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We advised 3D printer makers, digital design exchanges, materials companies, and other industry players on legal issues unique to 3D printing.

Finnegan successfully represented Sensio, Inc. in IPR proceedings involving three design patents directed to triple slow-cooker designs.  Sensio established that the claimed designs were in the prior art and countered the patent owner's attempt to antedate the prior art references.  After an oral argument, the Patent Trial and Appeal Board (PTAB) found all three patents to be anticipated and obvious in view of prior designs.  Finnegan also represented Sensio in the co-pending district court litigation in Kansas, which Finnegan successfully argued should be stayed during the pendency of the IPR proceedings.

Finnegan defended The Hillman Group against charges that it monopolized or attempted to monopolize in the key duplication marketplace. Finnegan negotiated a favorable settlement of the claims.

Apple filed two inter partes review (IPR) petitions challenging one patent owned by Finnegan client VirnetX, seeking to join its petitions to petitions filed by another petitioner challenging another VirnetX patent.  Based on Finnegan’s arguments in the preliminary responses, the Patent Trial and Appeal Board (PTAB) denied the motions for joinder and denied institution on the basis that the petitions were time-barred under 35 U.S.C. 315(b).

Finnegan represented an LG Electronics (“LGE”) subsidiary involved in iris recognition technology in a patent infringement case. The patentee accused LGE of violating a license agreement, misappropriating trade secrets, and infringing the patentee’s U.S. patents. Both sides filed antitrust and unfair competition counterclaims. The patentee also filed foreign corrupt practices act claims after losing several large foreign public tenders involving the technology to LGE. Finnegan was lead counsel on both the intellectual property (patent and trade secret) and the antitrust and unfair competition claims, and secured an extremely favorable resolution of all claims, enabling LGE to purchase the critical software and continue using the underlying technology.

Apple filed seven inter partes review (IPR) petitions challenging several patents owned by Finnegan client VirnetX more than a year after it was served with a complaint alleging infringement of the patents. Finnegan secured non-institution decisions for VirnetX through arguments in its patent owner’s preliminary responses to the Patent Trial and Appeal Board (PTAB) that Apple was time-barred under 35 U.S.C. 315(b) from requesting IPR of the challenged patents. 


We advised major industrial companies on how to address challenges to their profitable parts businesses that are under pressure from replacement and customized parts that may be 3D printed by customers and others, including developing patent claiming strategies and ways to adapt their business models.

Finnegan client VirnetX served Microsoft with a complaint alleging infringement of the challenged patents more than a year before Microsoft filed its three inter partes review (IPR) petitions.  However, the litigation was settled and dismissed after trial but before a final decision.  Microsoft argued that its petitions were not barred because its counterclaims and affirmative defenses regarding invalidity in the litigation were dismissed “without prejudice.”  In its preliminary responses, VirnetX argued that the manner in which counterclaims and affirmative defenses are dismissed is irrelevant for 35 U.S.C. 315(b)’s time bar—it is the infringement allegations that matter.  Agreeing with VirnetX, the Patent Trial and Appeal Board (PTAB) denied institution, in part, because the infringement allegations in the complaint were dismissed “with prejudice” and the parties were in different relative legal positions than before the complaint was filed.

Shortly after Subaru launched its newest vehicle named the “Crosstrek,” Trek Bicycle filed suit for trademark infringement, trademark dilution, and unfair competition of its “Trek” and numerous “Trek-formative” trademarks. Trek and Subaru had been long-standing partners in a professional mountain bike team. As such, in addition to its assertions of trademark infringement and dilution, Trek also alleged that Subaru’s “Crosstrek” name breached the existing sponsorship agreement. Trek moved for a preliminary injunction. Faced with the possibility of rebranding its new vehicle, Subaru turned to Finnegan. Finnegan put together a team that could handle expedited discovery (which was virtually case-comprehensive and involved extensive ESI document discovery and many fact and Rule 30(b)(6) depositions), working with experts to conduct likelihood of confusion and dilution surveys, calculate harm and damages, and study linguistic usage of the word “trek,” as well as obtaining and managing documents produced from dozens of third-party subpoenas. Finnegan uncovered facts leading to a counterclaim for genericness, abandonment, and fraud, as well important facts undermining the alleged strength of the Trek brand. Prior to the preliminary injunction hearing date, the case was favourably settled with Subaru’s ownership, use, and registration of its “Crosstrek” trademark unfettered and unchanged.

The Federal Circuit reversed an anticipation ruling by the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board, which had found two claims of a Rambus patent to be “unsupported by substantial evidence.” The appellate panel sided with Finnegan client Rambus and reversed the finding. The Federal Circuit ruling is the latest development in a series of reexaminations requested by Micron.


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