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We defended ADT, Actron, and Tokai Denshi against Checkpoint Systems’ attempt to block their importation of resonate tags used to detect merchandise theft. At trial before the ITC judge, we proved that Checkpoint’s patent was invalid on an unusual basis: another Checkpoint employee had conceived and reduced to practice the claimed invention before the work of the inventor named in the patent. The full commission agreed. We then successfully defended that decision on appeal, where the Federal Circuit not only affirmed the decision, but also bestowed a “chutzpah” award on our adversary.

Finnegan defended First International Computer (FIC), FIC America, and Everex against an ITC case brought by Intel Corporation concerning personal computer motherboard chipsets.

Finnegan has successfully defended API and its engine oil certification program in numerous district court cases and before the TTAB. In one instance, we launched a multipart, simultaneous attack on twelve defendants, filing counterfeiting, trademark infringement, and false advertising claims in two different federal courts. We obtained multiple preliminary and permanent injunctions with each defendant agreeing to settlement. In another case, defendants falsely claimed their engine oil was licensed by API to use the API engine oil quality certification marks, which denotes an oil meets the stringent API engine oil performance standards. Ultimately, the defendants admitted to counterfeiting API’s engine oil quality certification marks and making false performance claims; they agreed to a 10-year ban on bottling or marketing any engine oil for diesel engines and for use in gasoline engines in cars, vans, trucks, and motorcycles; and they paid API’s litigation costs.

Finnegan has built a robust and dynamic IP portfolio for BrainScope Company, Inc. surrounding their brain injury assessment tool. As the company has grown and progressed from a concept through FDA clearance, the firm has worked closely with BrainScope to ensure their IP protection grew and reacted to their changing business goals. To protect all aspects of their device, Finnegan has provided strategic counseling and filed and prosecuted design patents, utility patents, and trademarks in the United States and a number of foreign countries.

Finnegan guided the entire developments of LTA’s patent portfolio that includes over 120 patents and pending applications directed to lighter-than-air airship technology. The applications cover airship technologies ranging from hull and empennage configurations, propulsion and power source arrangements, flight control systems, attitude regulation and control, attitude displays, variable buoyancy techniques, solar powered flight, aerodynamic features, and various ornamental designs and configurations.

On the third day of trial in the Eastern District of Texas, the judge directed a verdict against the plaintiffs and in favor of Finnegan 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.

In separate decisions from the U.S. District Court for the Northern District of Illinois and the American Arbitration Association (AAA), Finnegan successfully prevented a larger competitor from manufacturing or selling a generic version of Finnegan client Cumberland Pharmaceuticals’ flagship product, Acetadote®, a life-saving intravenous formulation of acetylcysteine for the treatment of acetaminophen overdose. Cumberland’s current patent-protected formulation is free of the EDTA chelating agent, which is an improvement over earlier formulations sold by Cumberland and others. First, in the AAA decision, the arbitrator issued a final award in favor of Cumberland enjoining the competitor and further awarded attorney’s fees and costs to Cumberland. Second, in the Abbreviated New Drug Application (ANDA) district court case, following claim construction rulings favorable to Cumberland, the generic company conceded infringement. A trial proceeded on the generic’s three validity attacks—derivation, anticipation, and obviousness— which were all rejected by the presiding judge. The district court’s ruling thus confirms Cumberland’s patent protection for ten years.

Following a claim construction ruling in Philips’ favor, plaintiff Luv n’ Care stipulated to a final judgment that Philips did not infringe the five asserted patents related to toddler sippy cups.  Accordingly, the U.S. District Court for the Eastern District of Texas entered a judgment of noninfringement in favor of Finnegan clients Koninklijke Philips Electronics N.V., Philips Electronics North America Corporation, and Avent Ltd.

The U.S. District Court for the District of Delaware ruled in favor of Finnegan clients Cephalon Inc., Cephalon France, and Teva Santé SAS, finding valid the listed patent for the active ingredient in Cephalon’s wakefulness improving drug, Nuvigil®. Having already conceded infringement prior to trial, four generic pharmaceutical companies alleged that the listed patent, claiming a particular polymorphic form of armodafinil, was anticipated and obvious. Finding that the generic defendants failed to demonstrate inherent anticipation, Chief Judge Sleet held that the generic defendants’ experts did not show clearly and convincingly that the claimed form of armodafinil was the “necessary and inevitable result” of practicing the prior art patent. The court further held that the polymorphic form of armodafinil claimed in the patent would not have been obvious to one of ordinary skill in the art. Chief Judge Sleet enjoined the generic defendants from manufacturing, using, offering for sale, or selling their proposed armodafinil ANDA products, and further enjoined the FDA from approving the defendants’ ANDAs, before the expiration of Cephalon’s patent covering Nuvigil®.

The United States District Court for the Eastern District of Pennsylvania granted summary judgment of patent invalidity due to prior invention thereby terminating an action that Teva Pharmaceutical Industries Ltd. brought against firm clients AstraZeneca Pharmaceuticals, Inc. and several other AstraZeneca entities.  Teva alleged that its patent covered AstraZeneca’s blockbuster anti-cholesterol drug, Crestor®, and sought damages and fees.  AstraZeneca moved for summary judgment of invalidity due to its prior invention of the Crestor® formulation.  Judge William H. Yohn, Jr. found that AstraZeneca had invented first and had not abandoned, suppressed, or concealed its invention.  Accordingly, Judge Yohn invalidated all asserted claims of Teva’s patent and entered judgment in AstraZeneca’s favor.


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