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Patent Litigation - Patent Trial

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.
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.
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.
Finnegan client Abbott Laboratories's motion to enforce a settlement agreement with Medinol Ltd. was granted after the court adopted Abbott's interpretation of a settlement between the parties, which gave Abbott an unrestricted license to Medinol's stent patents. After a two-week jury trial on the validity of Medinol's remaining patent claims (but before the jury verdict was announced), the parties settled. When a disagreement arose over a material term during the drafting of the settlement agreement, Finnegan went back to court to enforce the agreement as the parties had stated on the record.
Finnegan defended Broadcom’s Altima subsidiary against Intel’s patent infringement allegations based on four separate patents in two different ITC actions and two different district court cases. Intel withdrew the first patent before trial when we found invalidating prior art. The second patent we proved invalid at trial, and Intel did not seek an appeal. For the third patent, we proved that 14 of 18 claims were invalid and our clients were entitled to use any pattern of solder balls other than a “bulI’s-eye” pattern. And the ITC’s decision in Intel’s favor on the fourth patent was later rejected in the district court case when the judge issued a published decision in Altima’s favor on all claim construction issues.
Finnegan client Asetek was granted a permanent injunction and enhanced supplemental damages against CMI USA, Inc. (the USA distributer of Cooler Master) for its willfully infringing sales following a jury verdict in Asetek’s favor. Asetek, which owns two patents related to computer/data center liquid cooling, sued CMI USA for infringement of both patents. Following a nine-day trial, the Northern District of California jury was out less than one day and: (1) found infringement by every accused CMI USA product; (2) awarded Asetek a 14.5% royalty rate and damages; (3) rejected CMI USA’s assertion of invalidity based on alleged anticipation; and (4) found the existence of every secondary consideration of non-obviousness listed on the verdict form (favoring Asetek’s non-obviousness position). In deciding the post-trial motions, the presiding judge entered the permanent injunction requested by Asetek; found that CMI’s post-verdict sales were willful, and awarded Asetek an enhanced 25.375% royalty on those sales; and rejected CMI’s motions for new trial and judgment as a matter of law (JMOL).
Finnegan’s client Asetek owns two patents related to computer/data center liquid cooling, and sued Cooler Master’s U.S. affiliate, CMI USA, Inc., for infringement of both patents. Following a nine-day trial, the jury in the Northern District of California was out less than one day and: (1) found infringement by every accused CMI USA product; (2) awarded Asetek a 14.5% royalty rate and damages; (3) rejected CMI USA’s assertion of invalidity based on alleged anticipation; and (4) found the existence of every secondary consideration of non-obviousness listed on the verdict form (favoring Asetek’s non-obviousness position).
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.
The U.S. District Court for the District of Delaware ruled in favor of Finnegan client AstraZeneca AB, finding that the listed patent for the active ingredient, saxagliptin, in AstraZeneca’s type II diabetes drugs Onglyza® and Kombiglyze® was valid and infringed. Having conceded infringement prior to trial, 11 generic pharmaceutical companies alleged that claims directed to the compound saxagliptin were invalid as obvious. Finding that the generic defendants failed to establish by clear and convincing evidence that the asserted claims would have been obvious at the time the patent application was filed, the presiding judge held that defendants’ alleged motivations were “at odds with the teachings of the prior art” and appeared to be “the product of a classic hindsight analysis.” The generic defendants are enjoined from making, using, offering for sale, selling, or importing into the United States their proposed generic saxagliptin products before the expiration of AstraZeneca’s patent.
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 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 United States.  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 United States 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 United States until at least April 20, 2015. 
The inventors of U.S. Patent No. 5,763,476 (“the ’476 patent”), assigned to Allergan/Forest Laboratories, made a startling discovery during the development of Saphris®. Saphris® contains the active ingredient asenapine, and is indicated for the treatment of schizophrenia and manic and mixed episodes associated with bipolar I disorder. During the development process, the inventors discovered that asenapine administered using either a conventional oral tablet or an IV formulation had the potential to cause serious cardiotoxic side effects in subjects taking the medicine. The inventors solved this problem—which had been completely unknown in the art—using a sublingual formulation, a formulation that dissolves under the tongue that leads to the diffusion of the medicine directly through the oral mucosa and bypasses the digestive system. It was completely unexpected that a sublingual dosage form could solve the cardiotoxicity problem and even today, it is unknown exactly why.

Finnegan represented Allergan/Forest in its Hatch-Waxman litigation in the District of Delaware, filed against generic pharmaceutical defendants that sought to make generic versions of Saphris®. The four defendants that proceeded to trial conceded infringement of certain claims of the ’476 patent. Following a two week trial, the district court held the asserted claims valid, rejecting defendants contentions that they were obvious in view of the prior art and were not enabled or adequately described by the specification. It has been established precedent for decades that the discovery of an unknown problem can itself be patentable, and the district court determined that the inventors discovered an unobvious solution to an unknown problem, namely that oral and IV administered asenapine could cause serious cardiotoxic side effects. The district court further explained “[t]he sublingual solution to the cardiotoxicity problem was not ‘predictable’ or ‘expected’. . . . There were numerous other formulations that could have been experimented with to try to solve the problem, but no reasonable expectation that any of them would have.” The district court further disagreed with defendants’ assertions that there was other motivation to make a sublingual asenapine tablet, stating that “skilled artisans reviewing the publications of the publically reported clinical studies would have understood that orally administered asenapine was safe, bioavailable, and clinically effective even at relatively low doses. . . . There was nothing in the prior art that would have indicated that the oral tablet had problems, such that skilled artisans would have been motivated to invest the resources necessary to completely change the route of administration.” As such, “[t]he court discerns no motivation from the record evidence to use a sublingual formulation—a formulation that had never before been used for an antipsychotic drug.”

The district court ordered the Food and Drug Administration (FDA) not to approve the defendants’ Abbreviated New Drug Application (ANDA) for generic asenapine until after the expiration of the ’476 patent.
The District of Delaware ruled in favor of Finnegan client Forest Laboratories in a Hatch-Waxman litigation against generic pharmaceutical defendant Mylan, Inc. The suit involved Savella®, a medicine containing the active ingredient milnacipran, which is used for the treatment of fibromyalgia. The court held the asserted claims of all three patents litigated at trial valid and infringed, denying defendants claims that the patents were obvious and anticipated by prior art. In the words of the court, "[a]t best, the teaching of the art was and is multidirectional, with no clear motivation to pursue milnacipran as an effective treatment for fibromyalgia. Notably, there were no FDA-approved treatments for fibromyalgia at the time of the patents-in-suit. Consequently, the inventors' development of treating fibromyalgia with milnacipran was the antithesis of anticipation and obviousness as discussed in more detail below." The court entered final judgment and ordered the FDA not to approve Mylan’s Abbreviated New Drug Application (ANDA) for generic milnacipran until after the expiration of the last Forest patent litigated at trial.
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.
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.
In decisions from the U.S. Federal Circuit Court of Appeals, 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. Finally, in response to the generic’s appeal of the district court’s decision, the Federal Circuit further considered and expressly rejected the generic’s validity attacks. The Federal Circuit’s affirmance of the district court’s ruling thus confirms Cumberland’s patent protection for ten years.
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." 
In a complete victory for Finnegan client Vuly Trampolines, the International Trade Commission issued a final determination of no violation in its investigation Certain Soft-Edged Trampolines and Components Thereof.  Springfree Trampolines filed its complaint alleging Vuly’s Thunder trampoline infringed its patent, just as Vuly was entering the U.S. market after a successful launch of the Thunder trampoline in Vuly’s native Australia.  After a full evidentiary hearing, the administrative law judge issued an initial determination finding no violation by Vuly.  The ITC reviewed the decision and confirmed no violation.  Of the two claims Springfree asserted against Vuly, the ITC found one claim not infringed and the other invalid.  The ITC also found that Springfree failed to establish the economic prong of domestic industry, resulting in a separate and independent basis for the finding of no violation.
A jury in the Southern District of New York found five defendants liable for infringing Finnegan clients Koninklijke Philips Electronics N.V. and U.S. Philips’ valid patent related to the basic structure for optical storage media devices, or CD-Discs.  Each of the defendants had signed a contract with Philips to license the pool of patents covering CD-Disc technology.  Philips filed a breach of contract and patent infringement suit against the defendants when they stopped paying royalties while continuing to manufacture discs.  The jury victory followed Philips’ successful motions for summary judgment relating to various breach of contract and patent issues.  A damages trial will follow.
Following a two-week trial, a jury in the Northern District of California returned a unanimous defense verdict in favor of Finnegan clients ABBYY USA Software House, Inc. (of Milpitas, California), ABBYY Software, Ltd. (of Nicosia, Cyprus), ABBYY Production LLC (of Moscow, Russia), and Lexmark International, Inc. (of Lexington, Kentucky). Nuance Communications, Inc., had accused the ABBYY companies of infringing two patents directed to optical character recognition (OCR) software and a third patent directed to distributed document processing over a computer network. Nuance also sued Lexmark, a former Nuance customer, after it stopped using Nuance products and began using ABBYY’s OCR software. In addition, Nuance alleged that ABBYY infringed its trade dress for software packaging used for retail and internet sales. Prior to trial, Nuance sought more than $260 million in damages from the defendants. Nuance also alleged willful infringement and sought treble damages and attorneys’ fees from the defendants. The jury rejected Nuance’s infringement allegations in their entirety, returning a verdict of no infringement for all three Nuance patents and that Nuance’s alleged trade dress was not protectable. The Federal Circuit affirmed the district court’s judgment.
Finnegan helped InterDigital secure a settlement with Samsung, the terms of which included InterDigital receiving $400 million for a license for 3G cellular telephone technologies.  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).
As part of a global dispute concerning LED technology that encompassed litigations in the United States, Germany, South Korea, Japan, and China, Finnegan represented LG Electronics and LG Innotek against OSRAM AG in three separate investigations before the ITC and in two related U.S. district court proceedings. All three ITC investigations proceeded to trial, and a final initial determination issued in one proceeding, which the Commission determined to review. The parties, however, reached a global settlement resolving all disputes worldwide before the Commission issued any final decisions and before any trial in the U.S. district courts. Based on public press releases from both parties, LG and OSRAM are pleased to have reached agreement.
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.
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.
LG Electronics received a favorable decision in a washing machine patent infringement case tried in the U.S. District Court for the District of Delaware. Following a four-day trial, a Delaware jury determined that three LG patents related to direct-drive front-load washing machine technology are valid and infringed by certain washing machines made by Daewoo and sold by Daewoo and its business partners in the United States.

The verdict confirms LG's innovative leadership in the direct-drive front-load washing machine field. LG’s patented technology provides consumers with large-capacity, high-spin-speed washers that produce low noise and vibration. LG's leadership and patented innovations have led to LG's No. 1 market position in U.S. sales of front-load washing machines from 2007 to the present. This trial dealt only with liability issues (validity and infringement) and the case settled soon after trial.
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.
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.
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.
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.
We represented Allegheny Ludlum Co. against Allied-Signal in the area of iron-boron-silicon amorphous metal alloys. Despite having junior party status, we proved that the Allegheny inventors were the first to invent and the PTO ruled that they were entitled to the award of priority. Allied-Signal brought a Section 146 action in the U.S. District Court for the District of Connecticut. The parties settled the case after discovery and trial, but before a decision by the court.
Finnegan successfully represented the patentee in a patent infringement lawsuit involving multiple patents in federal district court, obtaining a jury verdict that each of the patents was infringed and that none of them was invalid. After the jury trial, the defendant filed a series of reexamination requests for each of the patents, resulting in multiple reexamination proceedings (both ex parte and inter partes). In connection with these reexamination proceedings, Finnegan worked with prosecution counsel to devise a reexamination strategy, to draft responses to office actions and supporting expert declarations, and to prepare prosecution counsel for PTO interviews (including preparation of experts for the interviews). As a result of Finnegan’s efforts, the PTO has agreed to issue reexamination certificates, with minor amendments, for several of the patents, and we expect the same result for the remaining patents. In the interim, Finnegan’s client settled the infringement lawsuit, receiving substantial compensation based on our victory in federal court.
After a two-week jury trial, Finnegan clients Koninklijke Philips N.V. and Philips Electronics North America Corporation received a unanimous verdict in the District of Massachusetts.  The jury found that ZOLL Medical Corporation’s entire line of defibrillator products, including professional defibrillators used in hospitals and AEDs used by first responders (e.g., emergency medical technicians and firefighters) infringe a suite of five Philips patents. The patents-in-suit relate to the core functionality of defibrillators, including the electric circuitry used to generate the defibrillating shock, and to features such as self-testing which enabled the development of the market for defibrillators outside of the hospital environment, such as in airplanes, at schools, and on golf courses.  In light of Finnegan’s successful defeat of ZOLL’s invalidity challenges to the asserted patents, Philips is entitled to receive damages and running royalties from ZOLL, and it will continue to receive royalties on its existing licenses to the asserted patents from each of its other major competitors.
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.
Finnegan successfully defended York International in an action where American Standard alleged infringement of two patents, one on commercial air conditioner controls and the other on condensers. Trane claimed actual damages of approximately $122 million, together with prejudgment interest, a trebling of damages, attorneys fees, and an injunction. Had Trane fully prevailed in those claims, damages could have topped $400 million. The jury concluded that one of the Trane patents was not infringed, and that both patents were invalid. The court entered American Standard's post trial motion and granted York's fee request. After the court awarded York in excess of $1,500,000 in fees and costs, the case was settled.
We successfully defended VeriSign, Inc. in a lawsuit brought by Leon Stambler. The suit alleged infringement of three patents asserted against the Internet security protocol known as SSL and against VeriSign’s digital certificates and payment gateway technology. Stambler was seeking damages and an injunction, claiming that every Internet communication secured using the industry standard SSL protocol infringed his patents. We obtained a summary judgment on one patent, and the jury returned a verdict of no infringement of two of the Stambler patents.
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.
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.