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Finnegan successfully defended AOPA in the District of Oregon against the assertion of patents for computerized flight planning and web-based flight navigation. We obtained a swift dismissal of the entire case, avoiding lengthy litigation and licensing attempts by a notorious non-practicing entity (NPE).

Seoul Semiconductor received favorable rulings on several important motions in its U.S. International Trade Commission (ITC) case led by Finnegan against Nichia Corporation, paving the way to a valuable cross-licensing deal as part of a settlement ending years of litigation in courts across the globe.  Finnegan represented SSC in cases from the Eastern District of Texas to the Central District of California, as well as at the Federal Circuit.  Shares in SSC rose fifteen percent on the Korea Exchange following the announcement.

When a major news organization was accused of copyright infringement, it relied on Finnegan to evaluate the claims and defend against the spurious suit in the Eastern District of Michigan. Finnegan's mediation brief established that our client did not infringe, and a favorable settlement followed.

In its highly anticipated Bilski v. Kappos decision, issued on June 28, 2010, the U.S. Supreme Court overturned the U.S. Court of Appeals for the Federal Circuit's "machine−or−transformation" test, which required that a patentable process either be tied to a machine or apparatus or involve a transformation of a particular article into a different state or thing.   The Court also affirmatively recognized that "business methods" are not categorically excluded from the scope of 35 U.S.C. § 101.   The decision was the culmination of Finnegan’s efforts on behalf of the applicants in In re Bilski, which began with the Supreme Court granting Finnegan’s petition for a writ of certiorari filed in June 2009.  The petition sought to overturn a decision issued on October 30, 2008, by the Federal Circuit which set forth a test requiring that a patentable process either be tied to a machine or apparatus or involve a transformation of one thing into something else.  While the Supreme Court affirmed the rejection of the Bilski business method patent application, its decision overturning the Federal Circuit’s machine-or-transformation test was a victory for patents on business method and software.  Finnegan made the oral argument before the Court on November 9, 2009. 

Nuvera Fuel Cells retained Finnegan to manage all of the company's IP portfolio assets, which were recently consolidated. Much of the management is focused on the procurement of patents, both U.S. and foreign, directed to various aspects of fuel cell technology.

Finnegan represented Metropolitan Regional Information Systems, Inc. (“MRIS”) against antitrust counterclaims to MRIS’s claims for trademark and copyright infringement related to real estate listings. Finnegan successfully obtained summary judgment of the original antitrust counterclaims and the amended counterclaims.

Connectivity is crucial for Internet-of-Things (IoT) devices. Finnegan has considerable experience dealing with standards-essential and non-essential patents covering telecommunications and network protocols, including asserting and defending against such patents. We have helped clients develop and license patent portfolios on various network technologies, such as wireless networks, the Internet, and other network architectures.

Loramax filed patent infringement suits in the Eastern District of Texas against fifty companies, claiming that virtually any company email distribution service infringed an expired patent Loramax obtained. After Finnegan pressed an invalidity defense, which included an inter partes review (IPR), and filed motions to dismiss asserting invalidity under Section 101, Loramax voluntarily dismissed its claims against FedEx.

One year after accusing longstanding Finnegan client FedEx of patent infringement in the Eastern District of Texas, non-practicing entity Catharon IP dismissed its claims against FedEx with prejudice. Catharon IP claimed that its patent covered a common use of Javascript in today’s websites. The dismissal came after Finnegan attorneys filed two IPRs challenging the validity of Catharon’s patent.

When Walgreen Co. faced a damage award of nearly $20 million, including prejudgment interest, for infringement of a patent on a “head chair,” the company turned to Finnegan. Although Walgreen had sold only $220,000 of the product, a jury awarded over $1 million in lost profits and another $10 million in future lost profits, which grew to nearly $20 million with interest. On appeal, the Federal Circuit agreed with our argument that the jury award, and the expert testimony on which it was based, was so speculative that it could not stand. The court granted a remittitur, reducing the damage award to $220,000—the amount of actual sales—and further reversed the award of prejudgment interest as it was based on future sales that had not occurred.


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