Experience

Oil and Gas

About

Oil and Gas is part of our work in Chemical, Industrial, and Materials and Energy.

Protecting advances in an evolving industry

The oil and gas industry is changing as demand increases and production becomes more difficult. Concerns about reducing costs, increasing safety, and protecting the environment are spurring advances in both upstream and downstream sectors of the industry, from exploration to field and pipeline development to refining.

As companies develop new technologies and innovative approaches to address the challenges, it is critical that they have a sophisticated plan for safeguarding their valuable intellectual property assets. Finnegan offers a comprehensive approach to protecting their IP, whether obtaining patents and trademarks for new technologies, licensing within the industry, asserting IP rights to protect innovators from infringers, or defending against infringement suits.

Developing a strategic approach to protecting innovation

Backed by approximately over 275 intellectual property lawyers, Finnegan stands at the forefront of helping companies protect, advocate, and leverage their oil and gas technologies. Finnegan has advised well-known industry leaders such as Schlumberger, Sinopec, Phillips 66, and the American Petroleum Institute (API), on a wide range of IP issues:

Developing and executing prosecution strategies to ensure strong patents and a robust IP portfolio;
Analyzing competitors’ IP to avoid infringement and identify weaknesses in their portfolios;
Increasing portfolio value by identifying potentially high-value assets that can be improved using strategic prosecution techniques;
Preparing and negotiating licenses and other transactions to commercialize IP rights;
Counseling on research and development options that minimize patent obstacles;
Providing due diligence for merger and acquisition targets;
Counseling on business-related matters, including antitrust and competition issues;
Providing trademark prosecution and counseling services;
Advising on potential litigation strategies and deploying experienced trial and appellate teams to protect our clients’ intellectual property; and
Challenging and defending post-grant review proceedings before the PTAB, including inter partes review (IPR) and post-grant review (PGR).

A deep knowledge of both law and technology provides the foundation for success

Many oil and gas innovations combine multiple technologies and scientific disciplines. Finnegan’s attorneys have technical experience in a broad array of relevant fields, including chemistry and chemical engineering, electrical and computer technologies, materials science, biotechnology, industrial manufacturing, and mechanical engineering. This background positions us to understand both the science at the foundation of our clients’ IP assets and the relevant legal issues. Our talent pool includes former in-house counsel, patent examiners, researchers, engineers, professionals with advanced degrees—including 60+ Ph.D.s—in the following disciplines:

Aerospace Engineering
Chemical Engineering
Computer Science
Electrical Engineering
Electrical and Computer Engineering
Information Science and Systems
Materials Science and Engineering
Mechanical Engineering
Operations Research
Physical Chemistry
Physics

Contacts

Everyone in this industry

Experience

Successfully represented petitioner Equistar in an inter partes review (IPR), resulting in a ruling of unpatentability for all claims of a patent directed to an apparatus and process of manufacturing polyethylene in a high-pressure tubular reactor.

IPR2017-01534, PTAB, Judges Abraham, Roesel, Tornquist

Successfully represented PQ against Johnson Matthey in an interference related to chabazite type zeolites used for selective catalytic reduction of nitric oxides.

106,065, Board of Patent Appeals and Interferences, Judges Schafer, Lane, Katz

Represented Catacel in a patent infringement suit involving catalytic microreactors used in the petrochemical industry.

5:10-cv-00747, N.D. Ohio, Judge Adams

Successfully defended American Petroleum Institute (API) in a trademark infringement suit by Choose Energy Inc., over its CHOOSE ENERGY mark.

5:14-cv-04557, N.D. Cal., Judge Grewal

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.

Obtained preliminary injunction, permanent injunction, and large monetary damage award against manufacturer of engine oils bearing counterfeit copies of client's certification marks and false claims to meet the client's quality standards.

1:13-cv-01112, S.D. Ind., Judges Pratt, LaRue

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