Print PDF

Representative Engagements

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.  In 2004, Frontline Technologies, Inc. sued CRS for patent infringement on one patent.  Finnegan assisted with settling the case for business reasons with a favorable license.  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 not to sue 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 in September 2012. 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 in a decision issued January 21, 2014.
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.
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.
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.
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 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 Fourth Circuit issued its opinion affirming the preliminary injunction issued by Judge Williams in the U.S. District Court for the District of Maryland in Metropolitan Regional Information Systems, Inc. v. American Home Realty Network, Inc. The panel’s 3-0 decision sided with firm client Metropolitan Regional Information Systems, Inc. (“MRIS”) on each issue on appeal, including two issues of first impression in any circuit court: (1) the validity of electronic copyright assignments under the “writing requirement” set forth in Section 204 of the Copyright Act and the Electronic Signatures in Global and National Commerce Act (“E-SIGN”) and (2) whether Section 409 of the Copyright Act requires a registrant to list the names of authors and titles for each component work within a compilation. The Fourth Circuit’s ruling that an electronic agreement may effect a valid transfer of copyright interests under Section 204 of the Copyright Act is the first of its kind, and has significant implications for the validity of electronic transfers in other areas. Regarding the Section 409 issue, the Fourth Circuit’s opinion disagreed with a number of district court cases holding that copyright registrants failed to comply with the requirements of Section 409 by not listing authors of component works in the application to register the compilation. The Fourth Circuit’s opinion will likely be heavily cited by the courts and other owners of copyright in compilations in the future.
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.”
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.

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

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.
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.
Toyota has long turned to Finnegan to protect its product design. The firm has prosecuted hundreds of U.S. design patent applications on behalf of Toyota for various cars and trucks, as well as parts and accessories.
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.
After its own efforts at registering a fabric design failed, a couture fashion client came to Finnegan to handle the appeal and obtain protection for its coveted and often-infringed pattern. Our knowledge of U.S. Copyright Office appeal procedures and substantive law persuaded the Office to overturn the examiner’s decision and register the design.
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.
We 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.
A prominent restaurant chain needed a certified copy of its deposit, the chain’s logo, on a expedited basis, to file as evidence in a litigation in China. The deposit copy was lost and the client was unsuccessful in convincing the U.S. Copyright Office to remedy the problem. The restaurant chain turned to Finnegan, counting on our expertise in Office practices and our relationships with Office personnel. We persuaded the Office to accept and certify a new copy of the logo in time to meet the Chinese deadline.
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.
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.
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.
During a shoe industry trade show, our client Nimco discovered that Spring Footwear was promoting a new line of shoes that incorporated Nimco's proprietary outsole design. The counterfeit outsole was identical to Nimco's outsole in every way, not only encompassing the design elements, but also containing Nimco's logo and its patent numbers. To avoid future displays of the counterfeit outsole, Nimco asked us to immediately file suit against Spring Footwear. As a result of the litigation, Spring Footwear withdrew the counterfeit shoe from the market and commenced settlement discussions. The case has since settled in favorable terms for our client.
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 has assisted with filing and prosecuting several thousand trademark applications in the United States and abroad for Caterpillar. We obtained a preliminary injunction for Caterpillar against use of the word marks GAI, GAIERBILLART, GAIERPILLAR, GAIERPOLLAR, the yellow and black color combination for footwear and any associated packaging or labels, and/or any other trademarks, trade names, trade dress, logos, or other names or identifiers confusingly similar to the CATERPILLAR or CAT marks and/or Caterpillar’s footwear trade dress.
The U.S. District Court for the Eastern District of Pennsylvania ruled in favor of Finnegan client SAP in elcommerce.com, Inc. v. SAP AG and SAP America, Inc.  Following a favorable claim construction ruling in SAP’s favor, elcommerce agreed to a final judgment in which the Court held that SAP did not infringe the asserted method claims and that the asserted system claims were invalid.
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.
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.
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 United States District Court for the Eastern District of Pennsylvania granted summary judgment of patent invalidity due to prior invention thereby terminating an action that Teva Pharmaceutical Industries Ltd. brought against firm clients AstraZeneca Pharmaceuticals, Inc. and several other AstraZeneca entities.  Teva alleged that its patent covered AstraZeneca’s blockbuster anti-cholesterol drug, Crestor®, and sought damages and fees.  AstraZeneca moved for summary judgment of invalidity due to its prior invention of the Crestor® formulation.  Judge William H. Yohn, Jr. found that AstraZeneca had invented first and had not abandoned, suppressed, or concealed its invention.  Accordingly, Judge Yohn invalidated all asserted claims of Teva’s patent and entered judgment in AstraZeneca’s favor.

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. 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.

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 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 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.
Finnegan helped Nikon Inc. in a design patent and trade dress infringement suit, settling the suit and limiting Nikon's involvement, before engaging in costly discovery. In this case involving scope mounts for a rifle, Finnegan's comprehensive mediation brief established that our client did not infringe, and a favorable settlement followed.
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.
The Eleventh Circuit Court of Appeals unanimously upheld a lower court judgment in favor of firm client X/Open Company Limited, a non-profit computer-industry consortium responsible for setting and managing the specifications for UNIX-based products. The decision caps a decade-long dispute which began as an administrative proceeding at the U.S. Patent and Trademark Office and later escalated into a federal court lawsuit when the plaintiff Wayne Gray alleged violations of federal and state RICO statutes, the Florida Communications Fraud Act, and the Lanham Act. The crux of plaintiff’s claim was that X/Open fraudulently asserted ownership in the UNIX mark against Gray in the earlier administrative action and then “conspired” with co-defendants Novell, Inc. and The SCO Group, Inc. to conceal the true ownership of that mark. The lower court had granted summary judgment in favor of X/Open, finding that various prior agreements and dealings between X/Open and the co-defendants indisputably established that X/Open owned the UNIX mark. The appeals court panel unequivocally affirmed, holding that Gray was simply “mistaken” about the legal effect of each agreement at issue. Because X/Open owned the UNIX mark and had lawfully asserted its rights in that mark against Gray, the Court held that all of Gray’s claims must fail.
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.
Finnegan successfully overturned a ruling against two of Bridgestone’s top-selling tire brands POTENZA and TURANZA. Bridgestone appealed a TTAB decision dismissing its opposition against Federal Corporation’s application to register the mark MILANZA for tires. In that decision, the TTAB refused to find Bridgestone’s POTENZA and TURANZA marks commercially strong because they frequently appear with the BRIDGESTONE house mark. On appeal, the Federal Circuit issued a unanimous precedential decision reversing the TTAB and finding that MILANZA is likely to be confused with POTENZA and TURANZA based on, among other things, the independent strength achieved by the POTENZA and TURANZA marks through massive sales and advertising and the similarities between POTENZA, TURANZA, and MILANZA. The Federal Circuit also held that the simultaneous use of BRIDGESTONE with POTENZA and TURANZA does not denigrate the fame and strength of those product marks.
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.
Finnegan has represented Capsugel in two successful European Patent Opposition proceedings. In one proceeding, the firm represented Capsugel in its opposition to a patent in the name of McNeil Inc. The patent was maintained in amended form. The case involved a coating for pharmaceutical capsules. In the other proceeding, the firm represented Capsugel in an opposition filed by Cargill. The patent was maintained in amended form. The case involved a composition for use in pharmaceutical capsules.
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.
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.
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.
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 appeal, 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.
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.
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.
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.  
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." 
After purchasing the assets of a bank that was being dissolved by the FDIC, our client commenced the process of re-branding the bank as ONEWEST BANK. Between the time that the new brand had been chosen, announced, and  launched, former employees of the dissolved bank learned of the new brand and announced plans to launch their own mortgage brokerage company named ONEWEST MORTGAGE. To protect the client's new mark and to prevent the former employees from falsely claiming a relationship with the new bank, we filed suit and prepared to file a motion for a temporary restraining order. In response to our quick and forceful action, the defendants agreed to change their name and consented to an entry of a permanent injunction. The case has since settled in favorable terms for our client.
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 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.
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 U.S. Court of Appeals for the Seventh Circuit ruled in Harley-Davidson’s favor on three consolidated appeals, affirming a temporary restraining order, preliminary injunction, and preliminary anti-suit injunction against Harley-Davidson’s former licensee Hellenic Duty Free Shops S.A., located in Greece. In the court below, Finnegan represented Harley-Davidson in obtaining a temporary restraining order and a preliminary injunction against Hellenic following sales of unauthorized apparel products to an unauthorized channel of trade in Germany in violation of the parties’ trademark license agreement. Additionally, after learning that Hellenic had initiated its own parallel legal proceeding against Harley-Davidson in Greece, Finnegan obtained an emergency preliminary anti-suit injunction enjoining Hellenic from pursuing the Greek action and requiring it to withdraw that action. Hellenic appealed all three of the district court’s orders to the Seventh Circuit on the grounds, among others, that the Wisconsin court lacked personal jurisdiction and that it did not have the power to enjoin Hellenic’s parallel Greek action. Represented by Finnegan, Harley-Davidson prevailed on all three of the appeals, with the Seventh Circuit affirming the district court’s rulings that it had exclusive jurisdiction over the dispute and the power to enjoin the former licensee’s parallel foreign proceeding.
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 U.S. District Court for 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. 
An organization of scientists implemented Finnegan’s proposed copyright registration and enforcement strategy for its secured exams and study materials. Now, when the organization finds its study materials or exams posted on the Internet or exchanged by email, it is ready to take quick and forceful action. For example, we filed an infringement suit, which quickly concluded with a consent judgment. Our client was then able to use this enforcement effort in an advertising campaign aimed at educating the community about its rights. The registrations also allow Finnegan to quickly issue persuasive notices and subpoenas under the DMCA and to obtain the identity of infringers.
In the fields of memory technology, cryptography, and other new ventures, we help Rambus obtain patent rights from patent offices worldwide and have taken significant roles in assessing intellectual property issues as part of acquisition due diligence efforts and other strategic counseling projects. For example, in connection with Rambus’ acquisition of Cryptography Research, Inc. (CRI), Finnegan conducted an extensive IP due diligence. The deal was valued at over $350 million and involved the acquisition of the CRI and its IP assets focused on cryptographic technologies, such as protective measures against differential power analysis and other ways of protecting encrypted systems.
Cable-equipment manufacturer and Finnegan client ARRIS Group, Inc. assumed a position of market prominence following its $2.35 billion acquisition of Google’s Motorola Home business.  Central to the deal was the handling of intellectual property assets, primarily consisting of over 3,000 pending and issued worldwide patents and patent applications.  ARRIS retained Finnegan to understand its current and future business goals, analyze the portfolio in depth, and advise on strategies for ensuring the acquisition supported ARRIS’s objectives.  With only weeks to complete the task, the lead partner quickly assembled a team of 25 lawyers from six of Finnegan’s offices.  The lawyers were then subdivided into five specialized teams, with each team matching a key technology area of the portfolio and ARRIS’s business.  Working around-the-clock, the teams developed and implemented analysis metrics, refined evaluation criteria, and then provided guidance that proved critical in the final hours of negotiation.
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.
On behalf of Minnesota Mining and Manufacturing Co., we provoked an interference in the PTO between 3M’s patent application and a patent issued to Adhesives Research, Inc. The subject matter was a type of transdermal drug delivery system that uses an adhesive composition, and both parties introduced evidence of actual reduction to practice. We were successful in obtaining an award of priority against the patentee in the PTO and thereafter prevailed in a Section 146 action for review of the PTO decision brought by the losing patentee in the U.S. District Court for the District of Columbia.
A 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 Superior Court of California, Santa Clara, granted summary judgment in favor of Finnegan client RichWave Technology Corporation in a trade-secret misappropriation case involving wireless communication technology. The court’s judgment resolved all of plaintiff Epic Communication’s claims for trade-secret misappropriation, fraud and misrepresentation, conspiracy, and unfair competition. Finnegan took over the representation of the two remaining defendants after the case had been pending for four years. In reviewing the record, we formulated an argument not asserted by the previous counsel and established that the plaintiff’s agreement with a third party provides a complete release for our clients. Within two months after taking over the case, Finnegan filed a motion for summary judgment based on the agreement, and three months after that, the court granted summary judgment that the agreement released both defendants.
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).
 
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.
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.
A European company asked us to conduct IP due diligence on a technology it was looking to acquire. The 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.
From prosecuting patents before the U.S. Patent and Trademark Office to coordinating the prosecution of counterpart cases in other jurisdictions around the world, Finnegan serves a key role in implementing BlackBerry’s (fka Research In Motion) global patent strategy. Our work also includes filing reexamination requests (both ex parte and inter partes) against third-party patents and fending off reexamination challenges launched by third parties against BlackBerry’s patents.
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. 
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 PTO 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.
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.
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.  The Commission later affirmed the ALJ’s decision and 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. 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.
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.
Finnegan secured a victory for Juniper Networks in the Northern District of California against Florida-based Juniper Media in a trademark infringement and cybersquatting law suit. Defendant moved to dismiss (or to transfer) the trademark infringement and cybersquatting case claiming lack of jurisdiction on the grounds that its website was a passive website and the majority of the company’s operations were based in Florida. Judge William Alsup ruled in Juniper Networks’ favor finding that the Defendant’s repeated representations of being located in, or having connections with, Silicon Valley in its Twitter account, its Linked In page, and its CEO’s personal web pages was sufficient to demonstrate that it expressly aimed its activities at the Northern District. The investigative efforts of our inhouse investigation team were critical to building the case for personal jurisdiction. Following Juniper Networks’ win on the jurisdictional issue, the parties ultimately reached a settlement pursuant to which Juniper Media agreed to change its name, abandon its trademark applications, and transfer its domain names to the client. The case was ultimately dismissed following the defendant’s completion of all phase-out activities.
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.
When a leading patent management company wanted to generate royalties from patents developed and owned by an international group of research and operating companies, it turned to Finnegan for assistance in setting up and running a licensing and enforcement program involving a full range of activities—analyzing the patents, identifying infringers in the marketplace, negotiating and drafting license agreements, litigating to enforce the patents, and providing strategic advice throughout the process.
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.
When a major news organization was accused of copyright infringement, it relied on Finnegan to evaluate the claims and defend against the spurious suit in the Eastern District of Michigan. Finnegan's mediation brief established that our client did not infringe, and a favorable settlement followed.
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. 
Accenture, a recognized leader in software and business method patenting, provides business consulting and technology services to more than two-thirds of the Fortune Global 500. Finnegan assists Accenture with the management of a significant portion of its large portfolio of U.S. and foreign patents including patent landscaping and strategy, license negotiations, and prosecution.
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.
Finnegan represented Actions Semiconductor in an infringement lawsuit on three patents related to digital multimedia integrated circuits filed in the U.S. International Trade Commission by U.S.-based SigmaTel.  The ITC found non-infringement of two patents and issued a limited exclusion order on one patent.  While appealing the ruling, we helped Actions to redesign the chips and worked with U.S. Customs to demonstrate the differences from the patents.  At the same time, Actions attacked the validity of the patents in the U.S. Patent and Trademark Office through reexamination proceedings, and gained leverage in China against SigmaTel by filing its own patent infringement lawsuit in the Shenzhen Intermediate People’s Court.  These strategies ultimately resulted in a favorable settlement for Actions. 
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.  The decision was affirmed by the U.S. Court of Appeals for the Federal Circuit. In addition to the directed verdict, the case was unusual in that it was a win for the defendants in a venue with a reputation for favoring plaintiffs.
Representing Nortel, Finnegan convinced the Federal Circuit to reverse the district court's determination that Nortel’s plasma etching patent was invalid. The Federal Circuit agreed that the district court had misunderstood the invention in finding the patent invalid for failure to disclose the best mode. In addition, the court upheld Nortel’s claim construction of the patent and affirmed an infringement finding against Samsung.
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. 
We assisted our client in developing and negotiating an arrangement for pooling essential patents for an adopted standard. We created contracts by which the client became the agent for the patent owners in granting licenses to all applicants on a RAND basis.
We assisted our client Elan Pharmaceuticals in obtaining a judgment against Paradissis based on the benefit of the earlier filing date of Elan’s foreign priority application. The subject involved controlled-release pharmaceutical formulation for once-per-day administration.
Finnegan manages portfolios of U.S. and foreign patent applications for Artaic LLC, whose robotic systems create state of the art two-dimensional and three-dimensional mosaics.  The robotic systems use novel combinations of hardware and software for arranging tiles and creating custom designs.
Finnegan obtained urgent relief for AMC, which was fighting for its very existence. In addition to stopping Ameriquest's use of AMC, Finnegan negotiated the assignment of several of Ameriquest's federal trademark applications and registrations to AMC. AMC Mortgage Corporation is a small mortgage company founded over twenty years ago with the goal of becoming one of the country's most trustworthy and dependable mortgage companies. In contrast, Ameriquest Mortgage Company was the largest mortgage company in the country and had one of the worst reputations for customer service. Ameriquest began using the mark AMC for mortgages and related services. As a result, and due to Ameriquest's enormous size and pervasive use of the mark AMC, consumers began associating the mark with Ameriquest instead of AMC. AMC brought an action for trademark infringement, unfair competition, and cybersquatting against Ameriquest and its subsidiaries. Several months into the case, consumer criticism against Ameriquest grew and a potential sale to Citigroup was widely reported in the mainstream media. As a result, the potential harm to AMC's reputation increased exponentially and preliminary relief became urgent. AMC filed a preliminary injunction motion and, as a result, Ameriquest entered into a Court-approved judgment requiring Ameriquest to cease all use of AMC.
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.
Accenture, a recognized leader in software and business method patenting, provides business consulting and technology services to more than two-thirds of the Fortune Global 500. Accenture retained Finnegan to assume prosecution of a significant portion of its large portfolio of U.S. and foreign patents and patent applications. Aware of the challenges of transferring over 1,000 patent files, Finnegan assembled a team that included a supervising partner and members of the firm’s docketing, records, financial services, and international prosecution departments. A detailed file transfer process and weekly meetings with the Accenture in-house team ensured accurate docketing, continuity of prosecution, and a smooth transition. The Finnegan team completed the transfer in just over three weeks and well ahead of schedule.
Petroleum Equipment Manufacturing Company (PEMCO) had unsuccessfully sought to have oil drilling and oil well equipment certified by Finnegan client American Petroleum Institute (API). Despite the fact that it was not certifi ed, PEMCO placed a counterfeit of the API certifi cation mark on its products. API objected and PEMCO agreed to cease using the counterfeit API certification mark. API later discovered that PEMCO was continuing to use the counterfeit API certification mark and retained Finnegan to sue PEMCO for trademark infringement, counterfeiting, and breach of contract. PEMCO agreed to a permanent injunction against further use of the API marks and payment of API’s costs. This result successfully stopped a counterfeiting operation that falsely passed off uncertified products as meeting API’s safety standards.
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.
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.
On behalf of our client H-D Michigan LLC and its related companies (collectively "Harley-Davidson"), Finnegan successfully litigated an opposition against the mark HOLY-DIVINESON and design for "hats; headwear; shirts; t-shirts on the ground of likelihood of confusion with the HARLEY-DAVIDSON and HARLEY trademarks and Harley-Davidson's BAR & SHIELD logo for, among other things, motorcycles, clothing, and headwear." This decision is one of a few decisions to hold that both the HARLEY-DAVIDSON and HARLEY word marks and the BAR & SHIELD logo are famous and entitled to a broad scope of protection in connection with motorcycles, motorcycle parts and accessories, clothing, and headwear. It is also the first decision to hold that Harley-Davidson's "bar and shield logo, regardless of wording and other matter, is itself a famous mark in connection with at least motorcycles, clothing and headwear."
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.
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 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.
When LG’s “Life’s Good” and “LG Life’s Good” corporate taglines were challenged, the company turned to Finnegan. On the eve of the trial, the plaintiff agreed to dismiss with prejudice all claims. The “Life’s Good” campaign and mark continue to run globally for a wide range of products.
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. 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.
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.
Finnegan represented patent applicant High End Systems Inc. in reissue proceedings before the U.S. Patent and Trademark Office Board of Patent Appeals and Interferences.  Finnegan was successful in obtaining a complete reversal of the Examiner’s rejection of claims to LED technology.
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.
Finnegan represented patent owner Philips in reexamination proceedings for a patent covering the JPEG image coding standard. All of the claims challenged by the third-party requester were confirmed valid. The patent has also been asserted by Finnegan for Philips in separate district court litigations against Kodak and Samsung. The district court denied Kodak’s request to stay the Philips case against it pending the reexamination.
Finnegan represented the plaintiff in Massachusetts and California federal courts in a long-running copyright battle between two social networking websites. The case established new law on subject matter jurisdiction over copyright claims in federal court.
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.
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.
We worked with our client in acquiring patent protection for its technology related to the deposition of high-dielectric layers and development of applications for the resulting layers. Such technology is applicable to optically transparent barrier layers for solar cell and OLED applications, dielectric materials for high energy-density capacitors, and materials for high-efficiency solid-state batteries.
The Eastern District of Virginia ruled in favor of Finnegan clients SplitFish AG, SplitFish Gameware, Inc., and Nabon Corp., granting a preliminary injunction against Bannco Corp. that prohibits Bannco from selling video game controllers that incorporate or use software code copied from our clients' "FragFX" video game controllers. The case is unusual in that the software in question was developed in China and the court applied Chinese law in order to establish that our client was the copyright owner.
Finnegan successfully defended Sony Corporation against Loral Fairchild Corporation’s claims for infringement of two patents on charge-coupled devices (CCDs), first obtaining a judgment of no infringement as a matter of law in the district court and then maintaining that judgment on appeal to the Federal Circuit. Following a jury verdict that Loral’s patents were valid and infringed under the doctrine of equivalents, the district court granted Sony’s motions that infringement of one patent was precluded by prosecution history estoppel and that infringement of the other patent could not stand under a proper claim interpretation. On a certified appeal to the Federal Circuit, the court upheld the judgment that Sony did not infringe either of Loral’s patents.
A start-up company providing the technology for LCD panels faced a difficult licensing challenge in the worldwide fragmented production environment. We assisted the client in formulating a licensing program that provided necessary rights to the various levels of value production in countries around the world while avoiding exhaustion of the client’s IP rights through unrestricted distribution of components.
Our client had the technology and the IP but not the market presence. A major pharmaceutical company needed a portfolio of diagnostic products. We assisted our client in a lengthy negotiation over a partnership arrangement that allowed both companies to prosper. While IP was an important part of the transaction, we assisted in creating contractual protection of the client’s business interests, particularly in the event of a separation.
Finnegan represents a New England company in the coordination of their patent protection strategies for biofuel technologies. We also counsel this client regarding strategic partnerships and provide landscape analysis.
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.
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.
Matrix Motor Company, Inc. alleged that the Toyota MATRIX passenger car infringed the MATRIX trademark allegedly used for race cars and related components and parts. The plaintiff sought an injunction and damages, but the judge granted our motion for summary judgment, finding no likelihood of confusion between the parties’ respective uses of the MATRIX mark.
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.
We defended Fujitsu in the largest-ever ITC investigation involving 10 different Texas Instruments’ DRAM patents. More than 450 motions were decided by the ITC judge, and there were three separate trials. The claims against Fujitsu were settled before a final decision on the merits.
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.
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.
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. 
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.
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 prepared and filed an ex parte reexamination request for a client that was sued on a patent directed to systems and methods for financial analysis. We worked with the client’s litigation counsel to identify relevant prior art and to develop strategy for the reexamination proceeding. We made sure that the positions we took in the request were consistent with positions taken in litigation. The PTO issued an order granting reexamination noting that substantial new questions of patentability had been raised based on our request.
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. Hercules 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.
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.
We defended Winbond against Oak Technology’s patent infringement claims concerning controller chips for optical disks. After we successfully defended against Oak’s motions for summary judgment, we filed a motion to compel production of Oak’s attorney-client communications based on the crime/fraud exception, and the case was promptly settled without a trial.
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.