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We represented the University of Missouri and Covidien (formerly Tyco Healthcare) against C.R. Bard and VasCath, successfully obtaining an award of priority against the patentee in this longrunning interference. Navigating this interference through the PTO, two district courts and two trips to the Federal Circuit, we were able to achieve finality of the award of priority and secure important patent rights for our client. The technology at issue was a type of hemodialysis catheter for removing toxins from the blood of patients with kidney failure.

Finnegan obtained urgent relief for AMC, which was fighting for its very existence. In addition to stopping Ameriquest's use of AMC, Finnegan negotiated the assignment of several of Ameriquest's federal trademark applications and registrations to AMC. AMC Mortgage Corporation is a small mortgage company founded over twenty years ago with the goal of becoming one of the country's most trustworthy and dependable mortgage companies. In contrast, Ameriquest Mortgage Company was the largest mortgage company in the country and had one of the worst reputations for customer service. Ameriquest began using the mark AMC for mortgages and related services. As a result, and due to Ameriquest's enormous size and pervasive use of the mark AMC, consumers began associating the mark with Ameriquest instead of AMC. AMC brought an action for trademark infringement, unfair competition, and cybersquatting against Ameriquest and its subsidiaries. Several months into the case, consumer criticism against Ameriquest grew and a potential sale to Citigroup was widely reported in the mainstream media. As a result, the potential harm to AMC's reputation increased exponentially and preliminary relief became urgent. AMC filed a preliminary injunction motion and, as a result, Ameriquest entered into a Court-approved judgment requiring Ameriquest to cease all use of AMC.

Finnegan manages portfolios of U.S. and foreign patent applications for Artaic LLC, whose robotic systems create state of the art two-dimensional and three-dimensional mosaics.  The robotic systems use novel combinations of hardware and software for arranging tiles and creating custom designs.

In a case that was settled ”on the courthouse steps,” Finnegan was able to obtain for its client BIAX Corporation a favorable settlement with Intel. During claim construction, BIAX’s construction prevailed on the issues important for infringement, which helped lead to the favorable settlement.

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. 

Finnegan client Covidien challenged all claims in a patent directed to a surgical stapler owned by Ethicon Endo-Surgery in an inter partes review petition.  The inter partes review was instituted, and following an oral hearing, the Patent Trial and Appeal Board (PTAB) found the claims to be unpatentable.

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.

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.

On the third day of trial in the Eastern District of Texas, the judge directed a verdict against the plaintiffs and in favor of Finnegan clients ADT Security Systems, Inc. and Digital Security Controls, Ltd. on all claims.  The plaintiffs were seeking damages for the alleged infringement of a patent relating to a telephone line coupler circuit.  The judge’s ruling for the defendants followed in the wake of a number of favorable rulings on pretrial motions that narrowed the scope of the case.

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.


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