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| 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. |
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| A European company asked us to conduct IP due diligence on a technology it was looking to acquire. This renewable energy focused on the production of photovoltaic cells. In less than one month, we coordinated prior art searches in Europe and the United States, evaluated the search results containing over 500 U.S. and European patents, provided our opinion on freedom to operate with the target technology, and set up a system to monitor European and U.S. patents that may be granted in the future. |
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| 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—calling upon our deep experience in both areas. 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. |
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| 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. |
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| One of our long-standing clients asked us for advice on how to expand its patent portfolio to include nanotechnology. We researched the activities of its competitors, reported our findings, and suggested a course of action to a group of its senior IP counsel and technical leaders. Our report focused on the implications of nanotechnology in the client’s industry and identified desirable avenues of research and product development where nanotechnology could be implemented and protected to provide an advantage in the marketplace. |
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| Home Diagnostics Inc. (HDI) 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. |
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| Starbucks is a household name with thousands of retail locations across the globe and a brand that extends well beyond coffee. Finnegan successfully opposed an application for the mark LESSBUCKS COFFEE for coffee, tea, and coffee- and tea-based beverages and related retail locations. We obtained a ruling that the STARBUCKS trademarks is a famous mark entitled to a broad scope of protection, and that the LESSBUCKS mark was likely to cause confusion. |
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| 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. |
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| 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 $36 million. On appeal, Finnegan achieved a total victory for Conair by obtaining a reversal of the infringement finding in the Federal Circuit. |
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| 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 U.S. and in many foreign countries. We have also assisted Caterpillar with many opinion matters involving issues of patent validity, infringement, and other subjects. During our relationship, we have also advised on intellectual property issues related to government contracts, licensing, and copyrights, and more recently, we have taken on a significant role protecting Caterpillar's well-known trademarks around the world. |
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| 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. |
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| When Monsanto brought suits asserting patents relating to genetically engineered corn against Syngenta Seeds, Syngenta turned to Finnegan and relied on our legal skills, strategic planning, and deep scientific background to make the strongest arguments. We succeeded in transferring one of the cases to the District of Delaware so suits could be consolidated. That court agreed with Syngenta’s defense and motions for summary judgment, holding one of Monsanto’s patents invalid and the other not infringed, and the Federal Circuit affirmed both decisions. |
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| When Yahoo!’s famous YAHOO! trademark was misused on the Internet, the company turned to Finnegan. We obtained a temporary restraining order for Yahoo!, enjoining the defendants from using the domain name 21yahoo.com for a website offering free stock in 21Yahoo.com, Inc. In a separate matter, we obtained an ex parte temporary restraining order for Yahoo! against typosquatters who registered the domain name yaholigans.com (a typo of the name of Yahoo!’s children’s site, YAHOOLIGANS!), among others, and used them for an adult-entertainment site. |
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| Intertrust is a leading developer of digital rights management (DRM) solutions and trusted computing platforms; the company is on the cutting edge of developing and monetizing next-generation technologies and inventions. Finnegan currently prosecutes and manages its entire patent portfolio. |
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| 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. |
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| Toshiba is one of Finnegan’s long-standing clients. The firm prosecutes hundreds of U.S. patent applications per year in various technologies, including computers, communications, electronics, semiconductors, and business methods. Toshiba turns to us for strategic advice and opinions regarding their extensive patent portfolio. |
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| Since 2000, Toyota has sold over 500,000 hybrid vehicles in the U.S. When its right to bring certain vehicles into the U.S. was challenged, the company needed fast and decisive relief. We represented Toyota before the ITC and argued that there was no violation of Section 337 or patent infringement. |
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| 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. |
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| 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. |
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| 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. |
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| 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. |
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| Finnegan represented System General as a respondent in an investigation involving power supply controllers found in many modern electronic devices. Complainant Power Integrations asserted infringement of four patents against System General’s entire product line. But the patent that threatened all of System General’s products was withdrawn when we found invalidating prior art, and another patent was withdrawn before trial. |
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| The market for high-end, large-capacity, technologically advanced washing machines is intensely competitive. When LG entered the U.S.market, Whirlpool, Maytag, and Fischer & Paykel each sued LG, claiming LG’s washers infringed their patents. Not one prevailed, and LG remains in this important market. In each case, we employed an aggressive pretrial strategy based on team work. The asserted Fischer & Paykel patent stands rejected in a reexamination. The Maytag case was settled, as were two other infringement actions between Whirlpool and LG. In the third Whirlpool action, the judge granted summary judgment of no infringement on one patent and invalidity of the other patent. |
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| 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. |
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| When Cisco infringed two of Telcordia Technologies’ key patents in the ATM and SONET areas, we pursed them vigorously on behalf of Telcordia. We built a solid case based on a thorough explanation of the technology in question. The jury awarded a multi-million-dollar verdict for Telcordia finding that Cisco had willfully infringed the patents in question. In addition, the jury found Telcordia’s patents enforceable and not invalid. |
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| 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 district court 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. |
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| 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. |
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| 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. |