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Finnegan successfully represented client Syneron Medical Ltd. against Viora Ltd. and Viora Inc. in a patent infringement action in the E.D. Texas. A year after the suit was initiated and just a few months away from a trial, Viora acknowledged the validity of Syneron’s patent and agreed that for the next 12 years, it will pay Syneron royalties of 7.5% to 15%, depending on the number of U.S. sales of Viora systems that apply vacuum together with radio frequency energy for body contouring, cellulite reduction, skin tightening, and circumferential reduction.

When an organization that certifies medical personnel discovered that its secure certification exam had been compromised, Finnegan acted quickly to minimize the harm by obtaining an expedited certificate of registration from the U.S. Copyright Office and negotiating a favorable settlement for the client, including reimbursement of the organization’s attorneys’ fees and costs of dealing with the compromised exam.

Finnegan represented GlaxoSmithKline (“GSK”) in various patent infringement litigations protecting GSK’s Paxil® antidepressant drug against many generic drug manufacturers that filed ANDA suits seeking to sell generic versions of the drug. Finnegan worked with GSK’s antitrust counsel to settle multiple litigations and minimize their antitrust risk. After one of those settlements, the generic drug manufacturer’s API supplier brought an antitrust suit challenging the settlement. Finnegan worked with GSK’s antitrust counsel to successfully defeat the antitrust claim in a motion to dismiss strongly upholding the right of patent owners to settle ANDA litigations. Finnegan also worked with GSK’s antitrust counsel in defending related class action antitrust suits brought by other litigants based on patent infringement litigations.

Finnegan client AOL reached a record-setting agreement with Microsoft to receive $1.056 billion for selling over 800 patents and granting Microsoft a license on its remaining 300 patents and patent applications.  We worked closely with AOL over several years to strategically build and strengthen its patent portfolio, towards its monetization goals.  Our strategic patent planning and prosecution services involved reviewing and processing hundreds of transferred cases.  The team analyzed the portfolio and implemented a process for strengthening it—identifying key inventions, studying products and trends in the market, drafting claims with an eye toward enforcement, and conducting interviews with U.S. Patent and Trademark Office examiners to obtain prompt allowances. We also helped AOL identify monetization opportunities and develop offensive and defensive patent strategies.  When AOL’s board of directors authorized a sale process for the portfolio, we worked with AOL’s in-house patent team and top executives and a team of advisors, handling numerous critical tasks and providing guidance throughout the negotiations and bidding process.

Finnegan represented BTG in defending its granted European patent in an appeal by Kreussler against the decision of the EPO to reject its opposition. The patent relates to BTG’s Varithena sclerotherapy foam product for treatment of varicose veins that has recently received regulatory approval in the U.S. During the opposition, we argued that the experimental evidence produced by Kreussler was deliberately misleading. We presented our own evidence showing why the experiments performed by Kreussler failed and how merely following the explicit teaching of the patent would avoid such failure. At appeal, Kreussler was limited to a single prior art document and only a subset of the granted claims was considered to be challenged. At the appeal hearing in surprisingly quick fashion, the EPO denied Kreussler’s grounds of appeal and maintained the patent in its granted form.

Finnegan successfully represented Capsugel Belgium in one of the first completed inter partes review (IPR) proceedings at the U.S. Patent and Trademark Office (USPTO).  Capsugel challenged all 26 issued claims of a patent owned by Innercap Technologies, and an adverse judgment was entered by the Patent Trial and Appeal Board (PTAB) cancelling all of the claims instituted as part of the post-grant challenge. The patent was directed to a pharmaceutical capsule.

Andrx Pharmaceuticals, Inc. (“Andrx”) filed suit against Finnegan client Elan Corporation PLC, alleging that Elan violated the federal antitrust Sherman Act and various Florida antitrust statutes by entering into a settlement agreement in an Abbreviated New Drug Application (“ANDA”) patent infringement litigation that Elan brought against another company, and by initiating an ANDA litigation against Andrx relating to the same patent. Finnegan obtained judgment on the pleadings in Elan’s favor on all issues at the outset of the case. The U.S. Court of Appeals for the Eleventh Circuit affirmed the majority of the holdings, including that the Noerr-Pennington doctrine shielded Elan from Andrx’s patent misuse claims relating to Elan’s assertion of its patent against Andrx. The Eleventh Circuit remanded the settlement agreement holding for further proceedings. Andrx ultimately agreed to dismiss the claim.

WebXchange, Inc. filed suit against FedEx in early 2008, alleging infringement of three patents that WebXchange claimed to generally relate to enabling all transactions over the Internet. The named inventor is Dr. Lakshmi Arunachalam and the asserted patents belong to a portfolio owned in part by WebXchange and in part by a related company named Pi-Net International. Reexamination requests were filed and granted against all of the asserted patents. After nearly four years of litigation, and WebXchange’s ten litigation and prosecution firms, Finnegan secured a dismissal with prejudice of the suit against FedEx, and without the need for claim construction, dispositive motions or a trial.

The Board of Patent Appeals and Interferences of the U.S. Patent and Trademark Office issued a ruling that Whirlpool Corp. had not proven that it invented the concept of a refrigerator dispenser with an extendable tray and water spigot before Finnegan client LG Electronics Inc.  Whirlpool sought the PTO Board’s ruling as part of its effort in various forums to invalidate LG’s patents directed to refrigerator dispensers.  The PTO Board agreed with LG that Whirlpool failed to prove that its prototype refrigerator worked for its intended purpose, and therefore was not a valid reduction to practice before LG’s earliest application was filed. Thus, LG’s involved patents remain valid, and the PTO Board entered judgment that Whirlpool’s pending claims are “finally refused.”

Finnegan client Fidelity National Information Services Inc. (FIS) successfully challenged four banking patents owned by its rival financial-services-technology provider Fiserv Inc. FIS petitioned the Patent Trial and Appeal Board (PTAB) for covered business method patent review (CBM). The PTAB said the four patents—directed to processing payment instructions, providing electronic biller notifications, and processing interbank fund-transfer transactions—cover abstract ideas that, in light of the Supreme Court’s decision on patentability in Alice Corp. v. CLS Bank International, are too abstract to be patentable. The PTAB decisions stem from a suit filed in January 2012, in which Fiserv subsidiaries CheckFree Corp. and CashEdge Inc. accused FIS and its subsidiary Metavante Corp. of infringing the patents. Following a Markman hearing, the court stayed the litigation while the PTAB reviewed the Fiserv patents. 


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