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| The Board of Patent Appeals and Interferences of the U.S. Patent and Trademark Office issued a ruling that Whirlpool Corp. had not proven that it invented the concept of a refrigerator dispenser with an extendable tray and water spigot before Finnegan client LG Electronics Inc. Whirlpool sought the PTO Board’s ruling as part of its effort in various forums to invalidate LG’s patents directed to refrigerator dispensers. The PTO Board agreed with LG that Whirlpool failed to prove that its prototype refrigerator worked for its intended purpose, and therefore was not a valid reduction to practice before LG’s earliest application was filed. Thus, LG’s involved patents remain valid, and the PTO Board entered judgment that Whirlpool’s pending claims are “finally refused.” |
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| The U.S. Court of Appeals for the Federal Circuit upheld a jury decision in the U.S. District Court for the District of Arizona in favor of Finnegan client DuPont Air Products NanoMaterials, LLC (DA NanoMaterials), holding that various tungsten Chemical Mechanical Planarization (CMP) slurries sold by DA Nanomaterials do not infringe Cabot Microelectronic’s patents. Tungsten CMP is a process used in semiconductor manufacturing. |
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| The U.S. Court of Appeals for the Federal Circuit upheld a judgment that Home Depot U.S.A., Inc., literally and willfully infringed Finnegan client Mr. Michael S. Powell’s patent covering radial arm saw guards. Specifically, the Federal Circuit affirmed the Southern District of Florida court’s claim construction and the court’s denial of Home Depot’s motion for judgment as a matter of law on the issues of infringement, willfulness, and damages. In addition, the Federal Circuit affirmed the district court’s holding that the patent was not unenforceable for inequitable conduct, as well as the court’s award of enhanced damages and attorney fees. |
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| In a unanimous opinion, the U.S. Court of Appeals for the Federal Circuit ruled that MHL Tek LLC did not own three Tire Pressure Monitoring System patents, resulting in a victory for Finnegan clients Hyundai Motor Company and Kia Motors Company and other automobile maker co-defendants. Specifically, the Federal Circuit (1) affirmed the Eastern District of Texas court’s holding that MHL Tek lacks standing to assert two of the three patents-in-suit, and (2) reversed the court’s holding that MHL Tek has standing to assert the third patent-in-suit. |
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| The U.S. Court of Appeals for the Federal Circuit reversed a district court’s ruling of invalidity for lack of enablement/utility of Finnegan client, Eli Lilly and Company’s method of use patent on Strattera® and upheld the court’s rulings of validity on other grounds and the judgment of infringement in a case involving numerous generic drug manufacturers. The Federal Circuit’s ruling in Lilly’s favor provides protection for Lilly’s Strattera® franchise through May 2017. |
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| The U.S. Court of Appeals for the Federal Circuit affirmed a district court’s claim construction and grant of summary judgment of noninfringement in favor of Finnegan client Pergo, L.L.C. on five patents directed toward systems and methods for joining flooring panels. The affirmance is the culmination of a protracted litigation initiated over a decade ago by patent holder and competitor Välinge, AB (and its licensees). The court affirmed per curiam without opinion under Rule 36, resulting in a complete victory for Pergo. |
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| In a litigation brought by Rolls-Royce against Finnegan client United Technologies Corporation, the U.S. District Court for the Eastern District of Virginia entered the parties' stipulation of dismissal of all claims and counterclaims with prejudice. The court had earlier entered summary judgment that UTC did not infringe Rolls-Royce's patent and entered final judgment, ending Rolls-Royce's quest for an injunction and almost $4 billion in damages plus increased damages for alleged willful infringement. The ruling stemmed from the court's adoption of UTC's claim construction, namely that the claims of Rolls-Royce's patent are limited to jet engine fan stages having fan blades with only three regions of sweep, while UTC's have four. After the court entered final judgment, the parties settled the case, stipulating to the dismissal with prejudice. |
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| The Federal Circuit unanimously affirmed a district court judgment of willful infringement and a damages award of approximately $290 million, plus interest, as well as the entry of a permanent injunction against Microsoft in favor of Finnegan client i4i, a Canadian software company that developed tools for working with documents containing XML markup. The court held that Microsoft had waived certain arguments by not properly objecting at trial, that the factual issues resolved by the jury were supported by substantial evidence, and that all of the district court’s legal conclusions were correct. The Supreme Court then issued a unanimous decision in i4i’s favor, rejecting Microsoft’s position that the appropriate standard of proof is “preponderance of the evidence” and holding instead that invalidity must be proven by “clear and convincing” evidence. |
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| The Superior Court of California, Santa Clara, granted summary judgment in favor of Finnegan client RichWave Technology Corporation in a trade-secret misappropriation case involving wireless communication technology. The court’s judgment resolved all of plaintiff Epic Communication’s claims for trade-secret misappropriation, fraud and misrepresentation, conspiracy, and unfair competition. Finnegan took over the representation of the two remaining defendants after the case had been pending for four years. In reviewing the record, we formulated an argument not asserted by the previous counsel and established that the plaintiff’s agreement with a third party provides a complete release for our clients. Within two months after taking over the case, Finnegan filed a motion for summary judgment based on the agreement, and three months after that, the court granted summary judgment that the agreement released both defendants. |
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| The U.S. Court of Appeals for the Federal Circuit reversed the International Trade Commission’s claim construction of U.S. Patent No. 5,470,257 (entitled “Radial Compression Type Coaxial Cable End Connector”) and its related finding that the Complainant had not established the technical prong of the domestic industry requirement of Section 337. In its opinion, the Federal Circuit held that the Complainant, our client John Mezzalingua Associates, Inc. (d/b/a PPC, Inc.), had established a Section 337 violation (importation, infringement, validity, and domestic industry) and remanded to the ITC for further findings on remedy and bonding. |
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| The U.S. District Court for the Eastern District of Pennsylvania ruled in favor of Finnegan client SAP in elcommerce.com, Inc. v. SAP AG and SAP America, Inc. Following a favorable claim construction ruling in SAP’s favor, elcommerce agreed to a final judgment in which the Court held that SAP did not infringe the asserted method claims and that the asserted system claims were invalid. |
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| The U.S. District Court for the Western District of Washington ruled in favor of Finnegan client Philips following a trial in Koninklijke Philips Electronics v. Cardiac Science Operating Co. The Court found that Cardiac Science’s patent application did not support the claims copied from Philips’s defibrillator patent and reversed the U.S. Patent and Trademark Office's decision against Philips in an interference. |
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| The U.S. Court of Appeals for the Federal Circuit reversed a district court’s grant of JMOL for noninfringement, thereby reinstating the jury verdict finding that Microsoft infringed Finnegan client Uniloc USA’s patent. The Federal Circuit also affirmed the jury’s finding that Microsoft failed to prove Uniloc USA’s patent is invalid. Although the Federal Circuit also vacated the damages award as being based on a methodology the Court found to be faulty, with there no longer being any question about Microsoft’s infringement, Uniloc gained another opportunity to obtain damages from Microsoft. |
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| The U.S. Court of Appeals for the Federal Circuit ruled in favor of Finnegan client Research Corporation Technologies, Inc., affirming the patentability of RCT’s methods for halftoning digital images. The decision is particularly important because it is the Federal Circuit's first dealing with patentable subject matter under 35 U.S.C. § 101 since the Supreme Court’s landmark Bilski v. Kappos decision. Chief Judge Rader, writing for a unanimous panel, reversed the district court’s ruling that the claimed halftoning methods were invalid under section 101. Instead, he wrote, “the invention presents functional and palpable applications in the field of computer technology.” Following the Supreme Court’s Bilski decision, the Federal Circuit explained that the coarse filter of section 101 excludes only laws of nature, physical phenomena, and “manifestly” abstract claims, and that courts should focus primarily on the patentability criteria of the rest of the Patent Act. |
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| The U.S. District Court in New Jersey ruled in favor of Finnegan client Otsuka Pharmaceutical Co. in its patent litigation against several companies seeking FDA approval to market generic copies of Abilify®, the sixth largest selling pharmaceutical in the U.S. The court held that the asserted patent claims covering aripiprazole, the active ingredient in Abilify®, are both valid and enforceable. The ruling maintains patent and regulatory protection for Abilify® in the U.S. until at least April 20, 2015. The court also held that the proposed generics infringe the claims, and accordingly precluded the FDA from approving, and enjoined the respective companies from marketing, the generic products in the U.S. until at least April 20, 2015. |
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| Finnegan represented patent applicant High End Systems Inc. in reissue proceedings before the U.S. Patent and Trademark Office Board of Patent Appeals and Interferences. Finnegan was successful in obtaining a complete reversal of the Examiner’s rejection of claims to LED technology. |
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| During a shoe industry trade show, our client Nimco discovered that Spring Footwear was promoting a new line of shoes that incorporated Nimco's proprietary outsole design. The counterfeit outsole was identical to Nimco's outsole in every way, not only encompassing the design elements, but also containing Nimco's logo and its patent numbers. To avoid future displays of the counterfeit outsole, Nimco asked us to immediately file suit against Spring Footwear. As a result of the litigation, Spring Footwear withdrew the counterfeit shoe from the market and commenced settlement discussions. The case has since settled in favorable terms for our client. |
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| RIC has sold SOOTHIE pacifiers since 1996 and owns the SOOTHIE trademark for pacifiers and related products. Lansinoh sued RIC, Children's Medical Ventures, and Learning Curve. RIC and Children's Medical Ventures are subsidiaries of Finnegan client Philips. Learning Curve introduced SOOTHIE baby bottles in 2006. Lansinoh claimed rights in the SOOTHIES mark since 2000 for a gel pad used during breast feeding. Lansinoh filed a preliminary injunction motion, claiming that SOOTHIE bottles infringed Lansinoh's SOOTHIES mark. In opposition, on behalf of our client, we asserted the differences in the parties' products, packaging and trade dress, the lack of actual confusion, and the defendants' priority of the SOOTHIE mark. We also commissioned several consumer surveys on likelihood of confusion. After a live hearing, the court denied Lansinoh's motion for a preliminary injunction. This case is significant because had the court issued an injunction, it would have greatly harmed both Learning Curve, which has sold millions of SOOTHIE bottles and nipples each year since 2006, and RIC as the licensor of the SOOTHIE mark. |
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| After purchasing the assets of a bank that was being dissolved by the FDIC, our client commenced the process of re-branding the bank as ONEWEST BANK. Between the time that the new brand had been chosen, announced, and launched, former employees of the dissolved bank learned of the new brand and announced plans to launch their own mortgage brokerage company named ONEWEST MORTGAGE. To protect the client's new mark and to prevent the former employees from falsely claiming a relationship with the new bank, we filed suit and prepared to file a motion for a temporary restraining order. In response to our quick and forceful action, the defendants agreed to change their name and consented to an entry of a permanent injunction. The case has since settled in favorable terms for our client. |
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| Finnegan obtained urgent relief for AMC, which was fighting for its very existence. In addition to stopping Ameriquest's use of AMC, Finnegan negotiated the assignment of several of Ameriquest's federal trademark applications and registrations to AMC. AMC Mortgage Corporation is a small mortgage company founded over twenty years ago with the goal of becoming one of the country's most trustworthy and dependable mortgage companies. In contrast, Ameriquest Mortgage Company was the largest mortgage company in the country and had one of the worst reputations for customer service. Ameriquest began using the mark AMC for mortgages and related services. As a result, and due to Ameriquest's enormous size and pervasive use of the mark AMC, consumers began associating the mark with Ameriquest instead of AMC. AMC brought an action for trademark infringement, unfair competition, and cybersquatting against Ameriquest and its subsidiaries. Several months into the case, consumer criticism against Ameriquest grew and a potential sale to Citigroup was widely reported in the mainstream media. As a result, the potential harm to AMC's reputation increased exponentially and preliminary relief became urgent. AMC filed a preliminary injunction motion and, as a result, Ameriquest entered into a Court-approved judgment requiring Ameriquest to cease all use of AMC. |
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| Herb D. Vest (aka H.D. Vest) is an entrepreneur who built a successful financial services company under the name H.D. Vest Financial Services and then sold it to Wells Fargo & Company. Wells Fargo continued to operate the business under the name H.D. Vest, Inc. After selling the company to Wells Fargo, Mr. Vest founded several other unrelated businesses in the advertising and online dating fields using used H.D. Vest as part of the business names for these companies. Wells Fargo sued and sought a preliminary injunction seeking to enjoin all use of the H.D. Vest name by Mr. Vest for any business and to stop Mr. Vest from referencing H.D. Vest on his personal website for any purpose. We submitted an opposition brief arguing that Mr. Vest was not precluded by contract from using the H.D. Vest name, Mr. Vest's references to his past relationship with the H.D. Vest financial services company constituted fair use, Mr. Vest had not used the H.D. Vest name in commerce, and there was no likelihood of confusion or dilution. The court denied Wells Fargo’s preliminary injunction motion. |
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| On behalf of our client Gap, the global clothing retailer, we prevailed in an opposition against the GAP ONE mark for general business merchandising services, namely, marketing, on the ground of likelihood of confusion with the GAP trademarks for retail store services and clothing. The TTAB ruled that the "GAP trademarks are famous and thus entitled to a broad scope of protection" in deciding the likelihood-of-confusion claim. |
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| On behalf of our client H-D Michigan LLC and its related companies (collectively "Harley-Davidson"), Finnegan successfully litigated an opposition against the mark HOLY-DIVINESON and design for "hats; headwear; shirts; t-shirts on the ground of likelihood of confusion with the HARLEY-DAVIDSON and HARLEY trademarks and Harley-Davidson's BAR & SHIELD logo for, among other things, motorcycles, clothing, and headwear." This decision is one of a few decisions to hold that both the HARLEY-DAVIDSON and HARLEY word marks and the BAR & SHIELD logo are famous and entitled to a broad scope of protection in connection with motorcycles, motorcycle parts and accessories, clothing, and headwear. It is also the first decision to hold that Harley-Davidson's "bar and shield logo, regardless of wording and other matter, is itself a famous mark in connection with at least motorcycles, clothing and headwear." |
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| In a case Finnegan handled from inception through appeal, the U.S. Court of Appeals for the Federal Circuit affirmed a damages award of $6.5 million in favor of firm client Telcordia Technologies against Cisco Systems. At trial in the District of Delaware, the jury had found for Telcordia on all claims, concluding that Cisco willfully infringed two Telcordia patents. On appeal, the Federal Circuit rejected Cisco’s challenge to the validity of one of Telcordia’s patents, and it affirmed the district court’s damages decisions —specifically, that in addition to the $6.5 million awarded by the jury, Telcordia was also entitled to recover both prejudgment interest and an ongoing royalty. |
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| The United States District Court for the District of Delaware ruled in favor of firm clients AstraZeneca and Shionogi Pharmaceuticals, finding that the FDA Orange Book listed patent for the active ingredient in their blockbuster anti-cholesterol drug, Crestor®, is valid and enforceable—preserving market exclusivity for Crestor® into 2016. The patent was challenged in these Abbreviated New Drug Application litigations by eight generic pharmaceutical companies. Judge Farnan ruled that the novel rosuvastatin inventions claimed in the patent would not have been obvious to one of ordinary skill in the art. Judge Farnan further found that the failure to submit certain prior art during the prosecution of the patent application was not the result of an intent to deceive the United States Patent and Trademark Office. Instead, Judge Farnan credited AstraZeneca and Shionogi’s witnesses and evidence that innocent mistakes resulted in the non-submission of the prior art and ruled that the patent is enforceable. |
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| In its highly anticipated Bilski v. Kappos decision, issued on June 28, 2010, the U.S. Supreme Court overturned the U.S. Court of Appeals for the Federal Circuit's "machine−or−transformation" test, which required that a patentable process either be tied to a machine or apparatus or involve a transformation of a particular article into a different state or thing. The Court also affirmatively recognized that "business methods" are not categorically excluded from the scope of 35 U.S.C. § 101. The decision was the culmination of Finnegan’s efforts on behalf of the applicants in In re Bilski, which began with the Supreme Court granting Finnegan’s petition for a writ of certiorari filed in June 2009. The petition sought to overturn a decision issued on October 30, 2008, by the Federal Circuit which set forth a test requiring that a patentable process either be tied to a machine or apparatus or involve a transformation of one thing into something else. While the Supreme Court affirmed the rejection of the Bilski business method patent application, its decision overturning the Federal Circuit’s machine-or-transformation test was a victory for patents on business method and software. Finnegan made the oral argument before the Court on November 9, 2009. |
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| From prosecuting patents before the U.S. Patent and Trademark Office to coordinating the prosecution of counterpart cases in other jurisdictions around the world, Finnegan serves a key role in implementing Research In Motion’s (RIM) global patent strategy. Our work also includes filing reexamination requests (both ex parte and inter partes) against third-party patents and fending off reexamination challenges launched by third parties against RIM’s patents. |
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| Accenture, a recognized leader in software and business method patenting, provides business consulting and technology services to more than two-thirds of the Fortune Global 500. Accenture retained Finnegan to assume prosecution of a significant portion of its large portfolio of U.S. and foreign patents and patent applications. Aware of the challenges of transferring over 1,000 patent files, Finnegan assembled a team that included a supervising partner and members of the firm’s docketing, records, financial services, and international prosecution departments. A detailed file transfer process and weekly meetings with the Accenture in-house team ensured accurate docketing, continuity of prosecution, and a smooth transition. The Finnegan team completed the transfer in just over three weeks and well ahead of schedule. |
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| Nearly a year after accusing firm client FedEx of patent infringement in the U.S. District Court for the Central District of California, Big Baboon, Inc. of Sunnyvale, California, agreed to dismiss its claims against FedEx. The stipulated dismissal came after Finnegan attorneys persuaded Big Baboon that its accusations were baseless. |
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| In an important decision for companies bidding on government contracts or supplying bidders on government contracts, Judge Freda L. Wolfson of the District of New Jersey issued an order granting summary judgment of immunity from infringement in favor of Finnegan client Accuride Corporation. Accuride was accused of infringing a patent on an automotive wheel for use with an onboard tire inflation system. Accuride supplied the accused wheel to companies bidding on a U.S. Army solicitation for a military all-terrain vehicle (M-ATV) intended to better protect U.S. soldiers, sailors, airman, and marines in Afghanistan from roadside bombs and improvised explosive devices (IEDs). In a detailed 29-page opinion, Judge Wolfson found that the U.S. Government had implicitly authorized and consented to liability for any potentially infringing onboard tire inflation system when wheels were supplied in the bidding phase of the M-ATV military contract. Specifically, Judge Wolfson found that Accuride was immune from any liability for patent infringement under 28 U.S.C. § 1498(a), which is the federal statute that provides that claims for patent infringement occurring in government contracts must be against government and must be brought in the Court of Federal Claims. |
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| The Trademark Trial and Appeal Board granted judgment in favor of Italian design house Emilio Pucci (subsidiary of luxury goods conglomerate LVMH Moët Hennessy), finding that the defendant’s mark EMIDIO TUCCI for apparel and accessories is confusingly similar to the client’s long-used EMILIO PUCCI mark for fashion products. In response to submissions showing extensive use of EMILIO PUCCI since the early 1950s on a wide variety of clothing and other goods, the Board found that the mark had developed “substantial renown” in the field of apparel and accessories and become a “well-established brand.” Pucci defeated defendant’s argument that the expensive nature of Pucci’s products limited its renown to a small group of sophisticated purchasers (mostly women) by submitting extensive evidence showing broad public recognition of the mark. |
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| A jury in the U.S. District Court in Delaware found that French Door refrigerators produced by Finnegan client LG Electronics do not infringe a Whirlpool patent, but found that some patent claims covered certain earlier-generation LG side-by-side refrigerators, which LG is no longer making. The jury determined that LG was not willfully infringing these claims. Another Whirlpool patent asserted against LG was found invalid. Whirlpool was awarded $1.78 million for infringement of the earlier-generation side-by-side refrigerators, an amount well below Whirlpool’s quest for total damages of more than $22 million. |
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| Judge Leonard Davis of the Eastern District of Texas issued an order granting judgment in FedEx’s favor and invalidating claims of a patent asserted by BarTex Research, LLC. BarTex alleged that FedEx’s shipping labels infringed its patent related to bar codes. FedEx won a favorable claim construction ruling by Magistrate Judge John Love that was later adopted by Judge Davis. Thereafter BarTex conceded that the asserted claims were invalid in view of the claim construction. While FedEx’s motion for summary judgment of invalidity was pending before Judge Davis, BarTex requested that Judge Davis issue an order granting judgment in favor of FedEx on the invalidity grounds raised in FedEx’s summary judgment motion. The judgment in favor of FedEx was upheld on appeal by the U.S. Court of Appeals for the Federal Circuit. Finnegan also represents FedEx Corporation in an inter partes reexamination of the same BarTex patent. Although the reexamination has not yet concluded, the Patent Office has rejected all claims of BarTex’s patent. |
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The United States District Court for the Middle District of Florida has granted summary judgment of noninfringement in favor of Finnegan client Toyota in Solomon Technologies, Inc. v. Toyota Motor Corp. Solomon sued Toyota in the Middle District of Florida in September 2005, claiming that Toyota’s hybrid vehicles infringed U.S. Patent No. 5,067,932 ("the ’932 patent"). That case was stayed, however, after Solomon filed a related action in the International Trade Commission in January 2006. Represented by Finnegan, Toyota showed the ITC that its accused hybrid vehicles do not infringe Solomon’s patent. Solomon appealed to the Federal Circuit, which affirmed the ITC’s decision in Toyota’s favor. Solomon then tried to reopen the Florida case. Toyota obtained the Court’s permission to file an early motion for summary judgment, arguing that the ITC and the Federal Circuit had already decided the issues. The Court agreed with Toyota, holding that the doctrine of judicial estoppel precluded Solomon from raising new and inconsistent arguments in a later proceeding. Accordingly, the district court granted Toyota’s motion for summary judgment that the accused hybrid vehicles do not infringe the ’932 patent. |
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| Judge Terrence McVerry of the Western District of Pennsylvania issued an order granting summary judgment of patent invalidity in favor of Finnegan client SinterFire Corporation. In the case, Delta Frangible Ammunition, LLC accused SinterFire of infringing a patent for a frangible bullet and a method of making it. SinterFire requested reexamination of the Delta patent, and the claims asserted against SinterFire were finally rejected in the U.S. Patent & Trademark Office. SinterFire had attempted to stay the litigation pending the results of the reexamination, but the District Court denied SinterFire’s motion for a stay. |
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| An Administrative Law Judge of the U.S. International Trade Commission ruled in favor of firm client Rambus Inc. and issued an Initial Determination finding three Rambus patents valid and infringed by nVidia Corp. and 15 other respondents. The ALJ found that nVidia and the other respondents, which use nVidia technology in products they import to the U.S., each literally infringe, induce infringement and contribute to the infringement of the Rambus patents. The ALJ also recommended an exclusion order directed to nVidia memory controllers and products of the Respondents containing those controllers. The Commission later affirmed the ALJ’s decision and issued limited exclusion and cease-and-desist orders barring Nvidia and other respondents from importing infringing products for sale in the U.S. |
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| Finnegan represented Mitsubishi Heavy Industries, Ltd. and Mitsubishi Power Systems America, Inc. against General Electric in a U.S. International Trade Commission investigation. The ITC ruled in favor Mitsubishi, terminating a Section 337 investigation based on a General Electric complaint alleging patent infringement by Mitsubishi’s 2.4 Megawatt variable speed wind turbines. The Commission ruling of no violation overturned an earlier finding by an ITC administrative law judge that two of GE’s patents had been violated. The result of the ruling means that Mitsubishi remains free to import and sell its wind turbines in the U.S. market. |
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| In a case brought by Constellation IP, LLC in the Eastern District of Texas, all of the named defendants except for our client, FedEx, settled before or shortly after the case management conference. FedEx, on the other hand, defended the case up until approximately two months before trial. Following a favorable Markman ruling, we completed discovery (fact and expert) and filed multiple summary judgment motions. We also obtained reexamination of the asserted patent, and the Board of Patent Appeals and Interferences affirmed multiple rejections of the claims based on our invalidity contentions. The plaintiff sought nearly $1 billion in damages but settled for a small fraction of this demand. |
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| A unanimous Federal Circuit panel affirmed a district court ruling of non-infringement for Finnegan client Trex, in Nystrom v. Trex. Trex has the questionable distinction of having made new law, not once but twice, in the course of Nystrom’s running feud, in which Trex prevailed in three judgments in the Eastern District of Virginia and in three subsequent appeals to the Federal Circuit. In its first groundbreaking holding, Trex successfully sought rehearing by the Federal Circuit, which vacated an initial 2004 panel decision reversing the district court’s non-infringement judgment, and issued a new decision following the Phillips decision and holding that the claims must be construed consistent with the specification. Trex broke new ground again in 2009 when the Federal Circuit affirmed another judgment of non-infringement. Trex had argued that the earlier decisions controlled, yet, the district court declined to give them res judicata effect. The district court ultimately ruled in Trex’s favor on other grounds. The Federal Circuit now holds that res judicata applies with respect to claim limitations that are the basis for a non-infringement judgment, even if the product is allegedly changed with respect to other claim limitations. Nystrom is prohibited from proceeding against Trex for any product that does not include the claim limitations that were the basis for the earlier non-infringement judgments, even under the doctrine of equivalents. |
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| In an important victory for firm client, Eli Lilly and Company, the Southern District of Indiana rejected claims by Teva Pharmaceuticals USA, Inc. alleging that all of Lilly’s patents covering Lilly’s blockbuster drug for the treatment of postmenopausal osteoporosis, Evista®, are invalid. The court granted a permanent injunction preventing Teva from marketing its generic version of Evista® before the expiration of four of Lilly’s patents covering Evista®, the last of which expires in 2014. Teva appealed the decision, and in September 2010, the Federal Circuit ruled in favor of Lilly, affirming the validity of Lilly’s patents for Evista®. Chief Judge Rader, writing for a unanimous panel, held that there was no evidence that "would teach, suggest or motivate or supply any common sense reason" for a person to arrive at Lilly’s invention. The Federal Circuit further affirmed that the patents were enabled, observing that the initiation of a human clinical trial presumptively establishes the credibility of the asserted utility. |
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| Judge Marsha J. Pechman of the Western District of Washington issued an order granting summary judgment of no infringement in favor of Finnegan client Trudeau Corporation. In the case, Chef’n Corporation accused Trudeau of infringing a patent for the design of a silicone vegatable steamer. As part of the order, Judge Pechman also granted Trudeau’s motion to strike the declarations of two industry experts produced by Chef’n. Earlier in the case, Trudeau successfully defeated Chef’n’s motion for a preliminary injunction. |
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| After more than a year of deliberations, Judge Dennis Saylor of the U.S. District Court for the District of Massachusetts handed a victory to firm client DeWalch Technologies, Inc. of Houston, Texas. In the case, Inner-Tite Corp. of Holden, Mass. accused DeWalch of infringing a patent directed to a locking device for an electric utility meter box. At trial, Finnegan presented evidence of no literal infringement and no infringement under the doctrine of equivalents. The court found in favor of DeWalch on all counts. |
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| A leading healthcare company that develops wireless communication systems for managing patient care turns to Finnegan for counsel in many different facets of intellectual property. We study the patent landscape for wireless health management and assist the company in weaving its way through patents of its competitors; we obtain patent protection for its technology and trademark protection for its brands; and we provide guidance in drafting agreements for the transfer of technology. |
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| Judge R. Gary Klausner of the Central District of California issued an order granting summary judgment of no infringement in favor of Finnegan client FedEx in a Multi-District Litigation (MDL) patent case involving the interactive voice communications patent portfolio of Ronald A. Katz Technology Licensing L.P. The patent portfolio involves more than 50 patents, including thousands of claims. At one point there were more than 50 defendants in the MDL, making this MDL one of the largest patent cases in history. Earlier in the MDL, Judge Klausner issued orders invalidating other claims Katz asserted against FedEx, making FedEx one of the first to have "all of the claims in this case ... resolved against Katz." |
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| Finnegan attained a win on behalf of the defendants in the U.S. District Court for the Eastern District of Texas. On the third day of trial, a federal district court judge directed a verdict against the plaintiffs and in favor of Finnegan’s clients ADT Security Systems, Inc. and Digital Security Controls, Ltd. on all claims. The plaintiffs were seeking damages for the alleged infringement of a patent relating to a telephone line coupler circuit. The judge’s ruling for the defendants followed in the wake of a number of favorable rulings on pretrial motions that narrowed the scope of the case. The decision was affirmed by the U.S. Court of Appeals for the Federal Circuit. In addition to the directed verdict, the case was unusual in that it was a win for the defendants in a venue with a reputation for favoring plaintiffs. |
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| In an ITC Section 337 action between Finnegan client LG Electronics and its competitor Whirlpool, the ITC denied all of Whirlpool’s claims for relief, resulting in a total victory for LG Electronics. Judge Theodore R. Essex had previously ruled that LG refrigerators are not covered by Whirlpool's U.S. Patent No. 6,082,130. The ITC later revised the claim interpretation of the ‘130 patent and asked the judge to reconsider the remaining disputed issues based on its new interpretation. Judge Essex applied the ITC’s interpretation and again found that the ‘130 patent does not cover LG refrigerators and also concluded that all but one of the asserted claims is invalid. Whirlpool originally claimed that five of its patents covered LG refrigerators. During the course of the case, Whirlpool withdrew four of those patents prior to the hearing. |
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| The Eleventh Circuit Court of Appeals unanimously upheld a lower court judgment in favor of firm client X/Open Company Limited, a non-profit computer-industry consortium responsible for setting and managing the specifications for UNIX-based products. The decision caps a decade-long dispute which began as an administrative proceeding at the U.S. Patent and Trademark Office and later escalated into a federal court lawsuit when the plaintiff Wayne Gray alleged violations of federal and state RICO statutes, the Florida Communications Fraud Act, and the Lanham Act. The crux of plaintiff’s claim was that X/Open fraudulently asserted ownership in the UNIX mark against Gray in the earlier administrative action and then “conspired” with co-defendants Novell, Inc. and The SCO Group, Inc. to conceal the true ownership of that mark. The lower court had granted summary judgment in favor of X/Open, finding that various prior agreements and dealings between X/Open and the co-defendants indisputably established that X/Open owned the UNIX mark. The appeals court panel unequivocally affirmed, holding that Gray was simply “mistaken” about the legal effect of each agreement at issue. Because X/Open owned the UNIX mark and had lawfully asserted its rights in that mark against Gray, the Court held that all of Gray’s claims must fail. |
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| Finnegan helped InterDigital secure a settlement with Samsung, the terms of which included InterDigital receiving $400 million for a license that includes 3G cellular telephone technologies through 2012. The settlement was reached on the eve of an Initial Determination by the chief administrative law judge, following Finnegan's representation of InterDigital in a six-day trial at the International Trade Commission (ITC). |
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| Seoul Semiconductor received favorable rulings on several important motions in its ITC case led by Finnegan against Nichia Corporation, paving the way to a valuable cross-licensing deal as part of a settlement ending years of litigation in courts across the globe. Finnegan represented SSC in cases from the Eastern District of Texas to the Central District of California, as well as at the Federal Circuit. Shares in SSC rose 15 percent on the Korea Exchange following the announcement. |
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| Finnegan represented Axcelis Technologies against Varian Semiconductor Equipment Associates Inc. in a patent infringement case in the District of Massachusetts. Finnegan client Axcelis invalidated many of Varian’s patent claims with an early summary judgment motion that was granted by the court. Based on the judge’s interpretation of the remaining claims, Axcelis filed a second summary judgment motion for non-infringement. The case settled soon afterwards. |
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| Starbucks is a household name with thousands of retail locations across the globe and a brand that extends well beyond coffee. Finnegan successfully opposed an application for the mark LESSBUCKS COFFEE for coffee, tea, and coffee- and tea-based beverages and related retail locations. We obtained a ruling that the STARBUCKS trademarks is a famous mark entitled to a broad scope of protection, and that the LESSBUCKS mark was likely to cause confusion. |
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| Home Diagnostics Inc. (now Nipro Diagnostics) is one of the largest cobranders of blood glucose products for diabetics and offers low-cost alternatives to products offered by competitors. After a three-year battle with Roche, the district court granted a summary judgment of noninfringement in favor of HDI, concluding that no reasonable juror could find that HDI products infringed Roche's patent relating to blood glucose monitors. The first phase of the case had concluded successfully for HDI when the court ruled, following a bench trial, that Roche's other patent-in-suit had been obtained by inequitable conduct and is unenforceable. |
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| A European company asked us to conduct IP due diligence on a technology it was looking to acquire. This renewable energy focused on the production of photovoltaic cells. In less than one month, we coordinated prior art searches in Europe and the United States, evaluated the search results containing over 500 U.S. and European patents, provided our opinion on freedom to operate with the target technology, and set up a system to monitor European and U.S. patents that may be granted in the future. |
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| One of our long-standing clients asked us for advice on how to expand its patent portfolio to include nanotechnology. We researched the activities of its competitors, reported our findings, and suggested a course of action to a group of its senior IP counsel and technical leaders. Our report focused on the implications of nanotechnology in the client’s industry and identified desirable avenues of research and product development where nanotechnology could be implemented and protected to provide an advantage in the marketplace. |
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| Since 2000, Finnegan has worked closely with the inventors and legal staff at Caterpillar Inc. The firm has prepared and is prosecuting several hundred patent applications in the United States and in many foreign countries. We have also assisted Caterpillar with many opinion matters involving issues of patent validity, infringement, government contracts, licensing, and copyrights. And we have a significant role protecting Caterpillar's well-known trademarks around the world. |
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| When Yahoo!’s famous YAHOO! trademark was misused on the Internet, the company turned to Finnegan. We obtained a temporary restraining order for Yahoo!, enjoining the defendants from using the domain name 21yahoo.com for a website offering free stock in 21Yahoo.com, Inc. In a separate matter, we obtained an ex parte temporary restraining order for Yahoo! against typosquatters who registered the domain name yaholigans.com (a typo of the name of Yahoo!’s children’s site, YAHOOLIGANS!), among others, and used them for an adult-entertainment site. |
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| Intertrust is a leading developer of digital rights management (DRM) solutions and trusted computing platforms; the company is on the cutting edge of developing and monetizing next-generation technologies and inventions. Finnegan currently prosecutes and manages its entire patent portfolio. |
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| In this ANDA case, our client, Elan Corporation PLC, filed suit to prevent infringement of its patent directed to naproxen formulations for once-daily oral administration. The district court held Elan’s patent claims invalid in view of Elan’s offer to license technology directed generally to the joint R&D of such pharmaceutical products. The Federal Circuit vacated the district court’s holding and remanded the case so that Elan could pursue its claims on the merits. |
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| When its right to bring certain vehicles into the United States was challenged, Toyota needed fast and decisive relief. We represented Toyota before the ITC and argued that there was no violation of Section 337 or patent infringement. The ITC adopted trial findings of patent invalidity and no infringement, and then terminated the investigation, clearing the way for more hybrid vehicles in the United States. |
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| We represented Tyco Healthcare in bringing a complaint against Absormex for importation of infringing absorbent garments from Mexico. The investigation was one of the fastest ITC cases to get to trial, with a trial date less than six months from the start of the investigation. On the last day before the trial was to begin, a favorable settlement was reached, and the case was terminated. |
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| Since its founding, we have provided strategic intellectual property counseling and representation to Imerys, including its French parent company, international subsidiaries, U.S. headquarters, and multiple domestic business units. We have evaluated developing technology for patentability; drafted and prosecuted patent applications in the U.S. Patent and Trademark Office and abroad; analyzed patent enforcement opportunities; defended against third-party charges; and provided legal opinions on several aspects involved in bringing new products to market and maintaining Imerys’s strong, competitive position in the kaolin clay market. |
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| We provide in-depth patent prosecution and counseling services for one of the world's leading information management companies. Our service includes preparing patent applications directed to novel methods and systems for storing, protecting, and managing information with a particular focus on records management and data protection and recovery. In addition, we have provided due diligence for our client’s mergers and acquisitions, to assist it in achieving its strategic growth goals. |
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| In a case that was settled ”on the courthouse steps,” Finnegan was able to obtain for its client BIAX Corporation a favorable settlement with Intel. During claim construction, BIAX’s construction prevailed on the issues important for infringement, which helped lead to the favorable settlement. |
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| This ANDA case involved Zenith and two other generic drug manufacturers that attempted to invalidate Lilly's patent and thereby open the market for generic sales. The lengthy trial involved complex technical and legal issues. Lilly prevailed in the district court on all issues, protecting its exclusive marketing rights and a large revenue stream. The Federal Circuit later affirmed the lower court’s decision, which upheld Lilly's patent on its blockbuster drug. |
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| Toshiba is one of Finnegan’s long-standing clients. The firm prosecutes hundreds of U.S. patent applications per year in various technologies, including computers, communications, electronics, semiconductors, and business methods. Toshiba turns to us for strategic advice and opinions regarding their extensive patent portfolio. |
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| Finnegan won a significant victory for Guidant (now Abbott) in the U.S. District Court for the District of Delaware. After a two-week trial, the jury returned a verdict in Guidant’s favor on all counts, finding that all 12 of the asserted patent claims were valid and that all 12 of the accused Medtronic coronary stents infringed the asserted claims. The district court also held that none of the 12 accused Guidant stents infringed any of Medtronic’s four asserted patents and further dismissed Medtronic’s claims against Guidant for trade secret misappropriation and unfair competition. |
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| After a jury verdict against Conair for infringement of a patent on a safety mechanism in a hairdryer, the district court increased the damages and entered a judgment of over $46 million. On appeal, Finnegan achieved a total victory for Conair by obtaining a reversal of the infringement finding in the Federal Circuit. |
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| Finnegan represented Eli Lilly in a landmark case brought by The Regents of University of California (UC). Two patents were at stake and both involved recombinant human insulin. UC claimed that its patents directed to DNA sequences that encode human proinsulin (a precursor to human insulin) covered Lilly's recombinant human insulin product. They argued that Lilly owed them hundreds of millions of dollars for infringing two of its patents. Finnegan succeeded in establishing that one patent was not valid and that the other patent was not infringed. |
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| Finnegan’s work for Eastman Chemical covers a wide variety of technologies, including Eastman’s valuable specialty polyester resin portfolio. Our work has involved drafting and prosecuting applications for commercially important technologies; specialty prosecution proceedings, such as reexaminations and reissues; the preparation of opinions; prelitigation investigations; and issues involving licensing. |
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| When Monsanto brought suits asserting patents relating to genetically engineered corn against Syngenta Seeds, Syngenta turned to Finnegan and relied on our legal skills, strategic planning, and deep scientific background to make the strongest arguments. We succeeded in transferring one of the cases to the District of Delaware so suits could be consolidated. That court agreed with Syngenta’s defense and motions for summary judgment, holding one of Monsanto’s patents invalid and the other not infringed, and the Federal Circuit affirmed both decisions. |
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| The district court had granted summary judgment against firm client Origin (a subsidiary of Guidant Corp.) and a jury awarded nearly $13 million in damages, finding that the infringement was willful. The matter involved infringement of a patent on a method for using a balloon to create a space for surgery. On appeal, the Federal Circuit agreed with our interpretation of the patent claims and vacated both the judgment of infringement and the jury’s verdict that the infringement was willful. |
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| We represented the University of Missouri and Covidien (formerly Tyco Healthcare) against C.R. Bard and VasCath, successfully obtaining an award of priority against the patentee in this longrunning interference. Navigating this interference through the PTO, two district courts and two trips to the Federal Circuit, we were able to achieve finality of the award of priority and secure important patent rights for our client. The technology at issue was a type of hemodialysis catheter for removing toxins from the blood of patients with kidney failure. |
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| Finnegan represented System General as a respondent in an investigation involving power supply controllers found in many modern electronic devices. Complainant Power Integrations asserted infringement of four patents against System General’s entire product line. But the patent that threatened all of System General’s products was withdrawn when we found invalidating prior art, and another patent was withdrawn before trial. |
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| The market for high-end, large-capacity, technologically advanced washing machines is intensely competitive. When LG entered the U.S. market, Whirlpool and Fischer & Paykel each sued LG, claiming LG’s washers infringed their patents. They did not prevail. Instead, in each case, Finnegan employed an aggressive pretrial strategy that identified strong invalidity defenses. The strength of LG’s prior art defenses caused the opponent in each case to submit the patents to reexamination and stay the cases, pending the reexaminations. When the reexaminations were completed years after the respective lawsuits were initiated, the Fisher & Paykel action was dismissed, and the Whirlpool action was settled at very favorable terms. LG’s washers remain one of the market leaders in the U.S. |
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| Finnegan obtained an early stay and a subsequent voluntary dismissal for Nikon Corporation and Nikon Inc. in a multi-party patent infringement suit, thus limiting Nikon's involvement in a litigation filed by Honeywell International Inc. and Honeywell Intellectual Properties, Inc. Honeywell filed a series of suits against 30+ corporations claiming infringement of a patent directed to LCD modules. Nikon was accused of infringement in one of the suits, even though it was not a manufacturer of the LCD modules used in its digital still cameras. Characterizing Nikon as a "customer defendant," we filed a successful motion to stay the litigation with respect to Nikon. During the stay, Honeywell eventually settled with the defendants that were LCD suppliers for Nikon's cameras, allowing for Nikon's dismissal from the litigation based on the fact that Nikon was protected by Honeywell's settlements with Nikon's suppliers. |
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| Finnegan defended four different affiliates of GP Batteries International Ltd. in an alkaline battery patent infringement case filed by Eveready at the International Trade Commission against 26 respondents. SEC records indicated that Duracell had previously paid Eveready $20 million for a license under the Eveready patent and that Rayovac and Panasonic had also been forced into paying Eveready a royalty for their alkaline batteries. Working closely with the Chairman of the Board, we devised a defense that resulted in a settlement agreement prior to trial that other respondents characterized as a "walk-away" deal. |
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| Finnegan won two major victories for U.S. Philips Corporation: the first against KXD Technology, Inc., the second against International Norcent Technology, Inc. In both cases, the U.S. District Court for the Central District of California found willful infringement of Philips’s patents directed to DVD technology and awarded Philips monetary damages. In the KXD case, Philips was awarded more than $91 million in trebled damages and interest, a permanent injunction, and attorney’s fees and litigation expenses. In the Norcent patent infringement action, the jury returned a verdict that found the Norcent defendants liable for willful patent infringement and awarded Philips $12.8 million. |
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| We represented the Institut Pasteur against the National Institutes of Health in an interference which sought to determine which party was first to discover the AIDS virus and to invent the AIDS antibody test kit. Ultimately, this high-profile, high-stakes interference was settled by the intervention of the President of the United States and the Prime Minister of France. In another important interference for client Institut Pasteur, we challenged a patent owned by Chiron Corporation for a sensitive method of detecting HIV infection in human patients. The method has had widespread application in the diagnosis of such infections. Institut Pasteur succeeded in defending against Chiron’s attacks on its patent application and was awarded priority of invention by the PTO. This victory strengthened Institut Pasteur’s patent portfolio on HIV technology, which is licensed to benefit the public health and welfare. |