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We represented a major travel-related company in securing worldwide patent protection on a diverse portfolio of software and business-method–related inventions. We advised and defended the client on various allegations of patent infringement and third-party claims for indemnification against infringement allegations.

Finnegan represented patent owner Philips in reexamination proceedings for a patent covering the JPEG image coding standard. All of the claims challenged by the third-party requester were confirmed valid. The patent has also been asserted by Finnegan for Philips in separate district court litigations against Kodak and Samsung. The district court denied Kodak’s request to stay the Philips case against it pending the reexamination.

When the developer of a wireless-networking technology found that its relationship with a joint venture partner had failed, Finnegan represented the developer in a copyright litigation in the Eastern District of Pennsylvania.

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.

After a jury verdict against Conair for infringement of a patent on a safety mechanism in a hairdryer, the district court increased the damages and entered a judgment of over $46 million. On appeal, Finnegan achieved a total victory for Conair by obtaining a reversal of the infringement finding in the Federal Circuit.

In a Federal Circuit appeal on behalf of client Digital Control, Inc. (DCI), Finnegan was able to obtain a reversal of the district court’s judgment. The reversal paved the way for a favorable settlement, and it also resolved an important issue on what is “material” information in prosecuting patent applications in the PTO. The patents at issue in the case were fundamental to DCI’s business and involved electronic locating equipment for horizontal drilling devices.

Finnegan represented the plaintiff in Massachusetts and California federal courts in a long-running copyright battle between two social networking websites. The case established new law on subject matter jurisdiction over copyright claims in federal court.

In an ITC Section 337 action between Finnegan client LG Electronics and its competitor Whirlpool, the ITC denied all of Whirlpool’s claims for relief, resulting in a total victory for LG Electronics.  Judge Theodore R. Essex had previously ruled that LG refrigerators are not covered by Whirlpool's U.S. Patent No. 6,082,130.  The ITC later revised the claim interpretation of the ‘130 patent and asked the judge to reconsider the remaining disputed issues based on its new interpretation.  Judge Essex applied the ITC’s interpretation and again found that the ‘130 patent does not cover LG refrigerators and also concluded that all but one of the asserted claims is invalid.  Whirlpool originally claimed that five of its patents covered LG refrigerators.  During the course of the case, Whirlpool withdrew four of those patents prior to the hearing.

The U.S. Court of Appeals for the Federal Circuit ruled in favor of Finnegan client Research Corporation Technologies, Inc., affirming the patentability of RCT’s methods for halftoning digital images.  The decision is particularly important because it is the Federal Circuit's first dealing with patentable subject matter under 35 U.S.C. § 101 since the Supreme Court’s landmark Bilski v. Kappos decision.  Chief Judge Rader, writing for a unanimous panel, reversed the district court’s ruling that the claimed halftoning methods were invalid under section 101.  Instead, he wrote, “the invention presents functional and palpable applications in the field of computer technology.”  Following the Supreme Court’s Bilski decision, the Federal Circuit explained that the coarse filter of section 101 excludes only laws of nature, physical phenomena, and “manifestly” abstract claims, and that courts should focus primarily on the patentability criteria of the rest of the Patent Act.

We represented Allegheny Ludlum Co. against Allied-Signal in the area of iron-boron-silicon amorphous metal alloys. Despite having junior party status, we proved that the Allegheny inventors were the first to invent and the PTO ruled that they were entitled to the award of priority. Allied-Signal brought a Section 146 action in the U.S. District Court for the District of Connecticut. The parties settled the case after discovery and trial, but before a decision by the court.


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