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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 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.

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.

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 Federal Circuit affirmed the district court’s judgment.

Finnegan client Fidelity National Information Services Inc. (FIS) challenged two check-imaging patents owned by DataTreasury in covered business method (CBM) reviews at the Patent Trial and Appeal Board (PTAB), and successfully defended the PTAB’s decisions invalidating those patents on appeal to the Federal Circuit. DataTreasury’s infamous “Ballard” patents were called out by name as troublesome business method patents by Congress when it wrote the CBM statute. The PTAB, in its final written decision (FWD), said the two patents—directed to transferring information from one location to another where the transferred information is unreadable without a secret decoder key—cover abstract ideas that, in light of the Supreme Court’s decision on patentability in Alice Corp. v. CLS Bank Int’l, are too abstract to be patentable. The PTAB also held that many of the claims lacked sufficient written description for encrypting subsystem identification information and thus fail to meet the rigors of 35 U.S.C. § 112. The Federal Circuit affirmed the PTAB’s decision with a Rule 36 judgment, which the Supreme Court declined to review on certiorari. Finnegan represented FIS in the CBM challenges, in DataTreasury’s appeal of those CBM challenges, and also in mandamus petitions to the U.S. Court of Appeals for the Federal Circuit, resulting in a successful stay of the underlying litigation in the Eastern District of Texas.

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.


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