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Finnegan successfully represented the patentee in a patent infringement lawsuit involving multiple patents in federal district court, obtaining a jury verdict that each of the patents was infringed and that none of them was invalid. After the jury trial, the defendant filed a series of reexamination requests for each of the patents, resulting in multiple reexamination proceedings (both ex parte and inter partes). In connection with these reexamination proceedings, Finnegan worked with prosecution counsel to devise a reexamination strategy, to draft responses to office actions and supporting expert declarations, and to prepare prosecution counsel for PTO interviews (including preparation of experts for the interviews). As a result of Finnegan’s efforts, the PTO has agreed to issue reexamination certificates, with minor amendments, for several of the patents, and we expect the same result for the remaining patents. In the interim, Finnegan’s client settled the infringement lawsuit, receiving substantial compensation based on our victory in federal court.

Matrix Motor Company, Inc. alleged that the Toyota MATRIX passenger car infringed the MATRIX trademark allegedly used for race cars and related components and parts. The plaintiff sought an injunction and damages, but the judge granted our motion for summary judgment, finding no likelihood of confusion between the parties’ respective uses of the MATRIX mark.

We defended Topcon Instrument against a multipatent ITC case brought by Cambridge Instruments involving devices for diagnosing glaucoma. In a one-week trial held just two months after the case began, we established that Topcon’s instruments were not covered by the patents, and the ITC judge thus denied Cambridge Instruments’ motion for temporary relief.

Home Diagnostics Inc. (now Nipro Diagnostics) is one of the largest cobranders of blood glucose products for diabetics and offers low-cost alternatives to products offered by competitors. After a three-year battle with Roche, the district court granted a summary judgment of noninfringement in favor of HDI, concluding that no reasonable juror could find that HDI products infringed Roche's patent relating to blood glucose monitors. The first phase of the case had concluded successfully for HDI when the court ruled, following a bench trial, that Roche's other patent-in-suit had been obtained by inequitable conduct and is unenforceable.

The district court had granted summary judgment against firm client Origin (a subsidiary of Guidant Corp.) and a jury awarded nearly $13 million in damages, finding that the infringement was willful. The matter involved infringement of a patent on a method for using a balloon to create a space for surgery. On appeal, the Federal Circuit agreed with our interpretation of the patent claims and vacated both the judgment of infringement and the jury’s verdict that the infringement was willful.

Finnegan successfully represented client DuPont Nutrition Systems in litigation involving generically engineering alpha-amylases proteins, enzymes used in a variety of industries to prepare commercial products like ethanol, sweeteners, and laundry detergent. Novozymes sued DuPont for infringing its patent and, on appeal, we successfully obtained a judgment that Novozymes’ patent was invalid under 35 U.S.C. § 112 for failing to comply with the written description requirement.

A startup company providing the technology for LCD panels faced a difficult licensing challenge in the worldwide fragmented production environment. We assisted the client in formulating a licensing program that provided necessary rights to the various levels of value production in countries around the world while avoiding exhaustion of the client’s IP rights through unrestricted distribution of components.

The Eastern District of Virginia ruled in favor of Finnegan clients SplitFish AG, SplitFish Gameware, Inc., and Nabon Corp., granting a preliminary injunction against Bannco Corp. that prohibits Bannco from selling video game controllers that incorporate or use software code copied from our clients' "FragFX" video game controllers. The case is unusual in that the software in question was developed in China and the court applied Chinese law in order to establish that our client was the copyright owner.

After a jury verdict against Conair for infringement of a patent on a safety mechanism in a hairdryer, the district court increased the damages and entered a judgment of over $46 million. On appeal, Finnegan achieved a total victory for Conair by obtaining a reversal of the infringement finding in the Federal Circuit.

Our client had the technology and the IP but not the market presence. A major pharmaceutical company needed a portfolio of diagnostic products. We assisted our client in a lengthy negotiation over a partnership arrangement that allowed both companies to prosper. While IP was an important part of the transaction, we assisted in creating contractual protection of the client’s business interests, particularly in the event of a separation.


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