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The U.S. Court of Appeals for the Federal Circuit reversed a decision by the U.S. International Trade Commission (ITC) that Nokia did not infringe two patents relating to 3G cellular telephone technology held by Finnegan client InterDigital. Specifically, the Federal Circuit reversed the ITC's claim construction of two key terms and remanded the case to the ITC for further proceedings. In addition, the Federal Circuit affirmed the ITC's decision that InterDigital's substantial patent licensing program satisfied the ITC's domestic industry requirement.

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.  

The Federal Circuit reversed an anticipation ruling by the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board, which had found two claims of a Rambus patent to be “unsupported by substantial evidence.” The appellate panel sided with Finnegan client Rambus and reversed the finding. The Federal Circuit ruling is the latest development in a series of reexaminations requested by Micron.

In two related appeals from inter partes review (IPR) proceedings, Finnegan successfully persuaded the U.S. Court of Appeals for the Federal Circuit to vacate and remand the Patent Trial and Appeal Board’s (PTAB) decisions that adversely affected three patents related to coaxial cable connectors owned by client PPC Broadband. In the first appeal, for a majority of the claims, the Federal Circuit agreed with PPC that the PTAB overlooked a key claim limitation, and it therefore vacated and remanded the obviousness decision. For the remainder of the claims in that appeal, the court affirmed the claim construction ruling as the broadest reasonable interpretation, but noted that it would not be the “correct” construction had the Phillips standard applied. Finally, the court also agreed with PPC that the PTAB erred in disregarding much of the evidence on secondary considerations, including the commercial success of the accused products. In the second appeal, the court likewise agreed with PPC and vacated the PTAB’s claim construction as being unreasonable, stating that while the construction may have been the broadest interpretation, it was not the broadest reasonable interpretation in light of the specification. The Federal Circuit thus vacated and remanded the invalidity determinations in both appeals.

Finnegan successfully represented Eli Lilly in connection with a lawsuit brought by Ariad Pharmaceuticals, accusing Lilly’s Xigris® product of infringing Ariad’s patent covering “NF-κB” technology. After a full en banc hearing, the U.S. Court of Appeals for the Federal Circuit held Ariad’s patent invalid under 35 U.S.C. § 112 for failing to comply with the written description requirement.

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." 

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.

Nuance filed a complaint against Shanghai Hanxiang (CooTek) Information Technology Co., Ltd. in the ITC, accusing CooTek of infringing five patents generally related to software keyboard for mobile devices. CooTek took a targeted approach, which resulted in Nuance dropping one patent after receiving CooTek's prior art and obtaining an early finding of noninfringement for certain designs on three other patents. As the parties approached trial, the dispute focused on the fifth patent, which had the shortest remaining life. CooTek's streamlined approach proved to be both effective and efficient. Finnegan helped negotiate a favorable settlement, which protected CooTek’s U.S. market and further saved CooTek the expense of a trial.

Finnegan represented Roshen, a major Ukrainian candy maker, in two actions initiated by Ferrero Rocher before the Trademark Trial and Appeal Board. Ferrero claimed that the ROSHEN logos were likely to infringe and dilute its ROCHER and FERRERO ROCHER marks. Roshen counterclaimed to cancel Ferrero’s registration for the mark ROCHER on the grounds of fraud and abandonment.  Finnegan worked closely with experts to design and conduct two nationwide consumer surveys: one on the likelihood of confusion and the other testing actual association of the ROSHEN logo with FERRERO ROCHER/ROCHER for dilution. The survey results showed a less than three percent chance of potential confusion or association.  In the middle of the TTAB proceedings, Ferrero filed a federal lawsuit against Roshen in a U.S. district court, asserting trademark infringement and unfair competition, but then withdrew the complaint.  At the end of the discovery period, Ferrero withdrew both its TTAB opposition and cancellation proceedings against Roshen with prejudice, resulting in a complete victory for Roshen.

Finnegan represented former Olympic silver medalist Matt Lindland and his Team Quest mixed martial arts (MMA) gyms in defense a claim of trademark infringement asserted by a former colleague and well-known UFC fighter, Dan Henderson, on the basis of Lindland’s use of the name Team Quest for MMA facilities and merchandise. Because of Henderson’s knowledge of Lindland’s long standing use of the name, the court held that any relief sought by Henderson with respect to Lindland’s use of the Team Quest name was barred by laches. In particular, the court rejected Henderson’s assertion of inevitable confusion even though both parties showcase fighters in internationally syndicated events and provide online sales of branded merchandise. On appeal, the 9th Circuit affirmed the lower court’s decision. Henderson filed a petition for rehearing en banc, which was been denied.


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