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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 USPTO 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.

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 provided an array of IP services to SRA International, including counseling and patent and IP prosecution for its Automatic Dependent Surveillance-Broadcast (ADS-B), which is a cooperative surveillance technology in which an aircraft determines its position via satellite navigation and periodically broadcasts it, enabling it to be tracked. As part of the comprehensive IP strategy developed for SRA, Finnegan addressed both patents and trademarks for systems and devices associated with ADS-B and other SRA services.

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.

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. 


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.

Finnegan filed on behalf of client Borealis AG, two inter partes review (IPR) petitions supported by extensive expert declarations challenging a patent held by Berry Plastics Corp. The patent is directed to polypropylene formulations and products, which are often used for insulated foam drinking cups. Rather than responding to the grounds raised, Berry Plastics filed statutory disclaimers to cancel all 64 claims challenged by the IPRs.


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