Litigation

A focused team at your side

Whether defendant or plaintiff, you want an intellectual property litigation team focused on the best outcome possible for your case and your goals. When your company is faced with an IP dispute, the stakes can be staggering—literally millions or hundreds of millions of dollars can be on the line. A loss may even put an end to your business. When faced with such potential risks, you need a litigation team with deep knowledge of both the technology or science at hand and the law. You need seasoned litigators who bring a multifaceted and strategic approach to the dispute, together with a thorough understanding of your business.

At Finnegan, we understand that “victory” comes through many channels and in many forms. With more than 250 litigators, we are fully prepared and qualified to litigate through trial and appeal. We also have an impressive track record of achieving our clients’ goals before verdict. Our ability to obtain successful results in claim construction hearings, summary judgment proceedings, PTO proceedings, arbitrations, and settlement negotiations means we often resolve cases long before trial and at considerable savings to clients. Simply stated, a successful litigation outcome is one that meets your business goals in the most cost-efficient manner possible.

Leadership in IP litigation

Finnegan’s singular focus on intellectual property brings a peerless depth to our litigation practice. Our lawyers have litigated hundreds of cases in nearly all federal district courts, numerous state courts, the U.S. Court of Appeals for the Federal Circuit, and the U.S. Supreme Court. We routinely appear before the U.S. Patent and Trademark Office, the U.S. International Trade Commission, the Board of Patent Appeals and Interferences, the Trademark Trial and Appeal Board, and the U.S. Copyright Office. When you work with Finnegan, you have a smart, seasoned champion in your corner.

Our vast archive of trial experience in the IP field provides us with the insight and tools to handle all types of cases—large or small, complex or straightforward. We assess the potential risks and rewards of disputes and provide creative solutions for innovative clients of all sizes, including Fortune 100, Global 1000, start-ups, and public and private organizations. We have worked with clients in virtually every industry. Our cases have involved issues as arcane as human growth hormones, gene therapies, and semiconductor chips. Others have involved more everyday products, like washing machines, diapers, and makeup brushes. We also regularly handle trademark matters involving some of the world’s most renowned brands.

A comprehensive litigation practice

Our litigation practice covers all aspects of IP disputes, from complex patent litigation and appeals to trademark disputes before the PTO’s Trademark Trial and Appeal Board. The common thread is that Finnegan brings impressive depth, strategic vision, technical understanding, and legal expertise to each matter.

• Patent infringement and related litigation issues
• Patent appeals
• U.S. International Trade Commission, Section 337 cases
• Interference proceedings
• Trademark litigation
• Copyright litigation
• Trade secret litigation

Pre-trial strategy
A full exploration of effective alternatives

When you retain Finnegan, our entire firm becomes part of your team. All of our expertise, our reputation, and our experience, both legal and technical, are brought to bear in deciding how to approach your case. We begin with frank and honest conversations, timely and judicious discovery, careful analysis of the potential risks and rewards, and a mapping of the strengths and weaknesses of your position. We listen carefully to better understand your business objectives, your options, your risk tolerance, and your ultimate goals. We then develop a team approach and strategy that best meets your needs.

We understand that the realities of litigation can be daunting, but we work with clients to find enterprising solutions that are both cost-effective and case-effective. Historically, fewer than four percent of district court patent cases ever go to trial. Thus, while we litigate with a potential trial or appeal in mind, our vision is to resolve each case successfully as soon and as economically as possible. This may mean pursuing litigation alternatives, such as licensing, mediation, or arbitration, or a companion proceeding before another court or administrative agency, such as the PTO. Or you may decide that settlement is the best resolution.

As a case proceeds, we can adjust our deployment of resources as needed. There are multiple ways to approach any given IP case. The most important factor is that we remain flexible and committed to your goals throughout.

District court litigation
Strong cases built on complete comprehension

When cases involve highly technical issues in a complex legal field, it is essential that your lawyers understand the subject matter of the dispute. Finnegan assists businesses in virtually all industries and technologies. More than 90 of our lawyers, student associates, and technical specialists hold Ph.D.’s, and 390 of our professionals have undergraduate degrees in scientific fields. This deep understanding of the technology allows us to build and present arguments that are logical, understandable, accurate, and persuasive.

We have the experience and expertise to select and prepare witnesses who provide accurate and credible testimony. Our international network of resources, combined with our technical backgrounds, enables us to identify and retain the world’s leading technical experts. Our lawyers’ technical training and diverse backgrounds allow them to persuasively present and cross-examine trial witnesses, particularly on complex technical issues. We have long-standing relationships with top jury consultants and graphical experts to ensure that your case is presented in the best light. When beneficial, we conduct mock trials to gauge likely outcomes and develop the most effective themes of your case.

ITC proceedings
Exploit unique challenges to your advantage

In the global economy, intellectual property disputes are often litigated in Section 337 proceedings at the U.S. International Trade Commission (ITC). Most of these cases are patent disputes that involve complex technology, substantive and procedural laws that are unique to the ITC, and a procedural schedule that is the fastest track to trial in the U.S. Finnegan’s combination of ITC experience and technical expertise enables us to thrive in these high-pressure litigations.

ITC cases proceed to trial in about 9 to 12 months, much faster than the two-plus years in most U.S. district courts. Since trials trigger settlements, the average time to settlement is fast in the ITC. But only those litigants that are prepared to defend their rights at trial can expect the most favorable settlements. When Finnegan does proceed to trial, we deploy our full range of resources, as needed.

Over 90 percent of Section 337 cases are patent disputes. They require lawyers with engineering and scientific expertise to analyze the technology, and extensive knowledge of ITC procedural law. We have lawyers with decades of ITC trial experience. Six of our lawyers formerly worked at the ITC as either Staff Trial Attorneys or Advisors to the Administrative Law Judges, and over 100 of our lawyers have been involved in ITC cases. We litigate at the ITC every day. During their careers, our ITC litigators have handled more than 20 percent of all Section 337 cases in U.S. history. Our ITC teams draw upon all of Finnegan’s practice groups—Electrical and Computer Technology, Biotechnology/Pharmaceutical, Chemical/Metallurgical, Mechanical, and Trademarks—to forge litigation teams with a working knowledge of the law and technology necessary for success. And win, lose, or draw, most ITC cases are appealed to the U.S. Court of Appeals for the Federal Circuit, where our appellate litigators have briefed and argued more cases than any other law firm.

Our ITC practice operates in technology, manufacturing, and marketing capitals around the world. We are the only U.S. IP firm with offices in Taiwan, Japan, and China that can provide local support for the 75 percent of ITC cases involving parties and products from these countries. And our home office in Washington, D.C. is minutes from the ITC.

Patent interferences
Patent litigation in the PTO and in "Section 146" district court actions

From the question of who invented the steamboat to today’s cutting-edge technologies, such as an AIDS vaccine, life-saving medical devices, and digital rights management, patent interferences in the PTO have resolved some of the most important commercial disputes through a distinct type of litigation requiring strategic thinking, litigation skills, and intimate knowledge of PTO procedures in contested cases. Finnegan is one of the few firms that has an interference specialty practice. It draws on the extensive litigation, patent prosecution, and strategic patent transactions experience for which the firm is so well known.

While patent interferences have much in common with litigation (discovery, the inter-party and contentious nature of the work, the importance of expert testimony), they require a specialized set of skills. Finnegan’s patent interference practice is among the most highly regarded in the country and has the ability to handle cases in any discipline and at any level of complexity. With 60 former patent examiners on staff and a world-renowned reputation in both patent prosecution and litigation, we know the inner workings of the PTO and how to succeed in these PTO proceedings. In fact, since the new interference rules were adopted in 1984, we have been involved in more interferences than any other law firm. At any given time, we are typically handling 10 to 15 percent of all pending interferences.

In addition, Finnegan's unique skill set well positions us to handle the proceedings before the patent examiner that lead to the interference. The set-up of an interference is critical. In fact, many of the interferences we provoke for clients are terminated not long after they are declared by the PTO, with an adverse judgment entered against our opponent. We can also place our clients in the best position possible for post-interference proceedings—whether it is in a review of the PTO decision in the specialized district court litigation under 35 U.S.C. § 146, in an appeal to the U.S. Court of Appeals for the Federal Circuit, or in follow-up patent prosecution before the patent examiner at the conclusion of court proceedings.

If the circumstances are right, an interference can be an attractive alternative or parallel proceeding to district court litigation, and clients often need to consider the possibility of trying to provoke an interference as an additional litigation tool. In other situations, an opponent might be provoking an interference against our client's patent or patent application. But whether we are attacking another patent’s validity or prosecuting your first-to-invent rights, we bring to interferences and pre- and post-interference proceedings our signature dedication to strategic planning, sound counseling, and first-rate representation.

Appeals
Insight that can make all the difference

Finnegan’s attorneys have briefed and argued more cases before the U.S. Court of Appeals for the Federal Circuit than any other law firm.  These cases have covered a wide range of industries and issues that require meticulous attention to the details of the technology involved and that demand a thorough understanding of appellate law, Federal Circuit practice, and the strategies necessary for success.  Knowing Finnegan’s reputation, both appellants and appellees seek our advice and representation on appeal.

The factors that distinguish Finnegan in this highly specialized area of patent litigation are numerous. We are widely known for the quality of our briefs and oral arguments. We have a comprehensive understanding of the technology and the law, and this allows us to quickly identify the one or two arguments that hold the most promise to persuade. Our knowledge helps us craft concise and powerful arguments. In addition, we are highly experienced at preserving issues for appeal during the post-trial motion period. Our meticulous attention to detail and knowledge of science and the law also help us come up to speed quickly on cases where we did not serve as trial counsel. With only one or two briefs and 15 minutes of oral argument to make your case, Finnegan brings the type of experience that can make all the difference.

Settlement
Coming together to avoid uncertainty

When circumstances warrant, we are adept at crafting settlements before, during, and after trial. Historically, some of our most significant achievements for clients have been effected through tactics that allowed them to meet their business and financial goals without the risks attendant to having a jury, judge, arbitration panel, administrative board, or appellate panel decide their future.

Our experience is that a good settlement can often result in advantageous business solutions. We can bring magistrates, mediators, and arbitrators to the table to help craft win-win scenarios. When settlement becomes an option close to or during trial, our deep bench of talent enables us to turn to additional experienced lawyers to address settlement strategies, while allowing the litigation team to remain focused on the trial.

Arbitration and other alternative dispute resolution
Sidestepping costly choices to find better answers

Finnegan has one of the strongest reputations for litigating IP disputes through trial and appeal. But when circumstances merit its use, we favor alternative dispute resolution (ADR). We often develop a litigation strategy designed to meet goals through ADR instead of trial.

Our ADR capabilities run the gamut from resolution of domestic infringement cases to settlement of multinational infringement disputes, resulting in agreements that set standards to be used as the basis for future patent challenges. Over the past decade, we have participated in a number of important national and international ADR proceedings with the International Chamber of Commerce, the World Intellectual Property Organization, and the American Arbitration Association.

We have national and international experience in a variety of ADR procedures, including mediations before U.S. magistrate judges, under pilot programs of various U.S. district courts, before neutral experts, through various ADR organizations, and in open negotiations between principals and their lawyers. Our attorneys often act as neutral lawyers and have served as special masters and court-appointed advisors for patent cases in U.S. district courts across the country.

Trademark litigation
Full representation for your mark

Our counseling services often begin at a trademark’s inception, with proactive advice during the selection and prosecution process. But when problems arise and valuable trademark rights are at stake, clients like Caterpillar, Disney, and Yahoo! rely on Finnegan’s experience to solve them. Both Managing Intellectual Property and The Legal 500 U.S. have recognized Finnegan’s trademark litigation experience, naming Finnegan the #1 U.S. Law Firm for Trademark Litigation in 2008 and 2009 (Managing Intellectual Property) and the #1 IP Law Firm for Trademark Litigation, 2007 through 2009 (The Legal 500 U.S.).

Finnegan has handled cases that span numerous industries and implicate all types of trademark rights, including trademarks, service marks, trade dress, product configurations, trade names, and even telephone numbers. Representing both plaintiffs and defendants, our lawyers have decades of experience litigating both large and small trademark cases before courts throughout the country. We routinely appear before the U.S. Patent and Trademark Office and its Trademark Trial and Appeal Board (TTAB), the U.S. International Trade Commission, and other tribunals. Our trademark team includes a former administrative law judge at the TTAB.

We’ve developed an international reputation in the area of domain names and other Internet-related trademark issues. We have written summaries of every Internet-related trademark decision from U.S. courts. Our lawyers handle hundreds of domain name resolutions each year and have filed or defended approximately 400 complaints under the Uniform Dispute Resolution Policy of the Internet Corporation for Assigned Names and Numbers.

Trade secrets
Obtain immediate protection and relief

When litigation is necessary to protect our clients' trade secrets or to address a challenge from a competitor, our trial lawyers draw on decades of experience in federal and state courts throughout the U.S. We have successfully litigated hundreds of cases involving the most technologically advanced and complex innovations, and we have a proven track record in obtaining ex parte and preliminary injunctions to preserve trade secrets. With preliminary injunctive relief in hand, you have considerable leverage to achieve a favorable settlement or capitulation before trial.

Copyright litigation
Acting to protect original works

Finnegan has a dedicated and seasoned copyright practice, with experience at the U.S. Copyright Office, the U.S. Customs Service, and in district courts throughout the country. Our experience is broad—from software, databases, audio recordings, film and video productions, and technical and architectural designs to books, music, sculptures (such as toys), fabric designs, and motion pictures. We work with each of our clients to evaluate strengths and weaknesses, and to determine the most durable method of protecting their valuable works. Our lawyers have also played an active role in shaping U.S. copyright law.

With popular sentiment currently shifting against copyright owners and the rise of Internet technology, copyright protection has taken on even greater importance. We assist clients with registering copyrights, expediting applications, recording documents, and performing title searches. While we have the expertise to help a client avoid a trial, we also proceed in all phases of litigation when copyrights are threatened or questioned. Once in litigation, we accurately calculate damages and argue the finest details of copyright and licensing law.