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Patent Office Examinations

The U.S. Court of Appeals for the Federal Circuit concluded that all claims of a patent relating to packaging for beverage cans are invalid, affirming a decision by the Board of Patent Appeals and Interferences of the U.S. Patent and Trademark Office.  The patent owner had sued various beverage companies for infringement by selling beverages in Fridge Pack-style cartons.  Obtaining a stay of the litigation, Finnegan client MeadWestvaco, a carton supplier, sought inter partes reexamination of the patent and convinced the examiner, BPAI, and then the Federal Circuit of the patent's invalidity.
The Patent Trial and Appeal Board (PTAB) reversed a rejection of all patent claims in an inter partes reexamination filed against an Asetek patent related to pioneering computer cooling technology. Asetek previously asserted the patent in two separate district court litigations in the Northern District of California. Finnegan handled both cases, including one that went to a jury trial decision. Throughout the reexamination, Finnegan argued that the examiner had applied the wrong standard to interpret the claims, which resulted in an overly broad construction. The PTAB judges agreed and reversed the examiner on all issues, thus preserving the patent in full force.
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.
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.
Intertrust Technologies is a leading developer of digital rights management (DRM) solutions and trusted computing technologies that enable Internet trust between people and allow for data privacy and digital security among a wide variety of devices and services. Finnegan prosecutes and manages Intertrust’s entire patent portfolio. We also advise on portfolio development as well as enforcement and defensive strategies for its patents relating to content protection, digital security, data privacy, trusted computing, and rights management—all of which are key components of a connected environment in the 21st century.
We provide in-depth patent prosecution and counseling services for one of the world's leading solar companies. Our service includes preparing patent applications directed to novel silicon materials and processing technologies, specifically geared toward photovoltaic applications.
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.
On behalf of a third-party requester, Finnegan initiated ex parte reexamination proceedings against a patent owned by Ablaise Ltd. The patent had been asserted against numerous companies including several of our clients. The firm’s representation in the reexamination resulted in the PTO finally rejecting claims 1-6 of the patent. The pending reexamination allowed the firm to successfully obtain a stay of the litigation proceedings by Ablaise against Financial Fusion. After reexamination had been granted, the District Court of the District of Columbia also found the same claims invalid, and that decision was affirmed on appeal to the Federal Circuit.
The Patent Trial and Appeal Board (PTAB) reversed a rejection of all patent claims in a patent application related to important neurodiagnostic device features for concussion and other brain abnormality assessments. Finnegan argued throughout the examination that the examiner had interpreted a claim limitation too broadly, and failed to appreciate the advance that the application claimed. After oral argument, the PTAB judges agreed and reversed the examiner's rejection on all grounds.
The U.S. Court of Appeals for the Federal Circuit dismissed for lack of Article III standing an appeal against Finnegan client Wisconsin Alumni Research Foundation (WARF) brought by consumer-advocacy organization Consumer Watchdog (CW). The appeal arose from an inter partes reexamination filed by CW against WARF’s U.S. Patent No. 7,029,913 (the ’913 patent) directed to human embryonic stem cell cultures. Following the reexamination, the Patent Trial and Appeal Board (PTAB) found the ’913 patent claims patentable over the asserted prior art, and CW appealed. On appeal, in a case of first impression, the Federal Circuit agreed with WARF and amici the United States and the U.S. Patent and Trademark Office that CW lacked standing to pursue its appeal. The Federal Circuit concluded that CW’s disagreement with the Board did not invade any legal right conferred by the inter partes reexamination statute and that CW had not identified any particularized, concrete interest in the patentability of the ’913 patent as, for example, a competitor, licensee, or stem-cell researcher. Because CW did not identify any injury in fact flowing from the Board’s decision, the Court dismissed its appeal for lack of standing.
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.
Finnegan client AOL reached a record-setting agreement with Microsoft to receive $1.056 billion for selling over 800 patents and granting Microsoft a license on its remaining 300 patents and patent applications.  We worked closely with AOL over several years to strategically build and strengthen its patent portfolio, towards its monetization goals.  Our strategic patent planning and prosecution services involved reviewing and processing hundreds of transferred cases.  The team analyzed the portfolio and implemented a process for strengthening it—identifying key inventions, studying products and trends in the market, drafting claims with an eye toward enforcement, and conducting interviews with U.S. Patent and Trademark Office examiners to obtain prompt allowances. We also helped AOL identify monetization opportunities and develop offensive and defensive patent strategies.  When AOL’s board of directors authorized a sale process for the portfolio, we worked with AOL’s in-house patent team and top executives and a team of advisors, handling numerous critical tasks and providing guidance throughout the negotiations and bidding process.
Finnegan represented BTG in defending its granted European patent in an appeal by Kreussler against the decision of the EPO to reject its opposition. The patent relates to BTG’s Varithena sclerotherapy foam product for treatment of varicose veins that has recently received regulatory approval in the U.S. During the opposition, we argued that the experimental evidence produced by Kreussler was deliberately misleading. We presented our own evidence showing why the experiments performed by Kreussler failed and how merely following the explicit teaching of the patent would avoid such failure. At appeal, Kreussler was limited to a single prior art document and only a subset of the granted claims was considered to be challenged. At the appeal hearing in surprisingly quick fashion, the EPO denied Kreussler’s grounds of appeal and maintained the patent in its granted form.
WebXchange, Inc. filed suit against FedEx in early 2008, alleging infringement of three patents that WebXchange claimed to generally relate to enabling all transactions over the Internet. The named inventor is Dr. Lakshmi Arunachalam and the asserted patents belong to a portfolio owned in part by WebXchange and in part by a related company named Pi-Net International. Reexamination requests were filed and granted against all of the asserted patents. After nearly four years of litigation, and WebXchange’s ten litigation and prosecution firms, Finnegan secured a dismissal with prejudice of the suit against FedEx, and without the need for claim construction, dispositive motions or a trial.
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.”
In the fields of memory technology, cryptography, and other new ventures, we help Rambus obtain patent rights from patent offices worldwide and have taken significant roles in assessing intellectual property issues as part of acquisition due diligence efforts and other strategic counseling projects. For example, in connection with Rambus’ acquisition of Cryptography Research, Inc. (CRI), Finnegan conducted an extensive IP due diligence. The deal was valued at over $350 million and involved the acquisition of the CRI and its IP assets focused on cryptographic technologies, such as protective measures against differential power analysis and other ways of protecting encrypted systems.
On behalf of Minnesota Mining and Manufacturing Co., we provoked an interference in the PTO between 3M’s patent application and a patent issued to Adhesives Research, Inc. The subject matter was a type of transdermal drug delivery system that uses an adhesive composition, and both parties introduced evidence of actual reduction to practice. We were successful in obtaining an award of priority against the patentee in the PTO and thereafter prevailed in a Section 146 action for review of the PTO decision brought by the losing patentee in the U.S. District Court for the District of Columbia.
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.
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 has guided the development of Rockwell Collins’ portfolio that includes over 50 patents and pending applications directed to control and navigation of manned and unmanned air vehicles. These patents cover technologies ranging from fault-tolerant automatic control systems, single lever power controllers, systems for controlling multi-input/multi-output systems using feedback LTI’zation, image-augmented inertial navigation systems, celestial-image augmented navigation and targeting systems, vertical take-off and landing control systems, systems for autonomously landing aircraft, and systems for improving the efficiency of power generation systems.
As Finnegan’s clients advance innovations that analyze big data, provide back-end storage and data solutions, monitor information from mobile devices and vehicles, and provide user-friendly display interfaces, we help them procure patent protection and build sophisticated portfolios around all related technology areas. We also assist them with developing enforcement strategies and defending against infringement accusations.
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.
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.
We provoked an interference for Boston Scientific against a patent owned by Everest Medical. We were able to prove that the Boston Scientific inventors were the true first inventors and the Board entered a judgment of priority of invention for Boston Scientific. The subject matter was electrosurgical scissors.
Finnegan provided an array of IP services to SRA International, including counseling and patent and IP prosecution for its Automatic Dependent Surveillance-Broadcast (ADS-B), which is a cooperative surveillance technology in which an aircraft determines its position via satellite navigation and periodically broadcasts it, enabling it to be tracked. As part of the comprehensive IP strategy developed for SRA, Finnegan addressed both patents and trademarks for systems and devices associated with ADS-B and other SRA services.
California-based ACTON, Inc. received funding from over 700 backers in over 40 countries through its Kickstarter campaign to start production of its smart electric RocketSkates® roller skates. This fast-moving company, whose innovative personal transportation products blend form and function through cutting-edge designs, has relied on Finnegan to protect its designs in the United States and internationally. After preparing and filing design patent applications in the United States, Finnegan has coordinated the prosecution of counterpart cases by working with its extensive network of international partners across the globe, including in European Union, China, Japan, and South Korea.
Nuvera Fuel Cells retained Finnegan to manage all of the company's IP portfolio assets, which were recently consolidated. Much of the management is focused on the procurement of patents, both U.S. and foreign, directed to various aspects of fuel cell technology.
Toshiba is one of Finnegan’s long-standing clients. The firm prosecutes hundreds of U.S. patent applications per year in various technologies, including semiconductors, integrated circuits, computers, communications, and electronics. Toshiba also turns to us for strategic advice and opinions regarding their extensive patent portfolio.
We assisted our client Elan Pharmaceuticals in obtaining a judgment against Paradissis based on the benefit of the earlier filing date of Elan’s foreign priority application. The subject involved controlled-release pharmaceutical formulation for once-per-day administration.
Finnegan manages portfolios of U.S. and foreign patent applications for Artaic LLC, whose robotic systems create state of the art two-dimensional and three-dimensional mosaics.  The robotic systems use novel combinations of hardware and software for arranging tiles and creating custom designs.
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.
The PTO initiated an interference between a patent application of Finnegan client Genetics Institute and a patent of Stryker Corporation. The PTO awarded judgment to Genetics Institute, thus resolving priority of invention to the disputed subject matter. The interference related to bone morphogenic proteins, which affect bone growth.
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.
We represented a major travel-related company in securing worldwide patent protection on a diverse portfolio of software and business-method–related inventions. We advised and defended the client on various allegations of patent infringement and third-party claims for indemnification against infringement allegations.
Finnegan has represented Boston Scientific in a variety of patent matters since 1995. The work has included prosecution of hundreds of U.S. and foreign patent applications in the medical device area. Finnegan has also represented Boston Scientific in interferences, due diligence investigations of target companies, product freedom-to-operate opinions, reissue applications, and European oppositions.
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.
Finnegan is working with AeroMobil to protect its revolutionary technology in Europe, the United States, and around the world. The work includes invention capture, drafting, and prosecution of new applications. Finnegan’s European and U.S. attorneys work closely to coordinate the application drafting and prosecution strategy with foreign counsel around the world.
Finnegan represented Toyota Aviation, which existed to develop new aircraft for Toyota. Finnegan prepared patent applications for a variety of innovative technologies, including automatic flight planning; displaying airspace information; fabricating a one-piece fuselage; forming a one-piece wing structure; forming filament wound closed-shape structures; primary flight displays; integrated vibration systems for filing and extracting media; chemical debonding agents for composite tooling; media removal devices; pre-filled media volumes for difficult to fill areas; cockpit pilot trays; aircraft circuit breaker assembly; sandwich stiffened composite structures; twin engine powered aircraft to turn single output shaft; and stall recovery systems.
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 represented CSL Behring in an ex parte reexamination and corresponding arbitration proceeding against Baxter and Bayer relating to Factor VIII blood products, securing a favorable settlement for our client.
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 patent owner Philips in reexamination proceedings for a patent covering the JPEG image coding standard. All of the claims challenged by the third-party requester were confirmed valid. The patent has also been asserted by Finnegan for Philips in separate district court litigations against Kodak and Samsung. The district court denied Kodak’s request to stay the Philips case against it pending the reexamination.

Finnegan client SAP received a favorable ruling in the first Patent Trial and Appeals Board (PTAB) decision in a post-grant review of a covered business method patent, a proceeding established as part of the America Invents Act.  The Board found all of the challenged claims of a patent owned by Versata Software unpatentable under section 101 of the Patent Act.  The ruling came just nine months after Finnegan filed the petition on September 16, 2012, the first day the new procedure took effect.

We represented Wyeth against Genentech in an interference that related to the treatment of hemophilia. The successful result we achieved allowed Wyeth to secure patent rights to a protein, known as B-domain deleted Factor VIII, which is used to treat hemophilia.
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.
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. 
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.
Finnegan prepared and filed an ex parte reexamination request for a client that was sued on a patent directed to systems and methods for financial analysis. We worked with the client’s litigation counsel to identify relevant prior art and to develop strategy for the reexamination proceeding. We made sure that the positions we took in the request were consistent with positions taken in litigation. The PTO issued an order granting reexamination noting that substantial new questions of patentability had been raised based on our request.
Finnegan client CRS Advanced Technologies achieved a complete win in the second decision related to covered business method (CBM) patents issued by the Patent Trial and Appeal Board (PTAB) at the U.S. Patent and Trademark Office (USPTO). The Board cancelled every claim that had been pending in a related district court infringement litigation. In the CBM, Finnegan challenged the patent as not meeting the requirements of 35 U.S.C. § 101 and presented arguments in favor of claim cancellation, in what was the second such CBM hearing before the PTAB. The decision capped a decade of litigation for CRS. Frontline Technologies, Inc. initially sued CRS for patent infringement on one patent, which ultimately settled with CRS taking a patent license that Finnegan had negotiated with Frontline. Frontline later terminated the license and sued CRS a second time. The district court subsequently stayed the case pending a reexamination proceeding instituted by the USPTO on a petition filed by Finnegan on CRS's behalf, from which the patent emerged, heavily amended, two years later. Meanwhile, another Frontline patent issued and was asserted against CRS but, after a third party requested reexamination of that patent, Frontline granted CRS a covenant against suit and dropped that second patent from the litigation. The case continued for three more years on the reexamined patent, allowing Finnegan to file a CBM petition on the first day that procedure became available. The PTAB granted the petition, and a month later the district court again stayed the case, which was then in the final stages of pre-trial submissions. The Board agreed with CRS that the claims were unpatentable, and the related district court proceeding has since been dismissed with prejudice with the consent of the parties.
Finnegan works with clients developing surveillance and home monitoring technologies, where images and videos are captured and transmitted for real-time viewing and monitoring anywhere there is Internet access. We help these clients build portfolios around all technology areas in surveillance, defend against infringement accusations, and perform risk analysis before products are launched in the market.