Experience

Internet of Things (IoT)

About

Internet of Things (IoT) is part of our work in Communications.

Connecting the world

With the prospect of collecting data from every conceivable object on the planet, IoT is revolutionizing how people do business. Whether it be in the field of IoT-enabled homes, cars, industrial manufacturing, supply chains, medical electronics, personal devices, or agriculture, IoT is limited only by the designer’s imagination in creating new applications and adding value. It increases profits for existing products by improving their performance and reducing their manufacturing and maintenance costs. It provides additional revenue streams for businesses selling data collected from new IoT devices. And it allows developers to access and analyze information in different ways to create unique services at a level never before seen. All of these innovations come with intellectual property challenges for both innovators and users of the technology.

Protecting IP in the IoT space

At its core, IoT is a network of “things,” or physical objects, each embedded with electronics, sensors, and network capability that enable them to report data about themselves to anyone over the Internet. Our attorneys understand how IoT uses new technologies across many different areas—such as sensors, networks, big data, analytics, artificial intelligence, and security—to provide innovative solutions. Finnegan has helped companies patent, license, and litigate IP in these areas for decades.

We also understand how IoT opens the door to new innovative business models. There is no doubt that IoT will shake up the traditional business paradigm of offering a stand-alone product that solves for a consumer’s existing needs at one point in time. Doing business in IoT requires a mindset shift, where products and services address consumer needs as they emerge, in real-time, so that they predict and adapt themselves continuously to those needs. Finnegan’s deep bench of professionals, including many with advanced technical degrees and decades of experience practicing IP law, fully appreciates the new consumer demands and business environment that our clients face delivering IoT products.

From obtaining IP rights for innovators, negotiating licenses, asserting IP rights against competitors, and defending companies accused of infringement, Finnegan is well-versed in representing industries in the IoT space. Our experience includes both network devices and Internet technologies, and extends from single devices, such as personal consumer electronics, to complex systems spanning across the globe.

Deep knowledge of both law and technology

In this fast-paced technical field, it is not enough for a law firm to simply know the law. Of Finnegan’s more than 80 attorneys with degrees in electrical and computer technology fields, over 50 have graduate degrees—including more than a dozen with Ph.D.’s—in disciplines such as:

Computer Science
Security Informatics
Electrical and Computer Engineering
Information Science and Systems
Telecommunications and Physics

Additionally, many of our legal professionals have industry experience, having worked for some of the world’s most prominent IoT-related companies.

IP strategic planning and services

Finnegan helps IoT innovators develop sophisticated, comprehensive, and tailored IP strategies to meet their individual needs. The services we provide to our clients include:

Developing a strong and comprehensive patent portfolio by obtaining patents in the United States and abroad.
Analyzing the competitive landscape in specific markets and advising clients on areas in which they have freedom to develop new products without running afoul of others’ intellectual property.
Negotiating license agreements that provide the freedom to get products to market and keep them on the market.
Monetizing patent portfolios to generate additional revenue streams.
Performing sophisticated damages analyses both within and outside of the context of fair, reasonable, and non-discriminatory (FRAND) licensing requirements.
Asserting patents in litigation to protect our clients’ intellectual property.
Defending clients from infringement claims in U.S. district courts, the International Trade Commission (ITC), and the Court of Appeals for the Federal Circuit.
Challenging and defending patents in administrative proceedings before the U.S. Patent and Trademark Office (USPTO), including reexamination, inter partes review (IPR), and post grant review (PGR) proceedings.

Negotiations and licensing

Licensing programs have become an increasingly crucial component of our clients’ business strategies. Today, successful companies take advantage of these programs to generate revenue, build brand equity and shareholder value, and gain competitive advantages. From Fortune 500 companies to small entrepreneurs, we help clients set up and run licensing programs that generate significant revenue streams, and we work with clients to pool patents and deal with standards issues.

Defensive work

From small matters to bet-the-company litigation, Finnegan defends a wide variety of clients from infringement suits. The firm has a long history of successfully fending off infringement claims against our clients in district courts and the ITC. Defensive litigation today frequently involves parallel challenges to patents before the USPTO and its Patent Trial and Appeal Board (PTAB). With more than 230 of our attorneys registered to practice before the USPTO and over 40 having experience working there, Finnegan provides our clients with a distinct advantage in this arena. Our attorneys have worked extensively on IPR and PGR matters, and we are particularly well-suited to advise clients on coordinating strategy between PTAB trials and district court or ITC litigation.

Contacts

Everyone in this industry

Experience

Represented Google as petitioner at the PTAB, where the Board instituted inter partes review of patent asserted in litigation.

IPR2019-00340, -00342, PTAB, Judges Stephens, McKone, Weinschenk

BrainCo, a company specializing in BMI (Brain Machine Interface) wearables, is working with Finnegan to develop its intellectual property strategy. A key component includes building a patent portfolio of innovations and designs related to BMI technologies that allow users to directly interact with electronic devices (including toys, smart home appliances, and robotic devices) by using brain signals.

Defeated Healthbox Global Partners, LLC’s motion for preliminary injunction asking the court to immediately order Under Armour to stop using HEALTHBOX/UA HEALTHBOX for its new connected fitness product, rebrand, and recall all products from store shelves. After briefing and argument, the court ruled for Under Armour on all claims.

1:16-cv-00146, D. Del., Judge Robinson

As Finnegan’s clients advance innovations that analyze big data, provide back-end storage and data solutions, monitor information from mobile devices and vehicles, and provide user-friendly display interfaces, we help them procure patent protection and build sophisticated portfolios around all related technology areas. We also assist them with developing enforcement strategies and defending against infringement accusations.

Connectivity is crucial for Internet-of-Things (IoT) devices. Finnegan has considerable experience dealing with standards-essential and non-essential patents covering telecommunications and network protocols, including asserting and defending against such patents. We have helped clients develop and license patent portfolios on various network technologies, such as wireless networks, the Internet, and other network architectures.

Finnegan works with clients developing surveillance and home monitoring technologies, where images and videos are captured and transmitted for real-time viewing and monitoring anywhere there is Internet access. We help these clients build portfolios around all technology areas in surveillance, defend against infringement accusations, and perform risk analysis before products are launched in the market.

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