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Patent Litigation - Settlement

Finnegan represented Zoran in two ITC investigations against MediaTek involving optical disk controller chips, acting as co-counsel with another firm. In Zoran’s affirmative case against MediaTek, the administrative law judge found in favor of Zoran after trial, and the commission ultimately entered an exclusion order against MediaTek’s infringing chips and products of many of its customers. In MediaTek’s case against Zoran, the judge exonerated Zoran’s products after a trial and found one of the two asserted patents invalid. Following issuance of the exclusion order in the first case, we also obtained a favorable ruling before the Customs Service excluding MediaTek’s supposed design-around chip. That series of victories resulted in a very favorable settlement.
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.
Trover Group and Security Center sued Finnegan client Axis Communications in the Eastern District of Texas (EDTX), alleging infringement of patents related to video surveillance systems. Axis, a leading network camera manufacturer based in Sweden, turned to Finnegan for its defense in the litigation. In addition to preparing and filing an inter partes review (IPR) petition with the U.S. Patent and Trademark Office (USPTO) to seek invalidation of the asserted claims, the Finnegan team advanced critical claim constructions previously overlooked by some of the prior defendants. After a successful Markman hearing and ruling on claim construction, letter briefs were filed to request summary judgment briefing. The requests were subsequently granted by the court and, shortly thereafter, a favorable settlement and dismissal of the action was obtained for Axis.
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.
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 successfully represented client Syneron Medical Ltd. against Viora Ltd. and Viora Inc. in a patent infringement action in the E.D. Texas. A year after the suit was initiated and just a few months away from a trial, Viora acknowledged the validity of Syneron’s patent and agreed that for the next 12 years, it will pay Syneron royalties of 7.5% to 15%, depending on the number of U.S. sales of Viora systems that apply vacuum together with radio frequency energy for body contouring, cellulite reduction, skin tightening, and circumferential reduction.
When an organization that certifies medical personnel discovered that its secure certification exam had been compromised, Finnegan acted quickly to minimize the harm by obtaining an expedited certificate of registration from the U.S. Copyright Office and negotiating a favorable settlement for the client, including reimbursement of the organization’s attorneys’ fees and costs of dealing with the compromised exam.
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.
In an international patent dispute involving courts in the United States and Switzerland, Finnegan guided client Swiss Post through a series of significant victories that ultimately led to a global settlement and favorable outcome to Swiss Post. In the U.S. case filed by RPost that involved patent infringement as well as trademark, false advertising, and Lanham act claims, Finnegan prepared and submitted a motion that resulted in all but the patent infringement claims being dismissed in the early stages of the case by the U.S. District Court for the Central District of California. We also worked in concert with counsel in Switzerland against concurrent injunction proceedings that were eventually dropped by RPost after the Swiss court's expert issued an invalidity opinion favorable to Swiss Post. The defense strategy also included filing a reexamination of the RPost patent with the U.S. Patent and Trademark Office, which ultimately rejected all 89 claims in the patent based on prior art identified in our request. In addition, the district court in California agreed to stay the suit until the Patent Office issued a reexamination certificate. When the case resumed, Finnegan obtained critical admissions during the depositions of RPost's officers and expert and subsequently filed a motion for summary judgment on behalf of Swiss Post.  A global settlement agreement between the parties was reached shortly thereafter.
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. 
Finnegan requested inter partes reexaminations of three patents on LCD backlighting technology, which had been asserted against several firm clients in the Eastern District of Texas. Although one of the patents had been successfully litigated to jury verdict against another company, the patent owner settled with Finnegan’s clients after the reexaminations were initiated and the clients ceased participation in the ongoing inter partes reexaminations. Even without the participation of Finnegan’s clients, however, the USPTO adopted the multiple grounds of rejection Finnegan presented in the original requests for inter partes reexamination, requiring the patent owner to narrowly amend all 108 claims of the asserted patents.
Seoul Semiconductor received favorable rulings on several important motions in its U.S. International Trade Commission (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 fifteen percent on the Korea Exchange following the announcement.
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.
Finnegan client, the American Petroleum Institute (API) entered into a settlement agreement—the latest in a series of enforcement actions to protect the integrity of API’s engine oil certification program that Finnegan has handled for API. The lawsuit alleged that Tailor Made Oil and its owners, William and Rebecca Selkirk, had falsely claimed their engine oil had been licensed by API to use the API engine oil quality certification marks that denote an oil meets the stringent API engine oil performance standards. The defendants admitted that they counterfeited API’s engine oil quality certification marks and made false performance claims for Tailor Made-branded engine oil sold to consumers and multiple branches of the military. As part of the settlement, Tailor Made Oil 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. They also agreed to pay API’s costs in this litigation. API initially engaged Finnegan to obtain and test a variety falsely labeled engine oil products manufactured by a number of different businesses. After the test results confirmed that the engine oils did not meet API standards as claimed, Finnegan then launched a multipart, simultaneous attack on these businesses and individuals, filing counterfeiting, trademark infringement, and false advertising claims against twelve defendants in two different federal courts. Finnegan also coordinated efforts to apprise the U.S. Navy of the infringement because our investigation uncovered significant sales of falsely labeled products to naval and marine bases in the United States and abroad. Finnegan was able to obtain multiple preliminary and/or permanent injunctions against the defendants in all of these cases. Ultimately, each of the defendants capitulated and agreed to 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.
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.
We represented our client in a litigation involving business competitors in the supply chain management software field.  We obtained reexamination of five of the asserted patents.  Following a Markman hearing, the parties settled this case.
Finnegan represented Boeing against infringement allegations made by PT Diagnostics in the Eastern District of Texas regarding aircraft maintenance systems patents. The case was swiftly settled, avoiding lengthy litigation.
Finnegan represented Toshiba against infringement allegations made by Wi-LAN regarding integrated circuit technology in Toshiba television sets. The litigation was fast-paced, with trial initially set for a year after the complaint was filed. The case settled favorably just days before the trial was to begin.
We represented Fanuc Robotics in patent enforcement litigation involving paint robots used in the automotive industry, settling the litigation during an appeal to the U.S. Court of Appeals for the Federal Circuit.
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.
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.
Finnegan client GTECH Corporation was sued in the Eastern District of Texas for patent infringement by Flashmark Technologies and various individuals. GTECH sells lottery terminals and tickets, and Flashmark accused the company of infringing a patent related to document cancellation. The court issued its Markman decision, construing the claims in a way that precluded a finding of infringement against GTECH. Following this decision, the parties filed a stipulation of noninfringement.
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 defended TEAC in an ITC case brought by Tandon Industries involving the head assemblies in floppy disk drives. While a temporary exclusion order was granted against all respondents, we later established that TEAC's head assemblies were not covered by the patent. The matter was favorably settled on behalf of TEAC before the hearing on permanent relief, and the noninfringement position we devised was successfully asserted by the remaining respondent. That noninfringement defense was adopted by the judge, the full ITC, and ultimately, the Federal Circuit.
Finnegan represented Toyota, Subaru, and Mazda, who were each sued in Eastern District of Texas by Norman IP Holdings.  The plaintiff alleged infringement of five semiconductor microprocessor patents that it had acquired from Advanced Micro Devices.  The Finnegan team mounted a strong defense against these allegations and put together a compelling invalidity challenge to all the patents.  All three vehicle manufacturers settled on favorable terms.