Lionel M. Lavenue

Lionel has argued dozens of Markman hearings. He has directed the discovery for numerous complex cases and disputes, and he has taken or defended over 300 depositions. He also has briefed and argued numerous patent/IP appeals at the U.S. Court of Appeals for the Federal Circuit (CAFC).

Lionel’s extensive experience with innovation capture and patent/IP protection includes the preparation of over 2,750 patent applications. He has organized and managed numerous large domestic and foreign patent portfolios. His prosecution experience covers an array of technologies, including those related to the financial services, electrical, aerospace, and automotive industries. Lionel works directly with leading innovators in the artificial intelligence (AI) sector, alongside related fields such as automotive technologies and robotics. This includes counseling on patent applications, opinions, and litigation for AI-related inventions, where Lionel leverages his extensive background in software and computer-implemented technologies, which often overlap with AI systems (e.g., machine learning (ML) algorithms, data processing, and automated decision-making).

Lionel’s practice includes litigation, patent applications, and opinion work related to business methods, computers, software, and electrical and mechanical devices (including medical devices, especially medical device software applications). He has also directed numerous ex parte (EPR) and inter partes patent reexamination proceedings, including over 125 “offensive and defensive EPR reexaminations” used during litigations. In a recent campaign, he secured institution of all 10 of 10 EPR requests filed for a client, a perfect record that led to a stay of the parallel district court litigation. He is the lead author of Finnegan’s EPR Academy series, a multi-part practitioner guide covering the history and statutory framework of EPRs, the process from request through certificate and appeal, comparisons with IPR, PGR, and reissue, and emerging U.S. Patent and Trademark Office (USPTO) procedure. As one of the first to challenge a patent via the America Invents Act (AIA) IPR procedure, he has led the filing of over 200 IPR petitions and CBM petitions before the Patent Trial and Appeal Board (PTAB) of the USPTO.

Lionel is lead and first-chair counsel in complex trade secret disputes spanning federal and state courts, the ITC, and parallel foreign forums. He has handled nearly a dozen trade secret matters involving software, automotive, and other advanced technologies. As lead counsel for BMW, he secured termination of the ITC investigation Certain In-Vehicle Infotainment Systems based on a Munich forum-selection clause in the parties’ confidentiality agreements, reportedly the first time a contested Section 337 trade secret case was dismissed on that ground. In the same campaign, he obtained a temporary restraining order (TRO) and preliminary injunction from the Northern District of California enforcing that clause and requiring Zync to halt the ITC case; the U.S. Court of Appeals for the Ninth Circuit then denied Zync’s emergency motion to stay the injunction. As lead of the Finnegan team, working with attorneys in the firm’s Munich office, he also helped put the merits before the contractually chosen forum through a declaratory-judgment action in the Regional Court of Munich I. Those results—building on an earlier California state-court dismissal of related claims on the same contractual provision—make the matter a leading example of multi-forum trade secret defense under the Defend Trade Secrets Act (DTSA), state misappropriation law, and ITC Section 337.

Lionel has particular insight into patent disputes involving government contracts, including patent infringement claims under 28 U.S.C. § 1498, with extensive experience with numerous cases before the COFC. He holds Public Trust clearance, and previously held Top Secret and Code Word clearances.

Lionel routinely lectures to bar associations and aviation groups on patent law issues related to aircraft, rotorcraft, soaring, skydiving, and lighter-than-air technologies. He is an active and current airplane and helicopter pilot (and occasional glider and balloon pilot), and he counsels many aviation and aerospace companies on IP issues. Lionel also has extensive experience with drone, UAV, and UAS technologies. As a Fulbright Scholar, Lionel participated in a visiting scholar program at the Max Planck Institute in Munich, Germany, focusing on the study of foreign and international patent, copyright, and competition law. He has been recognized by Managing Intellectual Property (MIP) as a “Patent Star” on both the national and regional (Virginia) levels as well as by Intellectual Asset Management (IAM) for his practice in the DC region.

Lionel and his wife are alpine mountaineers, skydivers, and adventurers. Of the Seven Summits (the highest peaks of the seven continents), they have summited six (Mt. Kilimanjaro in Africa in 1999; Mt. Elbrus in Russia in 2002; Mt. Aconcagua in South America in 2002; Mt. McKinley in North America and Mt. Vinson in Antarctica in 2004; and Mt. Kosciuszko in Oceania in 2007) and plans to finish the seventh of the Seven Summits, with Mt. Everest scheduled for 2028/2029. Lionel is an experienced skydiver (with over 1750 relative-work formation skydives) and holds numerous skydiving world records. He and his wife are scheduled on an early commercial space flight, with World View, in 2027/2028.

Lionel works with leading innovators across technology markets including those in the automotive, robotics, and AI spaces. Lionel has extensive experience with both front end and back end features of mobile apps, including applications of object-oriented design, HTML5 architecture, the Angular, Apache Kafka, and MICRON frameworks, and BIAN. He has represented Boeing in patent matters relating to aircraft software products; represented Bosch both in patent enforcement and in the defense of multiple patent infringement lawsuits related to various electronic and mechanical technologies; defended various LG entities in multiple patent infringement lawsuits, primarily in the Eastern District of Texas, involving electronic, mechanical, and telecommunication technologies; and defended Sony in multiple patent infringement lawsuits in the Eastern District of Texas, Northern District of California, and Central District of California, involving electronic, software, and mechanical technologies, as well as in arbitration issues before the Japan Commercial Arbitration Association (JCAA). He has also represented the U.S. Postal Service (USPS) and governmental entities in protecting, defending, and enforcing mechanical, electronic, and software innovations.