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A startup 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.

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 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.

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 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.

Finnegan represented CSL Behring in an ex parte reexamination and corresponding arbitration proceeding against Baxter and Bayer relating to Factor VIII blood products, securing a favorable settlement for our client.

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.

When the developer of a wireless-networking technology found that its relationship with a joint venture partner had failed, Finnegan represented the developer in a copyright litigation in the Eastern District of Pennsylvania.

In 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 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.


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