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Patent Litigation

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.
The Federal Circuit unanimously affirmed a district court judgment of willful infringement and a damages award of approximately $290 million, plus interest, as well as the entry of a permanent injunction against Microsoft in favor of Finnegan client i4i, a Canadian software company that developed tools for working with documents containing XML markup.  The court held that Microsoft had waived certain arguments by not properly objecting at trial, that the factual issues resolved by the jury were supported by substantial evidence, and that all of the district court’s legal conclusions were correct.  The Supreme Court then issued a unanimous decision in i4i’s favor, rejecting Microsoft’s position that the appropriate standard of proof is “preponderance of the evidence” and holding instead that invalidity must be proven by “clear and convincing” evidence.
Finnegan convinced the Federal Circuit to wipe out a $45 million judgment against Ericsson.  Harris Corporation had sued Ericsson in the Northern District of Texas on a patent related to technology for correcting intersymbol interference, which can arise during use of communications equipment such as cell phones.  The Federal Circuit agreed that the district court misconstrued the claims, and erred in its calculation of the appropriate royalty rate.  The Federal Circuit also ruled against Harris on its cross-appeal, which concerned the award of enhanced damages.
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.
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.
Jerome Lemelson had brought an infringement suit alleging that Mattel’s “Hot Wheels” toys—one of the most commercially successful toys in history—infringed one of his many patents. A jury verdict of infringement resulted in a judgment of over $70 million in damages and interest. Representing Mattel on appeal, we convinced the Federal Circuit that Mattel’s “Hot Wheels” toys did not infringe Lemelson’s patent as a matter of law. The court concluded that no reasonable jury could have found the patent claim to be both valid over the prior art and infringed, and therefore reversed the judgment against Mattel in its entirety.
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 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.
A major European research institute, represented by Finnegan, has been embroiled in a three year dispute with a major U.S. pharmaceutical company involving patent inventorship and contract interpretation issues.  The three-member arbitration panel has ruled in favor of our client which is now entitled to increased license fees from the pharmaceutical partner.
Xerox Corporation called on Finnegan after a district court found that 3Com/Palm’s line of personal digital assistants (commonly called “Palm Pilots”) did not infringe its patent. We secured a reversal of the district court’s claim construction, which led to a finding of infringement and entry of judgment for Xerox on remand. In a second appeal, we succeeded in obtaining an affirmance of the infringement finding.
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).
The International Trade Commission issued its final determination in favor of Finnegan clients Nutrichem Co. and Jiangxi Heyi Chemicals Co.--both from China--and their co-respondents Summit Agro USA and Summit Agro North America Holding Corporation, denying complainant FMC Corp.’s request to exclude their products from the U.S. market. In Sulfentrazone, Sulfentrazone Compositions, and Processes for Making Sulfentrazone, the ITC found no violation. Specifically, the ITC found no infringement by Nutrichem or Heyi, invalidity of the asserted claims, and no domestic industry by FMC. This was the second time the ITC found in favor of Nutrichem and Heyi, having denied FMC’s request for temporary relief a few months earlier, similarly finding that FMC had not shown it was likely to succeed on the merits: the ITC held, among other things, that FMC was not likely to prevail on infringement or domestic industry and that the claims were likely invalid.
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.
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 works with client AOL in developing and protecting its patent portfolio related to technologies that distribute content, products, and services over the Internet. In addition to representing its interests in patent litigation, we also provide AOL with strategic patent planning and prosecution services. We oversaw the development of an 800-patent portfolio that sold for $1.056 billion. Finnegan analyzed the AOL 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 (USPTO) examiners to obtain prompt allowances.
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.
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 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 Southern District of New York (Judge Paul A. Crotty) ruled in favor of Finnegan client AbbVie, in a declaratory judgment action against its licensor The Mathilda and Terence Kennedy Institute of Rheumatology Trust (“Kennedy”). AbbVie brought this action because Kennedy claimed AbbVie would owe royalties on certain sales of its drug Humira®, despite AbbVie's assertion that the Kennedy patent at issue was invalid. Humira® is used by hundreds of thousands of patients to treat diseases such as rheumatoid arthritis and Crohn’s disease, and had revenues of more than $9 billion worldwide in 2012. After a four-day bench trial, the court held all of the claims of the Kennedy patent at issue were invalid for obviousness-type double-patenting. The court entered final judgment declaring all the claims at issue invalid, and declaring AbbVie the prevailing party and awarding costs.
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.
The district of Delaware (Judge Stark) ruled in favor of firm client Galderma Laboratories, L.P., in a Hatch-Waxman litigation against generic defendant Tolmar, Inc., on September 11, 2012. (CA-No. 10-45-LPS). The drug involved was Differin® Gel 0.3%, an acne medicine containing the active ingredient adapalene 0.3%. The court held the claims of all four patents litigated at trial valid, enforceable, and infringed. In the words of the Court, “[t]rial was devoted almost entirely to Tolmar’s challenges to the validity and enforceability of Galderma’s patents-in-suit. Tolmar has failed to meet its burden on any of these contentions.” The court entered final judgment on September 24, 2012, (1) ordering the FDA not to approval Tolmar’s ANDA for generic adapalene 0.3% until after the expiration of the patents litigated at trial (March 12, 2023), including any periods of regulatory exclusivity, and (2) enjoining Tolmar from marketing a generic adapalene 0.3% product during the term of the litigated patents.
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.
The U.S. Court of Appeals for the Federal Circuit found in favor of Finnegan client DuPont, affirming a district court’s grant of JMOL that plaintiff Novozymes’s patent failed to comply with the written description requirement of 35 U.S.C. § 112 and was thus invalid as a matter of law. Novozymes filed a patent application that disclosed vast numbers of prophetic alpha-amylase proteins without any guidance pointing to which of the proteins actually had advantageous properties. Then, some ten years later, in a continuation application, Novozymes claimed a very particular protein with certain properties that was not in any way highlighted in the original application. The Federal Circuit held that the original application did not describe the variants later claimed in the issued patent, noting in its decision that a patent “is not a reward for the search, but compensation for its successful conclusion.”
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.
Judge Leonard Davis of the Eastern District of Texas issued an order granting judgment in FedEx’s favor and invalidating claims of a patent asserted by BarTex Research, LLC.  BarTex alleged that FedEx’s shipping labels infringed its patent related to bar codes.  FedEx won a favorable claim construction ruling by Magistrate Judge John Love that was later adopted by Judge Davis.  Thereafter BarTex conceded that the asserted claims were invalid in view of the claim construction.  While FedEx’s motion for summary judgment of invalidity was pending before Judge Davis, BarTex requested that Judge Davis issue an order granting judgment in favor of FedEx on the invalidity grounds raised in FedEx’s summary judgment motion.  The judgment in favor of FedEx was upheld on appeal by the U.S. Court of Appeals for the Federal Circuit.  Finnegan also represents FedEx Corporation in an inter partes reexamination of the same BarTex patent.  Although the reexamination has not yet concluded, the Patent Office has rejected all claims of BarTex’s patent.
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.
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 U.S. Court of Appeals for the Federal Circuit, in an en banc opinion, confirmed the existence of a separate written description requirement that ensures that inventors have actually invented and described the subject matter claimed in their patents. The decision reversed a jury verdict against Finnegan client Eli Lilly and Company.  Lilly had previously been found liable for infringing Ariad’s ’516 patent, and the jury had awarded Ariad a multi-million dollar verdict.  The en banc opinion held that the asserted claims of the ’516 patent failed to satisfy the written description requirement of section 112 and were thus invalid. 
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.
The U.S. Court of Appeals for the Federal Circuit affirmed a district court’s claim construction and grant of summary judgment of noninfringement in favor of Finnegan client Pergo, L.L.C. on five patents directed toward systems and methods for joining flooring panels.  The affirmance is the culmination of a protracted litigation initiated over a decade ago by patent holder and competitor Välinge, AB (and its licensees).  The court affirmed per curiam without opinion under Rule 36, resulting in a complete victory for Pergo.
The Federal Circuit gave Finnegan client Lawson Software, Inc. a nearly complete win against ePlus, Inc., which had sued Lawson in district court, seeking $24 million in damages and an injunction against Lawson’s software sales. The district court had found that Lawson infringed five claims of two different patents and had granted a permanent injunction.  In the appellate case, the Federal Circuit determined that ePlus was not entitled to any damages, affirming the district court’s findings that ePlus’s expert report was faulty and that striking damages was an appropriate sanction. The Federal Circuit reversed the district court’s findings of infringement on four of the five patent claims, finding two invalid and two not infringed, resulting in Lawson’s main software product being clear of any infringement claim.
Finnegan client FedEx was accused of patent infringement in two separate litigations in the Northern District of California, where IpVenture asserted two related patents directed to processes used in connection with tracking packages with the aid of a device called “SenseAware,” which enables users to track the location and certain conditions of related packages. On behalf of FedEx, Finnegan filed an inter partes reexamination on one patent, and an inter partes review (IPR) on the other at the U.S. Patent and Trademark Office (USPTO). The USPTO granted both petitions, and the Patent Trial and Appeal Board (PTAB) affirmed the rejection of all claims of the reexamined patent and invalidated all claims of the second patent during the IPR. The district court cases were stayed during the USPTO proceedings and during IpVenture’s appeal to the Federal Circuit, which affirmed both of the PTAB’s decisions.
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.
Finnegan client POSCO won a petition for mandamus in the U.S. Court of Appeals for the Federal Circuit, successfully challenging a district court ruling modifying the protective order to permit use of highly confidential U.S. discovery materials in foreign litigations. The Federal Circuit concluded that, when deciding whether to modify the protective order in such a manner and circumstance, the district court should have considered the factors set out in the U.S. Supreme Court’s decision in Intel Corp. v. Advanced Micro Devices, Inc. The Federal Circuit granted POSCO’s mandamus petition, vacated the district court’s order permitting foreign cross-use of POSCO’s discovery materials, and remanded. Finnegan represented POSCO both in the mandamus petition and in the underlying district court litigation.
The U.S. Court of Appeals for the Federal Circuit reversed a district court’s grant of JMOL for noninfringement, thereby reinstating the jury verdict finding that Microsoft infringed Finnegan client Uniloc USA’s patent.  The Federal Circuit also affirmed the jury’s finding that Microsoft failed to prove Uniloc USA’s patent is invalid.  Although the Federal Circuit also vacated the damages award as being based on a methodology the Court found to be faulty, with there no longer being any question about Microsoft’s infringement, Uniloc gained another opportunity to obtain damages from Microsoft.
The U.S. Court of Appeals for the Federal Circuit reversed a district court’s ruling of invalidity for lack of enablement/utility of Finnegan client, Eli Lilly and Company’s method of use patent on Strattera® and upheld the court’s rulings of validity on other grounds and the judgment of infringement in a case involving numerous generic drug manufacturers. The Federal Circuit’s ruling in Lilly’s favor provides protection for Lilly’s Strattera® franchise through May 2017.
The U.S. Court of Appeals for the Federal Circuit reversed the International Trade Commission’s claim construction of U.S. Patent No. 5,470,257 (entitled “Radial Compression Type Coaxial Cable End Connector”) and its related finding that the Complainant had not established the technical prong of the domestic industry requirement of Section 337.  In its opinion, the Federal Circuit held that the Complainant, our client John Mezzalingua Associates, Inc. (d/b/a PPC, Inc.), had established a Section 337 violation (importation, infringement, validity, and domestic industry) and remanded to the ITC for further findings on remedy and bonding.
The U.S. Court of Appeals for the Federal Circuit upheld a judgment that Home Depot U.S.A., Inc., literally and willfully infringed Finnegan client Mr. Michael S. Powell’s patent covering radial arm saw guards. Specifically, the Federal Circuit affirmed the Southern District of Florida court’s claim construction and the court’s denial of Home Depot’s motion for judgment as a matter of law on the issues of infringement, willfulness, and damages. In addition, the Federal Circuit affirmed the district court’s holding that the patent was not unenforceable for inequitable conduct, as well as the court’s award of enhanced damages and attorney fees.
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.
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." 
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 represented GlaxoSmithKline (“GSK”) in various patent infringement litigations protecting GSK’s Paxil® antidepressant drug against many generic drug manufacturers that filed ANDA suits seeking to sell generic versions of the drug. Finnegan worked with GSK’s antitrust counsel to settle multiple litigations and minimize their antitrust risk. After one of those settlements, the generic drug manufacturer’s API supplier brought an antitrust suit challenging the settlement. Finnegan worked with GSK’s antitrust counsel to successfully defeat the antitrust claim in a motion to dismiss strongly upholding the right of patent owners to settle ANDA litigations. Finnegan also worked with GSK’s antitrust counsel in defending related class action antitrust suits brought by other litigants based on patent infringement litigations.
Andrx Pharmaceuticals, Inc. (“Andrx”) filed suit against Finnegan client Elan Corporation PLC, alleging that Elan violated the federal antitrust Sherman Act and various Florida antitrust statutes by entering into a settlement agreement in an Abbreviated New Drug Application (“ANDA”) patent infringement litigation that Elan brought against another company, and by initiating an ANDA litigation against Andrx relating to the same patent. Finnegan obtained judgment on the pleadings in Elan’s favor on all issues at the outset of the case. The U.S. Court of Appeals for the Eleventh Circuit affirmed the majority of the holdings, including that the Noerr-Pennington doctrine shielded Elan from Andrx’s patent misuse claims relating to Elan’s assertion of its patent against Andrx. The Eleventh Circuit remanded the settlement agreement holding for further proceedings. Andrx ultimately agreed to dismiss the claim.
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 a litigation brought by Rolls-Royce against Finnegan client United Technologies Corporation, the Eastern District of Virginia entered the parties' stipulation of dismissal of all claims and counterclaims with prejudice. The court had earlier entered summary judgment that UTC did not infringe Rolls-Royce's patent and entered final judgment, ending Rolls-Royce's quest for an injunction and almost $4 billion in damages plus increased damages for alleged willful infringement. The ruling stemmed from the court's adoption of UTC's claim construction, namely that the claims of Rolls-Royce's patent are limited to jet engine fan stages having fan blades with only three regions of sweep, while UTC's have four.  After the court entered final judgment, the parties settled the case, stipulating to the dismissal with prejudice. 
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.
The Trademark Trial and Appeal Board granted judgment in favor of Italian design house Emilio Pucci (subsidiary of luxury goods conglomerate LVMH Moët Hennessy), finding that the defendant’s mark EMIDIO TUCCI for apparel and accessories is confusingly similar to the client’s long-used EMILIO PUCCI mark for fashion products. In response to submissions showing extensive use of EMILIO PUCCI since the early 1950s on a wide variety of clothing and other goods, the Board found that the mark had developed “substantial renown” in the field of apparel and accessories and become a “well-established brand.” Pucci defeated defendant’s argument that the expensive nature of Pucci’s products limited its renown to a small group of sophisticated purchasers (mostly women) by submitting extensive evidence showing broad public recognition of the mark.
Finnegan successfully represented Eli Lilly in a litigation against Genentech and the Regents of the University of California (UC) regarding Eli Lilly’s Humulin® insulin product, the first biotechnology product to be marketed in the United States. We obtained judgment, affirmed on appeal, that UC’s patents were either not infringed or invalid under the written description requirement of 35 U.S.C. § 112.
In response to litigations brought by CreateAds for a computerized “visual design” solutions patent, Google and Yahoo! asked Finnegan to file an inter partes review (IPR) petition to challenge the claims of the asserted patent. The petition addressed all 20 claims of the patent, based on seven different grounds of prior art, and included a declaration from the author of a prior art Master’s Thesis Paper deposited in the MIT library. The IPR was coordinated with the underlying CreateAds consolidated litigations, in which Finnegan also played a significant role in briefing a summary judgment motion to dispose of the patent under 35 U.S.C. 101. After limited discovery and twice rejecting CreateAds’ claim construction proposals, the Patent Trial and Appeal Board (PTAB) issued a final written decision finding all 20 claims unpatentable in view of the prior art and maintaining all seven instituted grounds advanced by the Finnegan team.
Finnegan client Health Diagnostic Laboratory, Inc. (HDL) served Boston Health Diagnostics Corporation with a complaint in the Eastern District of Virginia, alleging infringement of its patent directed to methods of predicting the risk of developing diabetes based on a model HDL developed using unique biomarker combinations. Boston Heart immediately petitioned the Patent Trial and Appeal Board (PTAB) to institute an inter partes review (IPR) challenging HDL’s asserted claims as anticipated and obvious in view of several prior art references. Finnegan secured a non-institution decision for HDL through arguments raised in its patent owner’s preliminary response that Boston Heart failed to demonstrate the prior art taught the diagnostic model using the claimed biomarker panels. The PTAB denied institution on all grounds, concluding that the petition failed to adequately explain how the cited references disclose the model as claimed.
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.
Finnegan defended Korea-based client SK Innovation (SKI) in a patent infringement suit against plaintiff Celgard LLC in the Western District of North Carolina, where Celgard is located. After extensive jurisdictional discovery, the court granted SKI’s motion to dismiss for lack of personal jurisdiction and denied Celgard’s motion for preliminary injunction. Finnegan also obtained relief from the court for SKI after it was discovered that Celgard sent SKI confidential information to Celgard’s Korean counsel in unrelated Korean proceedings between the parties. The relief included prohibition of further transmission of SKI confidential information to Celgard’s Korean counsel and a bar against each of Celgard’s Korean attorneys who viewed SKI confidential information from further work on the Korean proceedings. Celgard appealed the district court’s dismissal of the case to the Federal Circuit. Finnegan represented SKI in the appeal as well. After full briefing and an oral argument, the Federal Circuit affirmed the district court’s dismissal of the case, securing SKI’s victory on the issue of personal jurisdiction.
Bear Creek Technologies, Inc. filed suit in the Eastern District of Virginia against Finnegan client Verizon, along with numerous other major telecommunications companies, alleging infringement of a patent that Bear Creek claimed generally related to Voice-over-Internet Protocol (VoIP) technology. After a Markman hearing, the court transferred the case to the District of Delaware for consolidated pretrial proceedings with the other defendants in a multi-district litigation (MDL). The Delaware court decided to stay the proceedings pending a third-party reexamination of the patent-in-suit. After nearly five years of litigation, Finnegan secured a dismissal of the suit against Verizon with prejudice, without the need for dispositive motions or a trial.
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.
The Central District of California entered judgment invalidating all claims that Lochner Technologies—a non-practicing entity—had asserted against Finnegan client Toshiba America Information Systems, Inc.  On summary judgment and before the parties engaged in costly discovery, the judge found the claims invalid for lacking a sufficient written description and for failing to claim what the inventors regarded as their invention.  The court previously issued a favorable claim construction ruling that eliminated most accused products from the case.  The invalidity ruling disposed of the remaining issues.  Initially, Lochner had asserted its patent against twenty-two defendants.  Most settled, but Toshiba and Vizio, Inc. fought until the invalidity ruling brought the district court case to a close.
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 client Fidelity National Information Services Inc. (FIS) challenged two check-imaging patents owned by DataTreasury in covered business method (CBM) reviews at the Patent Trial and Appeal Board (PTAB), and successfully defended the PTAB’s decisions invalidating those patents on appeal to the Federal Circuit. DataTreasury’s infamous “Ballard” patents were called out by name as troublesome business method patents by Congress when it wrote the CBM statute. The PTAB, in its final written decision (FWD), said the two patents—directed to transferring information from one location to another where the transferred information is unreadable without a secret decoder key—cover abstract ideas that, in light of the Supreme Court’s decision on patentability in Alice Corp. v. CLS Bank Int’l, are too abstract to be patentable. The PTAB also held that many of the claims lacked sufficient written description for encrypting subsystem identification information and thus fail to meet the rigors of 35 U.S.C. § 112. The Federal Circuit affirmed the PTAB’s decision with a Rule 36 judgment, which the Supreme Court declined to review on certiorari. Finnegan represented FIS in the CBM challenges, in DataTreasury’s appeal of those CBM challenges, and also in mandamus petitions to the U.S. Court of Appeals for the Federal Circuit, resulting in a successful stay of the underlying litigation in the Eastern District of Texas.
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. 
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.
Administrative Law Judge Theodore Essex of the U.S. International Trade Commission issued an initial determination in favor of Finnegan clients Pioneer Corporation and Pioneer Electronics (USA) Inc., holding that Pioneer does not infringe any claim of the four patents asserted by Honeywell International. Judge Essex also ruled that the asserted claims in three of Honeywell’s patents are invalid. The technology at issue involves GPS navigation units. Three of Pioneer’s competitors were parties to this ITC investigation but settled with Honeywell before trial. After presiding over a week-long trial in June and evaluating the parties’ post-trial submissions, Judge Essex issued a detailed 172-page opinion absolving Pioneer of any liability in connection with this litigation.
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.
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.
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.
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.
The U.S. International Trade Commission (ITC) issued a final determination in favor of Finnegan client SKC Kolon PI, Inc. and SKC, Inc. (collectively "SKC").  Kaneka Corporation filed a complaint against SKC in the ITC, alleging unfair trade practices and infringement of four patents directed to polyimide films.  Administrative Law Judge Robert K. Rogers, Jr. found all of the asserted claims to be not infringed, invalid, and/or failing to meet the domestic industry requirements, and therefore, no violation of Section 337 of the Tariff Act of 1930, as amended.  After a partial review, the Commission affirmed Judge Rogers' decision.
An administrative law judge with the U.S. International Trade Commission (ITC) found that cold cathode fluorescent light ("CCFL") inverter circuits produced by Finnegan client Monolithic Power Systems do not infringe a patent owned by complainant O2 Micro.  O2 Micro had previously withdrawn infringement allegations based on three other patents earlier in the case.  The ALJ also found that laptop computers and flat screen monitors incorporating the accused MPS chips sold by Finnegan clients ASUSTeK Computer and ASUS Computer International did not infringe the same patent.  Further, the ALJ found that O2 Micro's own products do not practice the patented technology and, as a result, there was no domestic industry, a necessary showing in an ITC case.  MPS and its customers were, therefore, found to have not violated Section 337.
When its right to bring certain vehicles into the United States was challenged, Toyota needed fast and decisive relief. We represented Toyota before the ITC and argued that there was no violation of Section 337 or patent infringement. The ITC adopted trial findings of patent invalidity and no infringement, and then terminated the investigation, clearing the way for more hybrid vehicles in the United States.
Finnegan represented Mitsubishi Heavy Industries, Ltd. and Mitsubishi Power Systems America, Inc. against General Electric in a U.S. International Trade Commission investigation. The ITC ruled in favor Mitsubishi, terminating a Section 337 investigation based on a General Electric complaint alleging patent infringement by Mitsubishi’s 2.4 Megawatt variable speed wind turbines. The Commission ruling of no violation overturned an earlier finding by an ITC administrative law judge that two of GE’s patents had been violated.
The U.S. Court of Appeals for the Federal Circuit upheld a jury decision in the U.S. District Court for the District of Arizona in favor of Finnegan client DuPont Air Products NanoMaterials, LLC (DA NanoMaterials), holding that various tungsten Chemical Mechanical Planarization (CMP) slurries sold by DA Nanomaterials do not infringe Cabot Microelectronic’s patents.  Tungsten CMP is a process used in semiconductor manufacturing.
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.
Finnegan represented an LG Electronics (“LGE”) subsidiary involved in iris recognition technology in a patent infringement case. The patentee accused LGE of violating a license agreement, misappropriating trade secrets, and infringing the patentee’s U.S. patents. Both sides filed antitrust and unfair competition counterclaims. The patentee also filed foreign corrupt practices act claims after losing several large foreign public tenders involving the technology to LGE. Finnegan was lead counsel on both the intellectual property (patent and trade secret) and the antitrust and unfair competition claims, and secured an extremely favorable resolution of all claims, enabling LGE to purchase the critical software and continue using the underlying technology.
Finnegan successfully defended AOPA in the District of Oregon against the assertion of patents for computerized flight planning and web-based flight navigation. We obtained a swift dismissal of the entire case, avoiding lengthy litigation and licensing attempts by a notorious non-practicing entity (NPE).
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 its highly anticipated Bilski v. Kappos decision, issued on June 28, 2010, the U.S. Supreme Court overturned the U.S. Court of Appeals for the Federal Circuit's "machine−or−transformation" test, which required that a patentable process either be tied to a machine or apparatus or involve a transformation of a particular article into a different state or thing.   The Court also affirmatively recognized that "business methods" are not categorically excluded from the scope of 35 U.S.C. § 101.   The decision was the culmination of Finnegan’s efforts on behalf of the applicants in In re Bilski, which began with the Supreme Court granting Finnegan’s petition for a writ of certiorari filed in June 2009.  The petition sought to overturn a decision issued on October 30, 2008, by the Federal Circuit which set forth a test requiring that a patentable process either be tied to a machine or apparatus or involve a transformation of one thing into something else.  While the Supreme Court affirmed the rejection of the Bilski business method patent application, its decision overturning the Federal Circuit’s machine-or-transformation test was a victory for patents on business method and software.  Finnegan made the oral argument before the Court on November 9, 2009. 
Finnegan represented Metropolitan Regional Information Systems, Inc. (“MRIS”) against antitrust counterclaims to MRIS’s claims for trademark and copyright infringement related to real estate listings. Finnegan successfully obtained summary judgment of the original antitrust counterclaims and the amended counterclaims.
Loramax filed patent infringement suits in the Eastern District of Texas against fifty companies, claiming that virtually any company email distribution service infringed an expired patent Loramax obtained. After Finnegan pressed an invalidity defense, which included an inter partes review (IPR), and filed motions to dismiss asserting invalidity under Section 101, Loramax voluntarily dismissed its claims against FedEx.
One year after accusing longstanding Finnegan client FedEx of patent infringement in the Eastern District of Texas, non-practicing entity Catharon IP dismissed its claims against FedEx with prejudice. Catharon IP claimed that its patent covered a common use of Javascript in today’s websites. The dismissal came after Finnegan attorneys filed two IPRs challenging the validity of Catharon’s patent.
When Walgreen Co. faced a damage award of nearly $20 million, including prejudgment interest, for infringement of a patent on a “head chair,” the company turned to Finnegan. Although Walgreen had sold only $220,000 of the product, a jury awarded over $1 million in lost profits and another $10 million in future lost profits, which grew to nearly $20 million with interest. On appeal, the Federal Circuit agreed with our argument that the jury award, and the expert testimony on which it was based, was so speculative that it could not stand. The court granted a remittitur, reducing the damage award to $220,000—the amount of actual sales—and further reversed the award of prejudgment interest as it was based on future sales that had not occurred.
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.
Nearly a year after accusing firm client FedEx of patent infringement in the U.S. District Court for the Central District of California, Big Baboon, Inc. of Sunnyvale, California, agreed to dismiss its claims against FedEx.  The stipulated dismissal came after Finnegan attorneys persuaded Big Baboon that its accusations were baseless. 
Finnegan represented a computer graphics company in an action filed in the District of Delaware against defendants Advanced Micro Devices, Inc., ATI Technologies ULC, and ATI International SRL. The plaintiff sought a declaratory judgment, including damages, on defendants’ claims to ownership of or license to certain valuable patents related to high-performance graphics processing for video games and other graphics intensive software applications. The court ruled on summary judgment that the plaintiff owns the disputed patents, and that the defendants have no ownership interest or express license to the disputed patents.
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 successfully defended U.S. Philips Corporation against allegations that it had misused its patents relating to CD discs. After winning the jury trial, the parties tried the equitable defenses. The court rejected the infringer’s arguments that Philips engaged in improper tying of essential and nonessential patents in a patent pool.

Finnegan assisted Philips in another series of patent infringement litigations stopping unauthorized production of patented DVDs and CDs. The defendants alleged misuse by tying and bad faith litigation. The cases settled with the infringers dropping their misuse claims and agreeing to pay damages to Philips. Additionally, in related cases, Finnegan worked with Philips’s antitrust counsel in defeating the antitrust claims by motions.
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.
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.
On behalf of Crucible Materials, we filed an ITC patent infringement case involving industrial neodymium-iron-boron magnets and prevailed against all eight respondents. We obtained a combination of consent orders, cease and desist orders, limited exclusion orders, and general exclusion orders against Chinese competitors. The general exclusion order prohibits all of Crucible’s foreign competitors from importing infringing magnets, regardless of whether they were parties to the ITC case. We later brought an enforcement action that resulted in civil penalties of $1.5 million against several respondents. The civil penalty was affirmed on appeal.
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.
The U.S. International Trade Commission (ITC) has found Nvidia Corp. and several of its customers liable for infringing three Rambus Inc. patents. In a final determination, the ITC affirmed Administrative Law Judge Theodore Essex's ruling that three Rambus patents were valid and infringed. The commission issued limited exclusion and cease-and-desist orders barring Nvidia and other respondents from importing infringing products for sale in the United States.
The U.S. Court of Appeals for the Federal Circuit ruled in favor of Finnegan client Research Corporation Technologies, Inc., affirming the patentability of RCT’s methods for halftoning digital images.  The decision is particularly important because it is the Federal Circuit's first dealing with patentable subject matter under 35 U.S.C. § 101 since the Supreme Court’s landmark Bilski v. Kappos decision.  Chief Judge Rader, writing for a unanimous panel, reversed the district court’s ruling that the claimed halftoning methods were invalid under section 101.  Instead, he wrote, “the invention presents functional and palpable applications in the field of computer technology.”  Following the Supreme Court’s Bilski decision, the Federal Circuit explained that the coarse filter of section 101 excludes only laws of nature, physical phenomena, and “manifestly” abstract claims, and that courts should focus primarily on the patentability criteria of the rest of the Patent Act.
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.
In an ITC Section 337 action between Finnegan client LG Electronics and its competitor Whirlpool, the ITC denied all of Whirlpool’s claims for relief, resulting in a total victory for LG Electronics.  Judge Theodore R. Essex had previously ruled that LG refrigerators are not covered by Whirlpool's U.S. Patent No. 6,082,130.  The ITC later revised the claim interpretation of the ‘130 patent and asked the judge to reconsider the remaining disputed issues based on its new interpretation.  Judge Essex applied the ITC’s interpretation and again found that the ‘130 patent does not cover LG refrigerators and also concluded that all but one of the asserted claims is invalid.  Whirlpool originally claimed that five of its patents covered LG refrigerators.  During the course of the case, Whirlpool withdrew four of those patents prior to the hearing.
When the developer of a wireless-networking technology found that its relationship with a joint venture partner had failed, Finnegan represented the developer in a copyright litigation in the Eastern District of Pennsylvania.
In a Federal Circuit appeal on behalf of client Digital Control, Inc. (DCI), Finnegan was able to obtain a reversal of the district court’s judgment. The reversal paved the way for a favorable settlement, and it also resolved an important issue on what is “material” information in prosecuting patent applications in the PTO. The patents at issue in the case were fundamental to DCI’s business and involved electronic locating equipment for horizontal drilling devices.
The Federal Circuit handed Finnegan client NOVA Chemicals a victory on appeal, finding Dow Chemical’s patent claims to be invalid. In a prior appeal, the Federal Circuit held that NOVA had infringed Dow’s ethylene polymer patent claims and that NOVA had not established that those claims were invalid for indefiniteness. In a subsequent appeal concerning the district court’s award of supplemental damages, the Federal Circuit held that an intervening Nautilus decision by the Supreme Court had changed the law of indefiniteness and that the prior panel had applied a test for indefiniteness that had been repudiated by the Supreme Court. Finding that Dow’s patent claims were indefinite under the correct test, the Federal Circuit reversed a $30 million supplemental damage award and dismissed Dow’s cross-appeal for enhanced damages as moot.
After a jury verdict against Conair for infringement of a patent on a safety mechanism in a hairdryer, the district court increased the damages and entered a judgment of over $46 million. On appeal, Finnegan achieved a total victory for Conair by obtaining a reversal of the infringement finding in the Federal Circuit.
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 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.
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.
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.
We defended Topcon Instrument against a multipatent ITC case brought by Cambridge Instruments involving devices for diagnosing glaucoma. In a one-week trial held just two months after the case began, we established that Topcon’s instruments were not covered by the patents, and the ITC judge thus denied Cambridge Instruments’ motion for temporary relief.
Finnegan successfully represented client DuPont Nutrition Systems in litigation involving generically engineering alpha-amylases proteins, enzymes used in a variety of industries to prepare commercial products like ethanol, sweeteners, and laundry detergent. Novozymes sued DuPont for infringing its patent and, on appeal, we successfully obtained a judgment that Novozymes’ patent was invalid under 35 U.S.C. § 112 for failing to comply with the written description requirement.
The district court had granted summary judgment against firm client Origin (a subsidiary of Guidant Corp.) and a jury awarded nearly $13 million in damages, finding that the infringement was willful. The matter involved infringement of a patent on a method for using a balloon to create a space for surgery. On appeal, the Federal Circuit agreed with our interpretation of the patent claims and vacated both the judgment of infringement and the jury’s verdict that the infringement was willful.
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.
In an important decision for companies bidding on government contracts or supplying bidders on government contracts, Judge Freda L. Wolfson of the District of New Jersey issued an order granting summary judgment of immunity from infringement in favor of Finnegan client Accuride Corporation.  Accuride was accused of infringing a patent on an automotive wheel for use with an onboard tire inflation system.  Accuride supplied the accused wheel to companies bidding on a U.S. Army solicitation for a military all-terrain vehicle (M-ATV) intended to better protect U.S. soldiers, sailors, airman, and marines in Afghanistan from roadside bombs and improvised explosive devices (IEDs).  In a detailed 29-page opinion, Judge Wolfson found that the U.S. Government had implicitly authorized and consented to liability for any potentially infringing onboard tire inflation system when wheels were supplied in the bidding phase of the M-ATV military contract.  Specifically, Judge Wolfson found that Accuride was immune from any liability for patent infringement under 28 U.S.C. § 1498(a), which is the federal statute that provides that claims for patent infringement occurring in government contracts must be against government and must be brought in the Court of Federal Claims.
In this case involving a design patent, Chef’n Corporation accused Finnegan client Trudeau Corp. of infringing a patent for a silicone vegetable steamer. The Western District of Washington granted summary judgment of no infringement in favor of Trudeau. As part of the order, Judge Pechman also granted Trudeau’s motion to strike the declarations of two industry experts produced by Chef’n. Earlier in the case, Trudeau successfully defeated Chef’n’s motion for a preliminary injunction.
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. 
The Washington University in St. Louis (WashU) filed a suit in the District of Delaware alleging that Finnegan client Wisconsin Alumni Research Foundation (WARF) had breached an inter-institutional agreement between the two parties, which pertained to a jointly owned pharmaceutical method of use patent for the treatment of renal osteodystrophy. Because the inter-institutional agreement between WashU and WARF was executed in 1995 and the patent was licensed to Abbott in 1998, Finnegan moved for summary judgment and dismissal on the grounds that WashU’s contract claims were barred by the applicable statues of limitations. The presiding judge dismissed the case, finding no evidence of inequitable, unfair, or misleading conduct on the part of WARF in its interactions with WashU, and that all claims were time-barred by the applicable statutes of limitations.
Titan Wheel faced a preliminary injunction that had far-reaching and negative implications to its core business. Patent owner Vehicular Technologies Corporation prevailed at the district court and sought to prohibit Titan from selling its EZ locker automatic locking differentials for automotive vehicles, as well as a recall of all differentials in its distributors’ possession. Finnegan obtained an emergency stay of the injunction while the appeal was pending at the Federal Circuit and then, on the merits, successfully argued that the district court improperly granted the preliminary injunction based on an incorrect infringement analysis under the doctrine of equivalents. In a 2-1 decision, the Federal Circuit concluded that the accused EZ locker differentials were not likely to infringe the patent claims under a correct understanding of the functions described in the patent-in-suit.
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.
The United States District Court for the District of Delaware ruled in favor of firm clients AstraZeneca and Shionogi Pharmaceuticals, finding that the FDA Orange Book listed patent for the active ingredient in their blockbuster anti-cholesterol drug, Crestor®, is valid and enforceable—preserving market exclusivity for Crestor® into 2016.  The patent was challenged in these Abbreviated New Drug Application litigations by eight generic pharmaceutical companies.  Judge Farnan ruled that the novel rosuvastatin inventions claimed in the patent would not have been obvious to one of ordinary skill in the art.  Judge Farnan further found that the failure to submit certain prior art during the prosecution of the patent application was not the result of an intent to deceive the United States Patent and Trademark Office.  Instead, Judge Farnan credited AstraZeneca and Shionogi’s witnesses and evidence that innocent mistakes resulted in the non-submission of the prior art and ruled that the patent is enforceable.
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.
The U.S. Court of Appeals for the Federal Circuit found in favor of Finnegan client Unified Patents Inc., in Unified’s first case before the court. After Unified prevailed in an inter partes review (IPR) before the Patent Trial and Appeal Board (PTAB), the patent owner, Clouding Corp., appealed the Board’s decision that Clouding’s claims relating to file synchronization and backup were unpatentable. Clouding also appealed the Board’s denial of its motion to amend. Less than two weeks after oral argument, the Federal Circuit summarily affirmed the PTAB’s final written decision in favor of Unified.
United Catalysts retained Finnegan upon receiving an unfavorable judgment of infringement in the district court following a jury trial. The lower court had awarded United Catalysts’ competitor, Southern Clay Products, Inc., over $80 million in damages and fees for infringement of two patents related to organoclays. On appeal, the Federal Circuit vacated the judgment, invalidated one of the patents-in-suit, and remanded the case for consideration of the invalidity of the second patent.
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 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.
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.
Finnegan successfully defended Hoechst against patent infringement claims by Kaken Pharmaceuticals in the ITC. Kaken sought to exclude Hoechst’s agricultural feed products containing salinomycin, an antibiotic, from U.S. markets. We persuaded the ITC that the Kaken patents were invalid and unenforceable on the grounds of inequitable conduct.
When our client’s patent was threatened by another large chemical company, we were able to win a summary judgment of noninfringement following a favorable claim construction hearing. The chemical manufacturing giant was free to compete with a company that had sought to aggressively protect a specific technology.
eSpeed and Cantor Fitzgerald claimed that Finnegan clients ICAP, the world’s largest electronic interdealer broker, and OMX, a Swedish technology company, infringed a patent related to the electronic trading of U.S. Treasury securities. When eSpeed appealed from a finding that its patent was invalid and unenforceable, we secured a favorable judgment for our clients, with the Federal Circuit holding eSpeed’s patent unenforceable for inequitable conduct.
After Harmonix was sued by Princeton Digital Image Corp. in D. Delaware, Finnegan filed a request for inter partes review (IPR) on behalf of Harmonix against all asserted claims. Shortly after filing, Finnegan obtained a rare pre-institution stay of the litigation for Harmonix and other defendants sued over the same patent, avoiding potentially substantial discovery costs. The PTAB issued its final written decision finding four patent claims unpatentable on both proposed § 102 grounds.
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.
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.