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Apple filed seven inter partes review (IPR) petitions challenging several patents owned by Finnegan client VirnetX more than a year after it was served with a complaint alleging infringement of the patents. Finnegan secured non-institution decisions for VirnetX through arguments in its patent owner’s preliminary responses to the Patent Trial and Appeal Board (PTAB) that Apple was time-barred under 35 U.S.C. 315(b) from requesting IPR of the challenged patents. 


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.

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.

We supported a major chemical company’s internal 3D printing task force, which was charged with identifying potential 3D printing markets for its materials, internal uses of additive manufacturing to benefit the company, and risks presented by 3D printing.

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.

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.

The Federal Circuit reversed an anticipation ruling by the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board, which had found two claims of a Rambus patent to be “unsupported by substantial evidence.” The appellate panel sided with Finnegan client Rambus and reversed the finding. The Federal Circuit ruling is the latest development in a series of reexaminations requested by Micron.

Finnegan represented an LG Electronics (“LGE”) subsidiary involved in iris recognition technology in a patent infringement case. The patentee accused LGE of violating a license agreement, misappropriating trade secrets, and infringing the patentee’s U.S. patents. Both sides filed antitrust and unfair competition counterclaims. The patentee also filed foreign corrupt practices act claims after losing several large foreign public tenders involving the technology to LGE. Finnegan was lead counsel on both the intellectual property (patent and trade secret) and the antitrust and unfair competition claims, and secured an extremely favorable resolution of all claims, enabling LGE to purchase the critical software and continue using the underlying technology.

Finnegan client Covidien challenged all claims in a patent directed to a surgical stapler owned by Ethicon Endo-Surgery in an inter partes review petition.  The inter partes review was instituted, and following an oral hearing, the Patent Trial and Appeal Board (PTAB) found the claims to be unpatentable.


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