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Finnegan manages portfolios of U.S. and foreign patent applications for Artaic LLC, whose robotic systems create state of the art two-dimensional and three-dimensional mosaics.  The robotic systems use novel combinations of hardware and software for arranging tiles and creating custom designs.

Petroleum Equipment Manufacturing Company (PEMCO) had unsuccessfully sought to have oil drilling and oil well equipment certified by Finnegan client American Petroleum Institute (API). Despite the fact that it was not certifi ed, PEMCO placed a counterfeit of the API certifi cation mark on its products. API objected and PEMCO agreed to cease using the counterfeit API certification mark. API later discovered that PEMCO was continuing to use the counterfeit API certification mark and retained Finnegan to sue PEMCO for trademark infringement, counterfeiting, and breach of contract. PEMCO agreed to a permanent injunction against further use of the API marks and payment of API’s costs. This result successfully stopped a counterfeiting operation that falsely passed off uncertified products as meeting API’s safety standards.

LG Electronics received a favorable decision in a washing machine patent infringement case tried in the U.S. District Court for the District of Delaware. Following a four-day trial, a Delaware jury determined that three LG patents related to direct-drive front-load washing machine technology are valid and infringed by certain washing machines made by Daewoo and sold by Daewoo and its business partners in the United States.

The verdict confirms LG's innovative leadership in the direct-drive front-load washing machine field. LG’s patented technology provides consumers with large-capacity, high-spin-speed washers that produce low noise and vibration. LG's leadership and patented innovations have led to LG's No. 1 market position in U.S. sales of front-load washing machines from 2007 to the present. This trial dealt only with liability issues (validity and infringement) and the case settled soon after trial.

The PTO initiated an interference between a patent application of Finnegan client Genetics Institute and a patent of Stryker Corporation. The PTO awarded judgment to Genetics Institute, thus resolving priority of invention to the disputed subject matter. The interference related to bone morphogenic proteins, which affect bone growth.

One of our long-standing clients asked us for advice on how to expand its patent portfolio to include nanotechnology. We researched the activities of its competitors, reported our findings, and suggested a course of action to a group of its senior IP counsel and technical leaders. Our report focused on the implications of nanotechnology in the client’s industry and identified desirable avenues of research and product development where nanotechnology could be implemented and protected to provide an advantage in the marketplace.

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.

Finnegan defended The Hillman Group against charges that it monopolized or attempted to monopolize in the key duplication marketplace. Finnegan negotiated a favorable settlement of the claims.

Shortly after Subaru launched its newest vehicle named the “Crosstrek,” Trek Bicycle filed suit for trademark infringement, trademark dilution, and unfair competition of its “Trek” and numerous “Trek-formative” trademarks. Trek and Subaru had been long-standing partners in a professional mountain bike team. As such, in addition to its assertions of trademark infringement and dilution, Trek also alleged that Subaru’s “Crosstrek” name breached the existing sponsorship agreement. Trek moved for a preliminary injunction. Faced with the possibility of rebranding its new vehicle, Subaru turned to Finnegan. Finnegan put together a team that could handle expedited discovery (which was virtually case-comprehensive and involved extensive ESI document discovery and many fact and Rule 30(b)(6) depositions), working with experts to conduct likelihood of confusion and dilution surveys, calculate harm and damages, and study linguistic usage of the word “trek,” as well as obtaining and managing documents produced from dozens of third-party subpoenas. Finnegan uncovered facts leading to a counterclaim for genericness, abandonment, and fraud, as well important facts undermining the alleged strength of the Trek brand. Prior to the preliminary injunction hearing date, the case was favourably settled with Subaru’s ownership, use, and registration of its “Crosstrek” trademark unfettered and unchanged.

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 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.


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