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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.

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. 

Finnegan has guided the development of Rockwell Collins’ portfolio that includes over 50 patents and pending applications directed to control and navigation of manned and unmanned air vehicles. These patents cover technologies ranging from fault-tolerant automatic control systems, single lever power controllers, systems for controlling multi-input/multi-output systems using feedback LTI’zation, image-augmented inertial navigation systems, celestial-image augmented navigation and targeting systems, vertical take-off and landing control systems, systems for autonomously landing aircraft, and systems for improving the efficiency of power generation systems.

As Finnegan’s clients advance innovations that analyze big data, provide back-end storage and data solutions, monitor information from mobile devices and vehicles, and provide user-friendly display interfaces, we help them procure patent protection and build sophisticated portfolios around all related technology areas. We also assist them with developing enforcement strategies and defending against infringement accusations.

We represented the Institut Pasteur against the National Institutes of Health in an interference which sought to determine which party was first to discover the AIDS virus and to invent the AIDS antibody test kit. Ultimately, this high-profile, high-stakes interference was settled by the intervention of the President of the United States and the Prime Minister of France.  In another important interference for client Institut Pasteur, we challenged a patent owned by Chiron Corporation for a sensitive method of detecting HIV infection in human patients. The method has had widespread application in the diagnosis of such infections. Institut Pasteur succeeded in defending against Chiron’s attacks on its patent application and was awarded priority of invention by the PTO. This victory strengthened Institut Pasteur’s patent portfolio on HIV technology, which is licensed to benefit the public health and welfare.


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