Recent high-profile design patent litigation has brought attention to the importance of design patents to protect product designs. Sterne Kessler has been a leader in the field for nearly 40 years and is well-versed in the unique challenges of design patent protection and enforcement. We know what it takes to win these cases across any venue—with the trial skills and deep understanding of the nuances of design patent law that delivers results.
In the last five years, Sterne Kessler has served as litigation counsel for both patent owners and accused infringers in more than 150 patent cases across 27 jurisdictions in federal district court. We are also one of the top five busiest firms at the U.S. Court of Appeals for the Federal Circuit, and we are among the top 10% of most active firms at the U.S. International Trade Commission (ITC) in that same time frame. Our attorneys have successfully handled design patent litigation for clients such as Volkswagen and Lifetime Products.
The Sterne Kessler Advantage
Experienced Trial Teams
We are trial lawyers with significant experience protecting and enforcing design patent rights for our clients. For decades, we have guided clients on the value of their design patents and developed litigation strategies to eliminate counterfeiters and infringers in the marketplace. Our design patent trial lawyers understand the unique challenges in design patent cases, and use our technical know-how and IP experience to develop effective arguments and explain challenging concepts to judges and juries in a compelling way.
Our design patent litigation work covers a broad range of industries, from consumer products and vehicles, to heavy machinery, manufacturing, industrial products, and medical devices. Products we have defended and enforced include automotive parts, wind and solar power, kinesiotherapy devices, medical devices, products for nursing mothers, sporting goods, multipurpose tools, graphical user interfaces, construction equipment, and footwear.
Tailored Legal Strategies
Whether protecting your products from counterfeiters, knock-offs or direct competitors, we take into account complementary IP assets, including utility patents, trade dress, trademarks, and copyright. We then craft comprehensive IP litigation strategies to enforce and defend our clients’ rights and market share.
We have handled design patent litigations resulting in millions of dollars in damages, including a $1 million+ recovery in the apparel industry following our market monitoring for potentially infringing products and a $100 million+ award of statutory damages as well as injunctive relief in a recent anti-counterfeiting enforcement campaign.
Leaders Across Venues
We are particularly skilled at coordinating actions across multiple venues when a multi-venue strategy can be favorable for our clients. This includes collaborating with our PTAB Trials Group on inter partes review and post-grant proceedings before the USPTO’s Patent Trial and Appeal Board as well as different enforcement venues across both the U.S. and the globe. Over the past several years, we have represented clients such as Volkswagen Group of America in patent litigation in district court, the ITC, and at the PTAB, pivoting between venues to efficiently and favorably resolve litigation.
Working with Sterne Kessler
- Your goals always come first. We know that our clients’ strategic goals vary from case to case, and we tailor our approach to achieve those goals as efficiently as possible. From the outset, we align our strategy with your business objectives. Whether you are seeking early resolution or planning to take a case through trial and appeal, our team has the proven experience to guide you through any type of IP dispute.
- We help you expect the unexpected. Before the start of any matter, we work with you to define phases, assess risk, and identify important milestones. We can anticipate potential obstacles over the life of a case and develop a strategic plan to overcome them. We provide early and ongoing analysis of relevant patents, prior art, and products, and we formulate strong positions on obviousness, invalidity, inventorship, infringement, damages, and claim construction at the outset of litigation.
- Communication is our highest priority. Litigation can be unpredictable, and we develop a communication plan with our clients to keep them well informed through the life of a case. We regularly report on matters in an efficient and cost-effective way. We are also committed to developing budgets that align with your needs and expectations.
Representative Experience
- Volkswagen v. Varona et al. (S.D. Fla.) – Sterne Kessler enforced trademark and patent rights on behalf of Volkswagen against defendants who marketed counterfeit products through online channels. The court granted Volkswagen’s Motion for Summary Judgment on trademark and patent infringement issues. A bench hearing on the issues of damages and attorney fees is forthcoming.
- Ontel Products v. Unincorporated Associations (E.D. Va.) – Sterne Kessler filed three cases on behalf of Ontel Products enforcing trademark and design patent claims against counterfeiters of Ontel’s Magic Tracks toy racing products, Arctic Air personal air coolers, and Huggle Pets products. Motions for Default Judgment were granted in all cases, awarding Ontel more than 100 million dollars in statutory damages and providing injunctive relief against future counterfeiting. PayPal and other payment platforms were ordered to transfer funds in the counterfeiters’ accounts to Ontel in order to partially satisfy the judgments.
- Lifetime Products v. Russell, et al., 337-TA-1040 Certain Basketball Backboard Components – In a dispute between the two leading backboard manufacturers, Lifetime Products had been pursuing a patent-infringement case in the District Courts for nearly four years. The case had been stayed in light of a pending reexamination. Lifetime came to Sterne Kessler to initiate an ITC investigation of infringing imports. The parties reached a highly favorable settlement, based in part upon Russell’s discovery abuses, less than four months after the ITC investigation was instituted.
- Sterne Kessler has filed amicus briefs in some of the most important design patent cases, including the most recent en banc design patent case before the U.S. Court of Appeals for the Federal Circuit (LKQ Corporation v. GM Global Technology Operations LLC) as well as Nike, Inc. v. Wal-Mart Stores, Inc., In re Owens, and Egyptian Goddess v. Swisa.
Awards & Rankings
- “Tier 1” firm for “Patent Litigation” – U.S. News and Best Lawyers Best Law Firms, 2024
- “Silver Band” in Washington D.C. patent litigation – IAM Patent 1000, 2024
- 18 Sterne Kessler Directors ranked in Intellectual Asset Management’s IAM Patent 1000, 2024
- 13 Sterne Kessler Directors “IP Stars” – Managing Intellectual Property, 2024