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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.

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.

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.

The Patent Trial and Appeal Board (PTAB) reversed a rejection of all patent claims in a patent application related to important neurodiagnostic device features for concussion and other brain abnormality assessments. Finnegan argued throughout the examination that the examiner had interpreted a claim limitation too broadly, and failed to appreciate the advance that the application claimed. After oral argument, the PTAB judges agreed and reversed the examiner's rejection on all grounds.

Finnegan client S3 Graphics Co. Ltd. ("S3G"), a subsidiary of HTC Corporation, filed an action in the District of Delaware against defendants Advanced Micro Devices, Inc., ATI Technologies ULC, and ATI International SRL. S3G sought a declaratory judgment, including damages, on defendants’ claims to ownership of or license to certain valuable S3G patents related to high-performance graphics processing for video games and other graphics intensive software applications. The court ruled on summary judgment that S3G owns the disputed patents, and that the defendants have no ownership interest or express license to the disputed patents.

The Patent Trial and Appeal Board (PTAB) reversed a rejection of all patent claims in an inter partes reexamination filed against an Asetek patent related to pioneering computer cooling technology. Asetek previously asserted the patent in two separate district court litigations in the Northern District of California. Finnegan handled both cases, including one that went to a jury trial decision. Throughout the reexamination, Finnegan argued that the examiner had applied the wrong standard to interpret the claims, which resulted in an overly broad construction. The PTAB judges agreed and reversed the examiner on all issues, thus preserving the patent in full force.

The Washington University in St. Louis (WashU) filed a suit in the District of Delaware alleging that Finnegan client Wisconsin Alumni Research Foundation (WARF) had breached an inter-institutional agreement between the two parties, which pertained to a jointly owned pharmaceutical method of use patent for the treatment of renal osteodystrophy. Because the inter-institutional agreement between WashU and WARF was executed in 1995 and the patent was licensed to Abbott in 1998, Finnegan moved for summary judgment and dismissal on the grounds that WashU’s contract claims were barred by the applicable statues of limitations. The presiding judge dismissed the case, finding no evidence of inequitable, unfair, or misleading conduct on the part of WARF in its interactions with WashU, and that all claims were time-barred by the applicable statutes of limitations.

In two related appeals from inter partes review (IPR) proceedings, Finnegan successfully persuaded the U.S. Court of Appeals for the Federal Circuit to vacate and remand the Patent Trial and Appeal Board’s (PTAB) decisions that adversely affected three patents related to coaxial cable connectors owned by client PPC Broadband. In the first appeal, for a majority of the claims, the Federal Circuit agreed with PPC that the PTAB overlooked a key claim limitation, and it therefore vacated and remanded the obviousness decision. For the remainder of the claims in that appeal, the court affirmed the claim construction ruling as the broadest reasonable interpretation, but noted that it would not be the “correct” construction had the Phillips standard applied. Finally, the court also agreed with PPC that the PTAB erred in disregarding much of the evidence on secondary considerations, including the commercial success of the accused products. In the second appeal, the court likewise agreed with PPC and vacated the PTAB’s claim construction as being unreasonable, stating that while the construction may have been the broadest interpretation, it was not the broadest reasonable interpretation in light of the specification. The Federal Circuit thus vacated and remanded the invalidity determinations in both appeals.

The U.S. Court of Appeals for the Federal Circuit found in favor of Finnegan client Unified Patents Inc., in Unified’s first case before the court. After Unified prevailed in an inter partes review (IPR) before the Patent Trial and Appeal Board (PTAB), the patent owner, Clouding Corp., appealed the Board’s decision that Clouding’s claims relating to file synchronization and backup were unpatentable. Clouding also appealed the Board’s denial of its motion to amend. Less than two weeks after oral argument, the Federal Circuit summarily affirmed the PTAB’s final written decision in favor of Unified.

Finnegan client Under Armor received a permanent injunction against Ass Armor LLC’s use of the mark ASS ARMOR for a snowboarding short. Seeking to enjoin such use, Under Armour raised claims for trademark infringement, trademark dilution, cybersquatting, and unfair competition. In addition to asserting rights in its UNDER ARMOUR mark, Under Armour asserted rights in the mark ARMOUR, as well as a family of other ARMOUR-formative marks. It also relied on a survey showing meaningful consumer confusion arising from the use of ASS ARMOR. Ass Armor aggressively defended the case and moved to cancel three of Under Armour’s trademark registrations for protective athletic gear. The case went to trial in the U.S. District Court for the Southern District of Florida where, after opening arguments and the start of testimony, Ass Armor approached Under Armour to settle. Ass Armor promptly agreed to (1) stop selling its product; (2) destroy the infringing inventory; (3) avoid using the mark ARMOR/ARMOUR in any way or manner, for any products; and (4) withdraw all of its claims against Under Armour’s registrations. Additionally, a consent judgment was entered and signed by the court providing that Under Armour’s UNDER ARMOUR, ARMOUR, and ARMOUR-formative marks are famous, and that defendant’s use of ASS ARMOR is infringing. 


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