Intellectual property (IP) is among a company's most valuable competitive assets, and as such, Steptoe's registered patent lawyers structure IP protection programs to both safeguard ideas as well as contribute to a company’s overall strategic position.
Our full-scope patent practice develops and enforces patent portfolios in the United States and coordinates the development and enforcement of patents internationally in the following core practice areas:
- Electronics
- Software
- Pharmaceuticals and Biotechnology
- Chemistry
- Materials Science
- Nanotechnology
- Mechanical
- Business Methods
Grounded with a thorough knowledge of IP law that is bolstered by practical experience in academia and industry, our lawyers are able to skillfully guide clients through all phases of patent and technology protection:
- Counseling
- Strategic portfolio building—in the United States and internationally
- Prosecuting patent applications before the US Patent and Trademark Office (USPTO)
- Post-grant proceedings
- Inter partes review (IPR)
- Covered business method patent review (CBM Review)
- Post grant review (PGR)
- Due diligence investigations
- Clearance and freedom to operate studies
- Patent audits and portfolio assessments
- Defensive and offensive patent strategies, including litigation
- Litigation, including Section 337 actions
- Validity and infringement opinions
Beyond traditional legal counsel, we also work with clients to create an intellectual property asset-driven culture within their organizations. This entails educating executive, new business, product development, manufacturing, and other teams on how to identify possible patentable innovations. This collaborative, proactive counsel with employee engagement results in stronger and more cost-effective IP protection.
Noteworthy
- Asian Legal Business, China Law Awards, Shortlisted, Intellectual Property Law Firm of the Year – International (2020-2024)
- Asian Legal Business, China IP Rankings, Patents, Tier 1 International Firm (2021, 2022)
- Chambers USA, Intellectual Property: Patent, New York (2022-2024)
- China Business Law Journal, China Business Law Award: IP (Patent) (2018-2024)
- China Law & Practice, International Firm of the Year: Intellectual Property Award (2020); Shortlisted (2021-2022)
- IAM 1000, United States: DC Metro Area, Patent Litigation, Bronze (2019-2024)
- IAM 1000, United States: New York, Patent Prosecution, Recommended (2019-2024)
- IAM 1000, United States: Illinois, Patent Litigation, Silver (2019-2024)
- Legal 500 US, Patents: Litigation (International Trade Commission) (2020-2023)
- LMG Life Sciences Awards shortlist, "Hatch-Waxman Litigation Firm of the Year - Branded" (2024)
Representative Matters
- Represented American Axle in a multi-patent infringement suit against one of its competitors involving automotive drive line noise and vibration technology. We successfully argued at the Federal Circuit Court of Appeals where the court vacated and remanded an important case regarding patent eligibility. On remand we won summary judgment that the patent was patent eligible. After a nine year battle, the case finally proceeded to trial where a jury delivered a verdict in favor of our client on all issues.
- Represented Panduit as lead counsel in numerous district court, ITC, IPR and US Court of Appeals for the Federal Circuit (CAFC) proceedings against Corning. Through Steptoe's efforts, Panduit successfully resolved all matters between the parties and reached a favorable settlement. These cases involved fiber optic equipment and were of the highest importance, given that Panduit is a leading manufacturer in the area.
- Represented the Solaria Corporation in a patent infringement case against Canadian Solar involving patents related to a shingled solar cell laser process. The matter involved an ITC hearing in which the judge agreed with our client that Canadian Solar infringed on two of its patents and found the patents to be valid. We settled the matter favorably for our client.
- Represented Aquestive Therapeutics, Inc. in a lawsuit alleging patent infringement by two pharmaceutical products marketed by BioDelivery Sciences, Inc. The settlement agreement included payment of money from BioDelivery Sciences to Aquestive in resolution of the infringement claims and the defendant’s counterclaims.
- Represented Trustees of Dartmouth College in an IPR proceeding where Thorne Research, Inc. challenged the validity of a Dartmouth patent related to nicotinamide riboside (NR) pharmaceutical formulations. This was the second time that our team of attorneys successfully defended the challenged patent in an IPR proceeding.
- Represented VTech in a five-patent infringement suit involving telecommunications products. Successfully resolved all claims resulting from the sale of Nortel’s patent portfolio to Rockstar Consortium and Spherix, including invalidating all instituted claims from multiple IPR proceedings.
- We assist Sanofi, including its subsidiaries Genzyme and Sanofi Pasteur, with preparation and worldwide prosecution of patent applications, including on clinical-stage products. We work with a network of foreign agents in international prosecution, with us coordinating prosecution strategies. We provide patent landscape analysis; noninfringement and invalidity analysis; and patent portfolio management and strategic advice. We also assist the client in IP due diligence.
- We assist Laboratoires Servier, including its Danish subsidiary Symphogen A/S, with preparation and worldwide prosecution of patent applications. We provide patent portfolio management and strategic advice.
- We assist Lyell Immunopharma with preparation and worldwide prosecution of patent applications. We provide patent landscape analysis, as well as patent portfolio management and strategic advice. We also assist the client in IP due diligence.
- We assist Regeneron Pharmaceuticals in IP due diligence in connection with its transactions. We also provide patent invalidity analysis.
News & Publications
Media Mentions
May 13, 2025
Press Releases
Steptoe Secures Significant Damages Award on Behalf of Judge Michael Fitzpatrick from MSPB
May 5, 2025
Press Releases
Steptoe Secures Significant Victory for Client Express Mobile on Foundational Web-Design Patents
April 3, 2025
Press Releases
Steptoe Receives China Law & Practice Firm of the Year Award – Intellectual Property
February 14, 2025
Publications
Director Vidal Addresses Serial IPR Petitions
PTAB Bar Association Appellate Year in Review 2024
January 2025
Publications
Inherency and Expectation: Federal Circuit Charts New Path in Obviousness Analysis
PTAB Bar Association Appellate Year in Review 2024
January 2025
By: Lawrence Kass
Publications
Fed. Circ. Inherency Ruling Refines Obviousness Framework
Law360
January 29, 2025
By: Lawrence Kass