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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.

Finnegan has represented many healthcare companies in transactions that included strategic counseling on antitrust and patent misuse issues. For example, Finnegan counseled Applera in its strategic settlement with Roche concerning PCR technology.

Finnegan represented Toshiba against infringement allegations made by Wi-LAN regarding integrated circuit technology in Toshiba television sets. The litigation was fast-paced, with trial initially set for a year after the complaint was filed. The case settled favorably just days before the trial was to begin.

Finnegan client Under Armor received a permanent injunction against Ass Armor LLC’s use of the mark ASS ARMOR for a snowboarding short. Seeking to enjoin such use, Under Armour raised claims for trademark infringement, trademark dilution, cybersquatting, and unfair competition. In addition to asserting rights in its UNDER ARMOUR mark, Under Armour asserted rights in the mark ARMOUR, as well as a family of other ARMOUR-formative marks. It also relied on a survey showing meaningful consumer confusion arising from the use of ASS ARMOR. Ass Armor aggressively defended the case and moved to cancel three of Under Armour’s trademark registrations for protective athletic gear. The case went to trial in the U.S. District Court for the Southern District of Florida where, after opening arguments and the start of testimony, Ass Armor approached Under Armour to settle. Ass Armor promptly agreed to (1) stop selling its product; (2) destroy the infringing inventory; (3) avoid using the mark ARMOR/ARMOUR in any way or manner, for any products; and (4) withdraw all of its claims against Under Armour’s registrations. Additionally, a consent judgment was entered and signed by the court providing that Under Armour’s UNDER ARMOUR, ARMOUR, and ARMOUR-formative marks are famous, and that defendant’s use of ASS ARMOR is infringing. 

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 represented Toyota, Subaru, and Mazda, who were each sued in Eastern District of Texas by Norman IP Holdings.  The plaintiff alleged infringement of five semiconductor microprocessor patents that it had acquired from Advanced Micro Devices.  The Finnegan team mounted a strong defense against these allegations and put together a compelling invalidity challenge to all the patents.  All three vehicle manufacturers settled on favorable terms.

Finnegan successfully represented Sensio, Inc. in IPR proceedings involving three design patents directed to triple slow-cooker designs.  Sensio established that the claimed designs were in the prior art and countered the patent owner's attempt to antedate the prior art references.  After an oral argument, the Patent Trial and Appeal Board (PTAB) found all three patents to be anticipated and obvious in view of prior designs.  Finnegan also represented Sensio in the co-pending district court litigation in Kansas, which Finnegan successfully argued should be stayed during the pendency of the IPR proceedings.

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.

Finnegan represented the patent owner in infringement litigation against a former reseller of an additively manufactured product, which was making and selling infringing versions of the client’s products.

Finnegan represented Metropolitan Regional Information Systems, Inc. (“MRIS”) against antitrust counterclaims to MRIS’s claims for trademark and copyright infringement related to real estate listings. Finnegan successfully obtained summary judgment of the original antitrust counterclaims and the amended counterclaims.


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