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| 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. 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. |
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The United States District Court for the Middle District of Florida has granted summary judgment of noninfringement in favor of Finnegan client Toyota in Solomon Technologies, Inc. v. Toyota Motor Corp., No. 8:05-cv-1702-T-MAP (Jan. 26, 2010). Solomon sued Toyota in the Middle District of Florida in September 2005, claiming that Toyota’s hybrid vehicles infringed U.S. Patent No. 5,067,932 ("the ’932 patent"). That case was stayed, however, after Solomon filed a related action in the International Trade Commission in January 2006. Represented by Finnegan, Toyota showed the ITC that its accused hybrid vehicles do not infringe Solomon’s patent. Solomon appealed to the Federal Circuit, which affirmed the ITC’s decision in Toyota’s favor. Solomon then tried to reopen the Florida case. Toyota obtained the Court’s permission to file an early motion for summary judgment, arguing that the ITC and the Federal Circuit had already decided the issues. The Court agreed with Toyota, holding that the doctrine of judicial estoppel precluded Solomon from raising new and inconsistent arguments in a later proceeding. Accordingly, the district court granted Toyota’s motion for summary judgment that the accused hybrid vehicles do not infringe the ’932 patent. |
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| 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 had requested reexamination of the Delta patent, and the claims asserted against SinterFire have been 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 case is now before the Court of Appeals for the Federal Circuit. |
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| An Administrative Law Judge of the U.S. International Trade Commission ruled in favor of firm client Rambus Inc. and issued an Initial Determination finding three Rambus patents valid and infringed by nVidia Corp. and 15 other respondents. The ALJ found that nVidia and the other respondents, which use nVidia technology in products they import to the U.S., each literally infringe, induce infringement and contribute to the infringement of the Rambus patents. The ALJ also recommended an exclusion order directed to nVidia memory controllers and products of the Respondents containing those controllers. |
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| 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 result of the ruling means that Mitsubishi remains free to import and sell its wind turbines in the U.S. market. |
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| The Court of Appeals for the Federal Circuit unanimously affirmed a district court judgment of willful infringement and a damages award of approximately $290 million, 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 appeal proceeded on an expedited schedule, with all briefing occurring in less than a month. |
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| A unanimous Federal Circuit panel affirmed a district court ruling of non-infringement for Finnegan client Trex, in Nystrom v. Trex. Trex has the questionable distinction of having made new law, not once but twice, in the course of Nystrom’s running feud, in which Trex prevailed in three judgments in the Eastern District of Virginia and in three subsequent appeals to the Federal Circuit. In its first groundbreaking holding, Trex successfully sought rehearing by the Federal Circuit, which vacated an initial 2004 panel decision reversing the district court’s non-infringement judgment, and issued a new decision following the Phillips decision and holding that the claims must be construed consistent with the specification. Trex broke new ground again in 2009 when the Federal Circuit affirmed another judgment of non-infringement. Trex had argued that the earlier decisions controlled, yet, the district court declined to give them res judicata effect. The district court ultimately ruled in Trex’s favor on other grounds. The Federal Circuit now holds that res judicata applies with respect to claim limitations that are the basis for a non-infringement judgment, even if the product is allegedly changed with respect to other claim limitations. Nystrom is prohibited from proceeding against Trex for any product that does not include the claim limitations that were the basis for the earlier non-infringement judgments, even under the doctrine of equivalents. |
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| 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’s challenges to Lilly’s patents covering Evista® were the subject of a trial held in March. |
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| Judge Marsha J. Pechman of the Western District of Washington issued an order granting summary judgment of no infringement in favor of Finnegan client Trudeau Corporation. In the case, Chef’n Corporation accused Trudeau of infringing a patent for the design of a silicone vegatable steamer. 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. |
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| 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. |
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| 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. |
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| 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 of Ronald A. Katz Technology Licensing L.P. 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." |
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| Finnegan attained a win on behalf of the defendants in the U.S. District Court for the Eastern District of Texas. On the third day of trial, a federal district court judge directed a verdict against the plaintiffs and in favor of Finnegan’s 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. |
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| 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. |
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| Judge Virginia Hernandez Covington of the U.S. District Court for the Central District of Florida granted judgment in favor of defendant X/Open Company Limited, a non-profit computer-industry consortium responsible for setting and managing the standards and specifications for UNIX products, along with co-defendants Novell, Inc. and The SCO Group, Inc., against plaintiff Wayne Gray in a lawsuit that alleged violations of the federal RICO statute, the Florida RICO statute, the Florida Communications Fraud Act, the Lanham Act, and other laws. In the action, Gray alleged that Finnegan client X/Open fraudulently asserted ownership in the UNIX mark against Gray in an administrative Patent and Trademark Office proceeding that opposed the conflicting INUX trademark and then "conspired" with co-defendants to conceal the true ownership of that mark, which Gray alleged was held by SCO. During discovery, Gray asserted damage claims that topped $100M. On cross motions for summary judgment, the Court held X/Open owned the UNIX mark, as indisputably established by various prior agreements and dealings between the co-defendants. Having found X/Open owned the UNIX mark, the Court held that X/Open was within its lawful rights to assert the UNIX mark against Gray in the PTO proceeding and that, therefore, the co-defendants could not have conspired to fraudulently deceive Gray, the PTO, or the relevant public over the UNIX mark's ownership. Finally, the Court ruled Gray's damage claims failed because the co-defendants' alleged conduct was lawful. |
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| Finnegan helped InterDigital secure a settlement with Samsung, the terms of which included InterDigital receiving $400 million for a license that includes 3G cellular telephone technologies through 2012. 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). |
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| Seoul Semiconductor received favorable rulings on several important motions in its 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 15 percent on the Korea Exchange following the announcement. |
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| 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. |
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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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| 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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| 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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| 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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| 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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| 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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| 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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| 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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| 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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| 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. |
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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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| 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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| 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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| 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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| 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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| 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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| 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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| 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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| 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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| 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. |