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In a case brought by Constellation IP, LLC in the Eastern District of Texas, all of the named defendants except for our client, FedEx, settled before or shortly after the case management conference.  FedEx, on the other hand, defended the case up until approximately two months before trial.  Following a favorable Markman ruling, we completed discovery (fact and expert) and filed multiple summary judgment motions.  We also obtained reexamination of the asserted patent, and the Board of Patent Appeals and Interferences affirmed multiple rejections of the claims based on our invalidity contentions.  The plaintiff sought nearly $1 billion in damages but settled for a small fraction of this demand.

Petroleum Equipment Manufacturing Company (PEMCO) had unsuccessfully sought to have oil drilling and oil well equipment certified by Finnegan client American Petroleum Institute (API). Despite the fact that it was not certifi ed, PEMCO placed a counterfeit of the API certifi cation mark on its products. API objected and PEMCO agreed to cease using the counterfeit API certification mark. API later discovered that PEMCO was continuing to use the counterfeit API certification mark and retained Finnegan to sue PEMCO for trademark infringement, counterfeiting, and breach of contract. PEMCO agreed to a permanent injunction against further use of the API marks and payment of API’s costs. This result successfully stopped a counterfeiting operation that falsely passed off uncertified products as meeting API’s safety standards.

Seoul Semiconductor received favorable rulings on several important motions in its U.S. International Trade Commission (ITC) case led by Finnegan against Nichia Corporation, paving the way to a valuable cross-licensing deal as part of a settlement ending years of litigation in courts across the globe.  Finnegan represented SSC in cases from the Eastern District of Texas to the Central District of California, as well as at the Federal Circuit.  Shares in SSC rose fifteen percent on the Korea Exchange following the announcement.

When a leading patent management company wanted to generate royalties from patents developed and owned by an international group of research and operating companies, it turned to Finnegan for assistance in setting up and running a licensing and enforcement program involving a full range of activities—analyzing the patents, identifying infringers in the marketplace, negotiating and drafting license agreements, litigating to enforce the patents, and providing strategic advice throughout the process.

After more than a year of deliberations, Judge Dennis Saylor of the U.S. District Court for the District of Massachusetts handed a victory to firm client DeWalch Technologies, Inc. of Houston, Texas.  In the case, Inner-Tite Corp. of Holden, Mass. accused DeWalch of infringing a patent directed to a locking device for an electric utility meter box.   At trial, Finnegan presented evidence of no literal infringement and no infringement under the doctrine of equivalents.  The court found in favor of DeWalch on all counts.

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.

Finnegan represented Winbond Electronics Corporation in several antitrust cases filed by the U.S. Department of Justice and by class-action plaintiffs in numerous states and Canadian provinces. The allegations involved price fixing in the DRAM industry. Finnegan successfully showed that Winbond was not involved in the discussions that formed the basis of the Justice Department investigation, and therefore negotiated settlements in most of the cases, either at no cost to Winbond or for very nominal settlement amounts.

Finnegan client FedEx was accused of patent infringement in two separate litigations in the Northern District of California, where IpVenture asserted two related patents directed to processes used in connection with tracking packages with the aid of a device called “SenseAware,” which enables users to track the location and certain conditions of related packages. On behalf of FedEx, Finnegan filed an inter partes reexamination on one patent, and an inter partes review (IPR) on the other at the U.S. Patent and Trademark Office (USPTO). The USPTO granted both petitions, and the Patent Trial and Appeal Board (PTAB) affirmed the rejection of all claims of the reexamined patent and invalidated all claims of the second patent during the IPR. The district court cases were stayed during the USPTO proceedings and during IpVenture’s appeal to the Federal Circuit, which affirmed both of the PTAB’s decisions.

A jury in the U.S. District Court in Delaware found that French Door refrigerators produced by Finnegan client LG Electronics do not infringe a Whirlpool patent, but found that some patent claims covered certain earlier-generation LG side-by-side refrigerators, which LG is no longer making. The jury determined that LG was not willfully infringing these claims.  Another Whirlpool patent asserted against LG was found invalid.  Whirlpool was awarded $1.78 million for infringement of the earlier-generation side-by-side refrigerators, an amount well below Whirlpool’s quest for total damages of more than $22 million.

Finnegan represented Mitsubishi Heavy Industries, Ltd. and Mitsubishi Power Systems America, Inc. against General Electric in a U.S. International Trade Commission investigation. The ITC ruled in favor Mitsubishi, terminating a Section 337 investigation based on a General Electric complaint alleging patent infringement by Mitsubishi’s 2.4 Megawatt variable speed wind turbines. The Commission ruling of no violation overturned an earlier finding by an ITC administrative law judge that two of GE’s patents had been violated.


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