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Patent Office Examinations - Prosecution

Since its founding, we have provided strategic intellectual property counseling and representation to Imerys, including its French parent company, international subsidiaries, U.S. headquarters, and multiple domestic business units. We have evaluated developing technology for patentability; drafted and prosecuted patent applications in the U.S. Patent and Trademark Office and abroad; analyzed patent enforcement opportunities; defended against third-party charges; and provided legal opinions on several aspects involved in bringing new products to market and maintaining Imerys’s strong, competitive position in the kaolin clay market.
Finnegan has built a robust and dynamic IP portfolio for BrainScope Company, Inc. surrounding their brain injury assessment tool. As the company has grown and progressed from a concept through FDA clearance, the firm has worked closely with BrainScope to ensure their IP protection grew and reacted to their changing business goals. To protect all aspects of their device, Finnegan has provided strategic counseling and filed and prosecuted design patents, utility patents, and trademarks in the United States and a number of foreign countries.
Finnegan 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.
Finnegan guided the entire developments of LTA’s patent portfolio that includes over 120 patents and pending applications directed to lighter-than-air airship technology. The applications cover airship technologies ranging from hull and empennage configurations, propulsion and power source arrangements, flight control systems, attitude regulation and control, attitude displays, variable buoyancy techniques, solar powered flight, aerodynamic features, and various ornamental designs and configurations.
Intertrust Technologies is a leading developer of digital rights management (DRM) solutions and trusted computing technologies that enable Internet trust between people and allow for data privacy and digital security among a wide variety of devices and services. Finnegan prosecutes and manages Intertrust’s entire patent portfolio. We also advise on portfolio development as well as enforcement and defensive strategies for its patents relating to content protection, digital security, data privacy, trusted computing, and rights management—all of which are key components of a connected environment in the 21st century.
We provide in-depth patent prosecution and counseling services for one of the world's leading solar companies. Our service includes preparing patent applications directed to novel silicon materials and processing technologies, specifically geared toward photovoltaic applications.
We provide in-depth patent prosecution and counseling services for one of the world's leading information management companies. Our service includes preparing patent applications directed to novel methods and systems for storing, protecting, and managing information with a particular focus on records management and data protection and recovery. In addition, we have provided due diligence for our client’s mergers and acquisitions, to assist it in achieving its strategic growth goals.
The Patent Trial and Appeal Board (PTAB) reversed a rejection of all patent claims in a patent application related to important neurodiagnostic device features for concussion and other brain abnormality assessments. Finnegan argued throughout the examination that the examiner had interpreted a claim limitation too broadly, and failed to appreciate the advance that the application claimed. After oral argument, the PTAB judges agreed and reversed the examiner's rejection on all grounds.
Finnegan client AOL reached a record-setting agreement with Microsoft to receive $1.056 billion for selling over 800 patents and granting Microsoft a license on its remaining 300 patents and patent applications.  We worked closely with AOL over several years to strategically build and strengthen its patent portfolio, towards its monetization goals.  Our strategic patent planning and prosecution services involved reviewing and processing hundreds of transferred cases.  The team analyzed the portfolio and implemented a process for strengthening it—identifying key inventions, studying products and trends in the market, drafting claims with an eye toward enforcement, and conducting interviews with U.S. Patent and Trademark Office examiners to obtain prompt allowances. We also helped AOL identify monetization opportunities and develop offensive and defensive patent strategies.  When AOL’s board of directors authorized a sale process for the portfolio, we worked with AOL’s in-house patent team and top executives and a team of advisors, handling numerous critical tasks and providing guidance throughout the negotiations and bidding process.
A leading healthcare company that develops wireless communication systems for managing patient care turns to Finnegan for counsel in many different facets of intellectual property. We study the patent landscape for wireless health management and assist the company in weaving its way through patents of its competitors; we obtain patent protection for its technology and trademark protection for its brands; and we provide guidance in drafting agreements for the transfer of technology.
Finnegan has guided the development of Rockwell Collins’ portfolio that includes over 50 patents and pending applications directed to control and navigation of manned and unmanned air vehicles. These patents cover technologies ranging from fault-tolerant automatic control systems, single lever power controllers, systems for controlling multi-input/multi-output systems using feedback LTI’zation, image-augmented inertial navigation systems, celestial-image augmented navigation and targeting systems, vertical take-off and landing control systems, systems for autonomously landing aircraft, and systems for improving the efficiency of power generation systems.
As Finnegan’s clients advance innovations that analyze big data, provide back-end storage and data solutions, monitor information from mobile devices and vehicles, and provide user-friendly display interfaces, we help them procure patent protection and build sophisticated portfolios around all related technology areas. We also assist them with developing enforcement strategies and defending against infringement accusations.
Finnegan provided an array of IP services to SRA International, including counseling and patent and IP prosecution for its Automatic Dependent Surveillance-Broadcast (ADS-B), which is a cooperative surveillance technology in which an aircraft determines its position via satellite navigation and periodically broadcasts it, enabling it to be tracked. As part of the comprehensive IP strategy developed for SRA, Finnegan addressed both patents and trademarks for systems and devices associated with ADS-B and other SRA services.
California-based ACTON, Inc. received funding from over 700 backers in over 40 countries through its Kickstarter campaign to start production of its smart electric RocketSkates® roller skates. This fast-moving company, whose innovative personal transportation products blend form and function through cutting-edge designs, has relied on Finnegan to protect its designs in the United States and internationally. After preparing and filing design patent applications in the United States, Finnegan has coordinated the prosecution of counterpart cases by working with its extensive network of international partners across the globe, including in European Union, China, Japan, and South Korea.
Nuvera Fuel Cells retained Finnegan to manage all of the company's IP portfolio assets, which were recently consolidated. Much of the management is focused on the procurement of patents, both U.S. and foreign, directed to various aspects of fuel cell technology.
Toshiba is one of Finnegan’s long-standing clients. The firm prosecutes hundreds of U.S. patent applications per year in various technologies, including semiconductors, integrated circuits, computers, communications, and electronics. Toshiba also turns to us for strategic advice and opinions regarding their extensive patent portfolio.
Finnegan manages portfolios of U.S. and foreign patent applications for Artaic LLC, whose robotic systems create state of the art two-dimensional and three-dimensional mosaics.  The robotic systems use novel combinations of hardware and software for arranging tiles and creating custom designs.
Finnegan’s work for Eastman Chemical covers a wide variety of technologies, including Eastman’s valuable specialty polyester resin portfolio. Our work has involved drafting and prosecuting applications for commercially important technologies; specialty prosecution proceedings, such as reexaminations and reissues; the preparation of opinions; prelitigation investigations; and issues involving licensing.
We represented a major travel-related company in securing worldwide patent protection on a diverse portfolio of software and business-method–related inventions. We advised and defended the client on various allegations of patent infringement and third-party claims for indemnification against infringement allegations.
Finnegan has represented Boston Scientific in a variety of patent matters since 1995. The work has included prosecution of hundreds of U.S. and foreign patent applications in the medical device area. Finnegan has also represented Boston Scientific in interferences, due diligence investigations of target companies, product freedom-to-operate opinions, reissue applications, and European oppositions.
Finnegan is working with AeroMobil to protect its revolutionary technology in Europe, the United States, and around the world. The work includes invention capture, drafting, and prosecution of new applications. Finnegan’s European and U.S. attorneys work closely to coordinate the application drafting and prosecution strategy with foreign counsel around the world.
Finnegan represented Toyota Aviation, which existed to develop new aircraft for Toyota. Finnegan prepared patent applications for a variety of innovative technologies, including automatic flight planning; displaying airspace information; fabricating a one-piece fuselage; forming a one-piece wing structure; forming filament wound closed-shape structures; primary flight displays; integrated vibration systems for filing and extracting media; chemical debonding agents for composite tooling; media removal devices; pre-filled media volumes for difficult to fill areas; cockpit pilot trays; aircraft circuit breaker assembly; sandwich stiffened composite structures; twin engine powered aircraft to turn single output shaft; and stall recovery systems.
Hong Kong-based Walnut Technology relies on Finnegan to protect its technology, designs, and trademarks in the United States for its SPECTRA Pro Skateboard and backpack transport system. Walnut’s product is equipped with the world’s first 3D posture control system in a skateboard, which self-learns to control the rider’s speed and turning. It can be ridden like a regular skateboard while the regenerative braking charges up the battery. Not only did Walnut raise more than eight times its funding goal on Indiegogo, but its design won a coveted Red Dot design award in 2017. Walnut (and its investors) know that the SPECTRA has comprehensive IP protection wherever it goes.
Since 2000, Finnegan has worked closely with the inventors and legal staff at Caterpillar Inc. The firm has prepared and is prosecuting several hundred patent applications in the United States and in many foreign countries. We have also assisted Caterpillar with many opinion matters involving issues of patent validity, infringement, government contracts, licensing, and copyrights. And we have a significant role protecting Caterpillar's well-known trademarks around the world.
Finnegan 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.