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During a shoe industry trade show, our client Nimco discovered that Spring Footwear was promoting a new line of shoes that incorporated Nimco's proprietary outsole design. The counterfeit outsole was identical to Nimco's outsole in every way, not only encompassing the design elements, but also containing Nimco's logo and its patent numbers. To avoid future displays of the counterfeit outsole, Nimco asked us to immediately file suit against Spring Footwear. As a result of the litigation, Spring Footwear withdrew the counterfeit shoe from the market and commenced settlement discussions. The case has since settled in favorable terms for our client.

Two federal courts recognized the fame of the FIRESTONE mark, given its century-long use, in suits filed by Bridgestone for trademark counterfeiting, trademark infringement, trademark dilution, unfair competition, and breach of contract against holdover licensees, related entities, and their owner who unlawfully used the FIRESTONE, FIRESTONE COMPLETE AUTO CARE, and BRIDGESTONE marks to offer automotive services in Houston, Texas. Bridgestone, represented by Finnegan, was granted summary judgment in both cases.

In the Southern District of Texas, the court granted summary judgment on all claims against one of the entities and its owner in his individual capacity. In the Middle District of Tennessee, the court granted Bridgestone’s motion for summary judgment on the trademark counterfeiting, trademark infringement, trademark dilution, and unfair competition claims. Both courts rejected defendants’ arguments that holdover licensees are exempt from the heightened penalties for counterfeiting, noting the split of authority on the issue. In the Sixth Circuit, a holdover licensee may not be liable for the heightened penalties available for counterfeiting if it continues to use a mark as originally authorized. This represents the minority view and other courts have rejected the holding. The defense thus did not apply in Texas, and the defendants in Tennessee could not rely on this precedent to shield them from liability because one defendant was never a party to any license with Bridgestone and the other was never licensed to use the FIRESTONE COMPLETE AUTO CARE mark as it did. Both courts held that defendants’ willful conduct—using Bridgestone’s exact federally registered FIRESTONE and FIRESTONE COMPLETE AUTO CARE marks—entitles Bridgestone to recover the enhanced remedies (to be determined at trial) available for counterfeiting.

Finnegan defended Broadcom’s Altima subsidiary against Intel’s patent infringement allegations based on four separate patents in two different ITC actions and two different district court cases. Intel withdrew the first patent before trial when we found invalidating prior art. The second patent we proved invalid at trial, and Intel did not seek an appeal. For the third patent, we proved that 14 of 18 claims were invalid and our clients were entitled to use any pattern of solder balls other than a “bulI’s-eye” pattern. And the ITC’s decision in Intel’s favor on the fourth patent was later rejected in the district court case when the judge issued a published decision in Altima’s favor on all claim construction issues.

Finnegan client Asetek was granted a permanent injunction and enhanced supplemental damages against CMI USA, Inc. (the USA distributer of Cooler Master) for its willfully infringing sales following a jury verdict in Asetek’s favor. Asetek, which owns two patents related to computer/data center liquid cooling, sued CMI USA for infringement of both patents. Following a nine-day trial, the Northern District of California jury was out less than one day and: (1) found infringement by every accused CMI USA product; (2) awarded Asetek a 14.5% royalty rate and damages; (3) rejected CMI USA’s assertion of invalidity based on alleged anticipation; and (4) found the existence of every secondary consideration of non-obviousness listed on the verdict form (favoring Asetek’s non-obviousness position). In deciding the post-trial motions, the presiding judge entered the permanent injunction requested by Asetek; found that CMI’s post-verdict sales were willful, and awarded Asetek an enhanced 25.375% royalty on those sales; and rejected CMI’s motions for new trial and judgment as a matter of law (JMOL).

Finnegan’s client Asetek owns two patents related to computer/data center liquid cooling, and sued Cooler Master’s U.S. affiliate, CMI USA, Inc., for infringement of both patents. Following a nine-day trial, the jury in the Northern District of California was out less than one day and: (1) found infringement by every accused CMI USA product; (2) awarded Asetek a 14.5% royalty rate and damages; (3) rejected CMI USA’s assertion of invalidity based on alleged anticipation; and (4) found the existence of every secondary consideration of non-obviousness listed on the verdict form (favoring Asetek’s non-obviousness position).

Since 2000, Finnegan has worked closely with the inventors and legal staff at Caterpillar Inc. In addition to our work on utility patents and trademark matters, Caterpillar has entrusted us to prepare and prosecute design patents ranging from paving machines and ground engaging elements to on- and off-highway trucks and truck parts and autonomous and manned construction machines. We have also assisted Caterpillar in opinion matters and inter partes post-grant reviews involving design patents.

Finnegan has assisted with filing and prosecuting several thousand trademark applications in the United States and abroad for Caterpillar. We obtained a preliminary injunction for Caterpillar against use of the word marks GAI, GAIERBILLART, GAIERPILLAR, GAIERPOLLAR, the yellow and black color combination for footwear and any associated packaging or labels, and/or any other trademarks, trade names, trade dress, logos, or other names or identifiers confusingly similar to the CATERPILLAR or CAT marks and/or Caterpillar’s footwear trade dress.

The International Trade Commission issued its final determination in favor of Finnegan clients Nutrichem Co. and Jiangxi Heyi Chemicals Co.--both from China--and their co-respondents Summit Agro USA and Summit Agro North America Holding Corporation, denying complainant FMC Corp.’s request to exclude their products from the U.S. market. In Sulfentrazone, Sulfentrazone Compositions, and Processes for Making Sulfentrazone, the ITC found no violation. Specifically, the ITC found no infringement by Nutrichem or Heyi, invalidity of the asserted claims, and no domestic industry by FMC. This was the second time the ITC found in favor of Nutrichem and Heyi, having denied FMC’s request for temporary relief a few months earlier, similarly finding that FMC had not shown it was likely to succeed on the merits: the ITC held, among other things, that FMC was not likely to prevail on infringement or domestic industry and that the claims were likely invalid.

Since its founding, we have provided strategic intellectual property counseling and representation to Imerys, including its French parent company, international subsidiaries, U.S. headquarters, and multiple domestic business units. We have evaluated developing technology for patentability; drafted and prosecuted patent applications in the U.S. Patent and Trademark Office and abroad; analyzed patent enforcement opportunities; defended against third-party charges; and provided legal opinions on several aspects involved in bringing new products to market and maintaining Imerys’s strong, competitive position in the kaolin clay market.

Trover Group and Security Center sued Finnegan client Axis Communications in the Eastern District of Texas (EDTX), alleging infringement of patents related to video surveillance systems. Axis, a leading network camera manufacturer based in Sweden, turned to Finnegan for its defense in the litigation. In addition to preparing and filing an inter partes review (IPR) petition with the U.S. Patent and Trademark Office (USPTO) to seek invalidation of the asserted claims, the Finnegan team advanced critical claim constructions previously overlooked by some of the prior defendants. After a successful Markman hearing and ruling on claim construction, letter briefs were filed to request summary judgment briefing. The requests were subsequently granted by the court and, shortly thereafter, a favorable settlement and dismissal of the action was obtained for Axis.


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