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The Fourth Circuit issued its opinion affirming the preliminary injunction issued by Judge Williams in the U.S. District Court for the District of Maryland in Metropolitan Regional Information Systems, Inc. v. American Home Realty Network, Inc. The panel’s 3-0 decision sided with firm client Metropolitan Regional Information Systems, Inc. (“MRIS”) on each issue on appeal, including two issues of first impression in any circuit court: (1) the validity of electronic copyright assignments under the “writing requirement” set forth in Section 204 of the Copyright Act and the Electronic Signatures in Global and National Commerce Act (“E-SIGN”) and (2) whether Section 409 of the Copyright Act requires a registrant to list the names of authors and titles for each component work within a compilation. The Fourth Circuit’s ruling that an electronic agreement may effect a valid transfer of copyright interests under Section 204 of the Copyright Act is the first of its kind, and has significant implications for the validity of electronic transfers in other areas. Regarding the Section 409 issue, the Fourth Circuit’s opinion disagreed with a number of district court cases holding that copyright registrants failed to comply with the requirements of Section 409 by not listing authors of component works in the application to register the compilation. The Fourth Circuit’s opinion will likely be heavily cited by the courts and other owners of copyright in compilations in the future.

We defended ADT, Actron, and Tokai Denshi against Checkpoint Systems’ attempt to block their importation of resonate tags used to detect merchandise theft. At trial before the ITC judge, we proved that Checkpoint’s patent was invalid on an unusual basis: another Checkpoint employee had conceived and reduced to practice the claimed invention before the work of the inventor named in the patent. The full commission agreed. We then successfully defended that decision on appeal, where the Federal Circuit not only affirmed the decision, but also bestowed a “chutzpah” award on our adversary.

Finnegan defended First International Computer (FIC), FIC America, and Everex against an ITC case brought by Intel Corporation concerning personal computer motherboard chipsets.

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.

Finnegan has built a robust and dynamic IP portfolio for BrainScope Company, Inc. surrounding their brain injury assessment tool. As the company has grown and progressed from a concept through FDA clearance, the firm has worked closely with BrainScope to ensure their IP protection grew and reacted to their changing business goals. To protect all aspects of their device, Finnegan has provided strategic counseling and filed and prosecuted design patents, utility patents, and trademarks in the United States and a number of foreign countries.

Finnegan works with client AOL in developing and protecting its patent portfolio related to technologies that distribute content, products, and services over the Internet. In addition to representing its interests in patent litigation, we also provide AOL with strategic patent planning and prosecution services. We oversaw the development of an 800-patent portfolio that sold for $1.056 billion. Finnegan analyzed the AOL portfolio and implemented a process for strengthening it—identifying key inventions, studying products and trends in the market, drafting claims with an eye toward enforcement, and conducting interviews with U.S. Patent and Trademark Office (USPTO) examiners to obtain prompt allowances.

Finnegan guided the entire developments of LTA’s patent portfolio that includes over 120 patents and pending applications directed to lighter-than-air airship technology. The applications cover airship technologies ranging from hull and empennage configurations, propulsion and power source arrangements, flight control systems, attitude regulation and control, attitude displays, variable buoyancy techniques, solar powered flight, aerodynamic features, and various ornamental designs and configurations.

On the third day of trial in the Eastern District of Texas, the judge directed a verdict against the plaintiffs and in favor of Finnegan clients ADT Security Systems, Inc. and Digital Security Controls, Ltd. on all claims.  The plaintiffs were seeking damages for the alleged infringement of a patent relating to a telephone line coupler circuit.  The judge’s ruling for the defendants followed in the wake of a number of favorable rulings on pretrial motions that narrowed the scope of the case.

Following a claim construction ruling in Philips’ favor, plaintiff Luv n’ Care stipulated to a final judgment that Philips did not infringe the five asserted patents related to toddler sippy cups.  Accordingly, the U.S. District Court for the Eastern District of Texas entered a judgment of noninfringement in favor of Finnegan clients Koninklijke Philips Electronics N.V., Philips Electronics North America Corporation, and Avent Ltd.

The U.S. District Court for the District of Delaware ruled in favor of Finnegan client AstraZeneca AB, finding that the listed patent for the active ingredient, saxagliptin, in AstraZeneca’s type II diabetes drugs Onglyza® and Kombiglyze® was valid and infringed. Having conceded infringement prior to trial, 11 generic pharmaceutical companies alleged that claims directed to the compound saxagliptin were invalid as obvious. Finding that the generic defendants failed to establish by clear and convincing evidence that the asserted claims would have been obvious at the time the patent application was filed, the presiding judge held that defendants’ alleged motivations were “at odds with the teachings of the prior art” and appeared to be “the product of a classic hindsight analysis.” The generic defendants are enjoined from making, using, offering for sale, selling, or importing into the United States their proposed generic saxagliptin products before the expiration of AstraZeneca’s patent.


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