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We helped various companies protect their 3D printing-related technology with patents, including a developer of software and systems for securely streaming digital files for 3D printing, a developer of post-3D printing processing technology, materials developers, and with a patent a developer of compositions and methods for improving objects made by material extrusion.

Finnegan successfully defended U.S. Philips Corporation against allegations that it had misused its patents relating to CD discs. After winning the jury trial, the parties tried the equitable defenses. The court rejected the infringer’s arguments that Philips engaged in improper tying of essential and nonessential patents in a patent pool.

Finnegan assisted Philips in another series of patent infringement litigations stopping unauthorized production of patented DVDs and CDs. The defendants alleged misuse by tying and bad faith litigation. The cases settled with the infringers dropping their misuse claims and agreeing to pay damages to Philips. Additionally, in related cases, Finnegan worked with Philips’s antitrust counsel in defeating the antitrust claims by motions.

Zoll Lifecor filed eight petitions for inter partes review, challenging eight patents owned by Finnegan client Philips.  Following preliminary responses filed by Philips, the Patent Trial and Appeal Board (PTAB) denied institution because Zoll Lifecor failed to identify its parent company Zoll Medical, who was in litigation with Philips, as a real party in interest. Zoll Lifecor then appealed the PTAB’s decisions to the Federal Circuit and all eight appeals were dismissed on Philips’s motion for lack of jurisdiction.

We advised government policymakers regarding the potential effects of 3D printing, including the Comptroller General of the United States and the National Association of Attorneys General.

Finnegan advised several major industrial companies, including a consumer products company, a food products company, and diversified manufacturing companies, regarding the state of the art of 3D printing technology, including how they could enter the market.

Several patents owned by Finnegan client VirnetX were challenged through seven inter partes review (IPR) petitions filed by RPX.  The facts suggested that RPX had been acting on behalf of another, unnamed time-barred entity.  In the window between the filing of the petitions and the due date for its preliminary responses, VirnetX sought discovery on the relationship between RPX and the other entity.  The Patent Trial and Appeal Board (PTAB) authorized VirnetX to file a motion for additional discovery and granted the motion—one of the few instances where the PTAB authorized, let alone granted, a motion for additional discovery.  Leveraging the discovery in its preliminary responses, VirnetX secured non-institution decisions from the Board, which found that the petitioner was acting as proxy for the time-barred entity—the true real party-in-interest.

The firm provides Phillips 66 in-depth patent prosecution and counseling services, including filing applications, and reviewing and responding to office actions and observations filed by third parties at the European Patent Office. Formerly part of ConocoPhillips, Phillips 66 produces natural gas liquids and petrochemicals.

Finnegan has successfully defended API and its engine oil certification program in numerous district court cases and before the TTAB. In one instance, we launched a multipart, simultaneous attack on twelve defendants, filing counterfeiting, trademark infringement, and false advertising claims in two different federal courts. We obtained multiple preliminary and permanent injunctions with each defendant agreeing to settlement. In another case, defendants falsely claimed their engine oil was licensed by API to use the API engine oil quality certification marks, which denotes an oil meets the stringent API engine oil performance standards. Ultimately, the defendants admitted to counterfeiting API’s engine oil quality certification marks and making false performance claims; they agreed to a 10-year ban on bottling or marketing any engine oil for diesel engines and for use in gasoline engines in cars, vans, trucks, and motorcycles; and they paid API’s litigation costs.

We have represented Bauer Hockey for more than 15 years and have a long-standing institutional knowledge of Bauer and its industry. As part of our management of Bauer Hockey’s U.S. trademark portfolio, we handle searching and clearance, filing and prosecution, and post-registration maintenance. We also advise Bauer on product configurations and other non-traditional trademarks. Additionally, we handle contested matters for Bauer, including oppositions and cancellation actions before the Trademark Trial and Appeal Board (TTAB) and court actions.

We advised a company that sells materials for use with 3D printers on its use of trademarks owned by 3D printer companies for which it sells such materials


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