

We are passionate about communications-related intellectual property.  We work with companies on leading edge technology to add shareholder value by building and enforcing patent portfolios.  We thrive on patent law, technology and adding value for our clients.  Whether your technology is wireless, wireline, Internet – software or hardware, we possess the training and experience to quickly grasp your technology.  And, because of this, we will be able to effectively and efficiently protect and monetize your intellectual property.

Strong patent portfolios have long been essential to creating enterprise value within the communications industry.  More than 125 years ago, two inventors Elisha Gray and Alexander Graham Bell independently invented the telephone.  Bell beat Gray to the U.S. Patent and Trademark Office, and patented his telephone first. Years of patent litigation followed, yet Bell and his attorneys were committed to the Bell patent and its monetization.  Ultimately, they prevailed.  The Bell Telephone System was formed, and the Bell patent became recognized as the most valuable patent of all time.

More than a century later, effective intellectual property protection and enforcement is more critical than ever.  In the hyper competitive communications industry, winners and losers are often determined based on the strength and exploitation of their patent portfolios.  As in the case of Bell and Gray, having a great idea is not always enough.  Finding the right attorneys to represent you and being committed to building and leveraging a strong patent portfolio are essential, as well.  Our team is uniquely qualified to address the complex and challenging intellectual property issues facing communications companies today.

Service Strength

 

The Sterne Kessler team has a wide range of success in representing established and emerging stage companies with their communications-related intellectual property needs.  We have assisted with:

  • strategic counseling
  • patent application drafting
  • patent prosecution
  • patent reexamination
  • licensing
  • litigation
  • ITC investigations

Results-Driven Team

 

Our results speak for themselves.  Recent successes include:

Strategic Counseling:  We developed and implemented an intellectual property management plan for an emerging stage company.  The plan was reviewed by the client’s investment bankers, who also interviewed our attorneys.  The plan was well received by the financial community and contributed to a very successful IPO.

Patent Prosecution:  We are regularly recognized as one of the best at patent prosecution (ranked top ten in IAM's Patent Quality Survey and as a top firm in three categories in Managing Intellectual Property's MIP Handbook ).  We are also regularly called in after prosecution of an application by another law firm has stalled.  For example, we recently took over prosecution of applications in the areas of telecommunications, wireless networking, and smart grid technology in which the applications were stalled after numerous rounds of prosecution.  We promptly secured patents in all cases after Patent Office examiner interviews and one additional round of prosecution.

Reexamination:  In the past five years, our firm has represented clients in over 200 reexamination matters.  High stakes successes include, defending TiVo patents in patent reexaminations filed by Echostar, thereby preserving a $300M district court judgment. Additionally, we successfully defended i4i in patent reexaminations filed by Microsoft, thereby preserving a $240M district court judgment (press release).

Litigation and Reexamination:  In kgb v. Jingle, a Delaware U.S. district court litigation, we represented Jingle and Weil Gotshal represented kgb.  Kgb alleged that Jingle infringed four patents related to directory assistance services, threatening the very existence of Jingle.  Working closely with Jingle we delivered a 1-2 punch of a jury verdict of non-infringement and patent reexamination findings of unpatentability of all claims asserted at trial.

Litigation and Licensing:  In Asentinel v. Anchorpoint, et. al., a Western District of Tennessee U.S. district court litigation, we represent Asentinel against three defendants in a patent infringement suit involving telecommunications invoice processing.   As a result of the litigation, Asentinel entered into a multi-million dollar license agreement with a non-defendant that was driven by the litigation (press release).

ITC Litigation:  In multiple communications technology investigations, our attorneys have achieved successful results, some after a full hearing on the merits.  For example, in 337-TA-559, Certain Digital Processors and Digital Processing Systems, one of our  ITC specialists who has been involved in nearly 20 investigations, Danny Yonan, represented respondent, 2Wire, Inc.   The ITC found non-infringement, invalidity and unenforceability of all asserted patents after a hearing on the merits.  Sterne Kessler is also on the leading edge of ITC practice,  and currently represents  one of the respondents in 337-TA-766, In the Matter of Certain Gemcitabine and Products Containing Same.  This is a unique investigation, which may become a new trend before the Commission, and involves enforcement of a non-Orange Book pharmaceutical patent against generic manufacturers after patent certainty has been reached on all listed Orange Book patents.

Exceptional Industry Experience

 

Our team has more than one hundred years of industry experience, working at leading communications companies, such as AT&T, Bell Labs, Bellcore, Ericsson, JDS Uniphase Corporation, Lucent, Motorola, Nortel, RCA, and Sprint.  Additionally, the majority of our team members have advanced technical degrees focusing on communications-related technology. Additionally, the majority of our team members have advanced technical degrees focusing on communications-related technology.  While working in industry we:

  • Designed and implemented a broadband network supporting high speed internet and VoIP.
  • Identified and mitigated the biggest security threats to the data and telecommunications infrastructure within the United States.
  • Developed technical requirements for wireless network elements.
  • Designed and manufactured a wide array of antennas.
  • Developed and implemented network requirements for Signaling System 7 (SS7).
  • Developed migration plans for carriers transitioning their networks from traditional switched service networks to voice over IP infrastructures.
  • Engineered optical transmission networks for high speed transmission facilities in a local telecom network; specifically developed OC-192 rings.
  • Conducted network reviews of multiple U.S. carriers, Retivision, Telstra and Telkom South Africa.
  • Engineered the implementation of one of the first packet switches into a local telecom network and participated in the cut over of that packet switch.
  • Developed software applications in Java (namely J2ME) for small memory-footprint devices such as cellphones and PDAs.
  • Developed software modules for a Windows-based development environment for software application developers (including game developers) targeting wireless handset technologies.
  • Developed a software environment for evaluation, testing, and demonstration of advanced feedback control algorithms to be used in interactive marketing delivery systems.
  • As part of a PhD program, developed a neighbor node discovery and routing protocol for mobile wireless sensor networks.
  • As part of a PhD program, conducted research on the stability of wireless network protocols for voice and data terminals with and without delay and investigated the effects of power capture on stability and designed different control mechanisms (such as price-based control and state estimation control) for wireless network protocols.

(2) Sterne Kessler Welcomes Litigators John Christopher Rozendaal & Michael Joffre to the Firm

Sterne Kessler Welcomes Litigators John Christopher Rozendaal & Michael Joffre to the Firm
A Case Study:

Sterne Kessler Welcomes Litigators John Christopher Rozendaal & Michael Joffre to the Firm

Sterne Kessler is pleased to announce that John Christopher (J.C.) Rozendaal and Michael Joffre have joined the firm as directors.

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