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We advised major industrial companies on how to address challenges to their profitable parts businesses that are under pressure from replacement and customized parts that may be 3D printed by customers and others, including developing patent claiming strategies and ways to adapt their business models.

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. 


Finnegan client VirnetX served Microsoft with a complaint alleging infringement of the challenged patents more than a year before Microsoft filed its three inter partes review (IPR) petitions.  However, the litigation was settled and dismissed after trial but before a final decision.  Microsoft argued that its petitions were not barred because its counterclaims and affirmative defenses regarding invalidity in the litigation were dismissed “without prejudice.”  In its preliminary responses, VirnetX argued that the manner in which counterclaims and affirmative defenses are dismissed is irrelevant for 35 U.S.C. 315(b)’s time bar—it is the infringement allegations that matter.  Agreeing with VirnetX, the Patent Trial and Appeal Board (PTAB) denied institution, in part, because the infringement allegations in the complaint were dismissed “with prejudice” and the parties were in different relative legal positions than before the complaint was filed.

Finnegan filed on behalf of client Borealis AG, two inter partes review (IPR) petitions supported by extensive expert declarations challenging a patent held by Berry Plastics Corp. The patent is directed to polypropylene formulations and products, which are often used for insulated foam drinking cups. Rather than responding to the grounds raised, Berry Plastics filed statutory disclaimers to cancel all 64 claims challenged by the IPRs.

The U.S. International Trade Commission (ITC) issued a final determination in favor of Finnegan client SKC Kolon PI, Inc. and SKC, Inc. (collectively "SKC").  Kaneka Corporation filed a complaint against SKC in the ITC, alleging unfair trade practices and infringement of four patents directed to polyimide films.  Administrative Law Judge Robert K. Rogers, Jr. found all of the asserted claims to be not infringed, invalid, and/or failing to meet the domestic industry requirements, and therefore, no violation of Section 337 of the Tariff Act of 1930, as amended.  After a partial review, the Commission affirmed Judge Rogers' decision.

An administrative law judge with the U.S. International Trade Commission (ITC) found that cold cathode fluorescent light ("CCFL") inverter circuits produced by Finnegan client Monolithic Power Systems do not infringe a patent owned by complainant O2 Micro.  O2 Micro had previously withdrawn infringement allegations based on three other patents earlier in the case.  The ALJ also found that laptop computers and flat screen monitors incorporating the accused MPS chips sold by Finnegan clients ASUSTeK Computer and ASUS Computer International did not infringe the same patent.  Further, the ALJ found that O2 Micro's own products do not practice the patented technology and, as a result, there was no domestic industry, a necessary showing in an ITC case.  MPS and its customers were, therefore, found to have not violated Section 337.

When its right to bring certain vehicles into the United States was challenged, Toyota needed fast and decisive relief. We represented Toyota before the ITC and argued that there was no violation of Section 337 or patent infringement. The ITC adopted trial findings of patent invalidity and no infringement, and then terminated the investigation, clearing the way for more hybrid vehicles in the United States.

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.

Apple filed two inter partes review (IPR) petitions challenging one patent owned by Finnegan client VirnetX, seeking to join its petitions to petitions filed by another petitioner challenging another VirnetX patent.  Based on Finnegan’s arguments in the preliminary responses, the Patent Trial and Appeal Board (PTAB) denied the motions for joinder and denied institution on the basis that the petitions were time-barred under 35 U.S.C. 315(b).

Finnegan secured a victory for Juniper Networks in the Northern District of California against Florida-based Juniper Media in a trademark infringement and cybersquatting law suit. Defendant moved to dismiss (or to transfer) the trademark infringement and cybersquatting case claiming lack of jurisdiction on the grounds that its website was a passive website and the majority of the company’s operations were based in Florida. Judge William Alsup ruled in Juniper Networks’ favor finding that the Defendant’s repeated representations of being located in, or having connections with, Silicon Valley in its Twitter account, its Linked In page, and its CEO’s personal web pages was sufficient to demonstrate that it expressly aimed its activities at the Northern District. The investigative efforts of our inhouse investigation team were critical to building the case for personal jurisdiction. Following Juniper Networks’ win on the jurisdictional issue, the parties ultimately reached a settlement pursuant to which Juniper Media agreed to change its name, abandon its trademark applications, and transfer its domain names to the client. The case was ultimately dismissed following the defendant’s completion of all phase-out activities.


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