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Finnegan
Tyler M. Akagi
Of Counsel
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vCard
  • 901 New York Avenue, NW
  • Washington, DC 20001-4413
+1 202 408 4385
tyler.akagi@finnegan.com tyler.akagi@finnegan.com

Tyler M. Akagi

Of Counsel

  • +1 202 408 4385 +1 202 408 4385
  • tyler.akagi@finnegan.com tyler.akagi@finnegan.com
  • 901 New York Avenue, NW
  • Washington, DC 20001-4413
  • vCard
Tyler Akagi is an experienced intellectual property litigator, who represents clients in disputes in the U.S. district courts and before the U.S. Patent and Trademark Office. He also advises clients on a broad range of intellectual property issues outside of the litigation context, helping them procure patent protection for their valuable inventions and navigate potential intellectual property obstacles.

Tyler focuses on patent litigation and client counseling in the mechanical, industrial manufacturing, and alternative energy fields.

Tyler represents clients in intellectual property disputes before U.S. district courts, the U.S. Patent and Trademark Office (USPTO), and the U.S. Court of Appeals for the Federal Circuit. He manages attorney and support teams throughout every phase of patent litigation. Tyler has extensive experience developing litigation strategies, taking complex international discovery, and working with technical and damages experts. He also has broad experience representing clients in inter partes review (IPR) proceedings before the Patent Trial and Appeal Board (PTAB), from drafting petitions through oral arguments and appeals.

Tyler takes particular pride in his persuasive writing abilities, and his knack for explaining otherwise complicated legal issues in straightforward, easily understood terms. Litigation clients he works with range from individual inventors to multinational corporations, and he tailors his representation to each client's unique needs.

In addition to litigation matters, Tyler advises clients on their U.S. and international patent portfolios, provides counsel to protect clients against claims of patent infringement, and performs due diligence in support of intellectual property acquisition.

Et Cetera

  • Served as an intern at the U.S. Department of Transportation, Office of Hearings, Summer 2005.
  • Graduate Research Fellow at the College of William and Mary School of Law, 2004-2007.

 

Experience

Certain Variable Speed Wind Turbines

Member of team defending client Mitsubishi Heavy Industries before U.S. International Trade Commission (ITC) against GE's assertion of wind turbine patents. Successfully obtained decision of no violation of § 337 before the ITC. On appeal, Federal Circuit affirmed noninfringement of one GE patent, and remanded to the ITC for further proceedings on a second patent.

337-TA-641, ITC, Judge Charneski
10-1223, Fed. Cir., Judges Linn, Newman, Rader

Certain Thermoplastic-Encapsulated Electric Motors, Components Thereof, and Products and Vehicles Containing Same

Finnegan successfully defended Toyota Motor Corp. and Toyota Motor Sales, U.S.A., Inc. in a major International Trade Commission (ITC) action brought by Intellectual Ventures (“IV”), asserting five patents against certain thermoplastic encapsulated electric motors allegedly used in Toyota’s vehicles. After a full trial on the merits, Finnegan successfully secured an initial determination from the Administrative Law Judge (ALJ) of no violation of Section 337. Simultaneously, Finnegan secured final written decisions in a number of concurrent inter partes reviews ("IPRs") that the asserted claims are unpatentable.

337-TA-1052; 337-TA-1073, ITC, Judges Lord, Pender, Bullock
IPR2017-01494, -01495, -01537, -01538, -01539, PTAB, Judges Droesch, Weiker, Hudalla

Nestle USA, Inc. v. Steuben Foods, Inc.

Represented Nestlé USA in three appeals from inter partes review (IPR) decisions by the Patent Trial and Appeal Board (PTAB). In two cases, the Federal Circuit vacated the PTAB decisions upholding the patentability of the challenged claims and remanded the cases. In the third case, the Federal Circuit affirmed the PTAB’s finding that the challenged claims were unpatentable.

16-1750, Fed. Cir., Judges Hughes, Mayer, Reyna
17-1193, Fed. Cir., Judges Dyk, Hughes, Reyna
17-1290, Fed. Cir., Judges Dyk, Hughes, Reyna

Steuben Foods, Inc. v. Nestlé USA, Inc.

Successfully represented Nestlé in defense of district court litigation alleging patent infringement of five patents related to aseptic packaging. Nestlé won at trial and the case settled favorably while on appeal. 

1:13-cv-00892, W.D.N.Y., Judges McCarthy, Skretny, Wolford

General Electric Co. v. Wilkins

Member of team that won summary judgment and successfully defended against claims of patent ownership. Decision on appeal.

1:10-cv-00674, E.D. Cal., Judges O'Neill, Thurston

General Electric Co. v. Mitsubishi Heavy Industries, Ltd.

Member of team that won favorable summary judgment ruling of patent invalidity. Final decision pending.

3:10-cv-00276, N.D. Tex., Judges Fish, Furgeson

More

News

Media Mention

Food-Packaging Patent Cut After Fed. Circ. Win for Nestle Food-Packaging Patent Cut After Fed. Circ. Win for Nestle

August 19, 2019

Law360

Media Mention

Fed. Circ. Backs Nestle in Food Packaging Patent Cases Fed. Circ. Backs Nestle in Food Packaging Patent Cases

March 13, 2018

Law360

Professional Activities

  • American Bar Association
  • Virginia Bar Association
Admissions and Education

Admissions

  • U.S. Patent and Trademark Office
  • District of Columbia
  • Virginia
  • U.S. Court of Appeals, Federal Circuit

Education

College of William and Mary School of Law
J.D., 2007
University of Oklahoma
B.S., Mechanical Engineering, with honors, 2004

Tyler's Practices

Appeals, Issues, and Legal Strategy
Appeals from the PTAB
Federal Circuit and Supreme Court Appeals
Global IP Enforcement, Litigation, and Trials
Arbitration and Other ADR
Federal Circuit and Supreme Court Appeals
ITC Section 337 Investigations and Trials
Patent Litigation and Trials
Pretrial Strategies
Patent Office Invalidation Proceedings
PTAB Invalidation Proceedings: IPR and PGR
Prosecution and Portfolio Management
Due Diligence
IP Portfolio Management
Opinions and Counseling
Patent Drafting and Prosecution

Tyler's Industries

Chemicals, Industrials, and Materials
Manufacturing
Consumer Goods and Services
Consumer Products
Energy
Clean Energy and Renewables
Transportation and Logistics
Automotive and Smart Mobility Tech

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