Experience

Automotive and Smart Mobility Tech

About

Automotive and Smart Mobility Tech is part of our work in AI, Electronics, and Information Technology, Consumer Goods and Services, and Transportation and Logistics.

Protecting companies driving innovation

To keep pace with customers’ ever-changing needs for new designs and features, the automotive industry is constantly innovating. Alongside technical advancements such as autonomous and electric vehicles, automakers and suppliers continue driving innovations related to internal combustion, hybrid, and electric powertrains; supply and exhaust systems; instrumentation, batteries, sensors, autonomous guidance, and safety devices and systems; diagnostics, audio/video devices, connectivity, and wiring harnesses. To expand market share, increase profitability, and remain competitive, automotive manufacturers and suppliers constantly seek to develop new product lines, enhance supply chains, improve inventory control, consolidate or outsource resources to improve efficiencies, and identify alternative components or parts. Innovators like these need solid IP protection. Finnegan has a long history of working with automakers and suppliers in the automotive industry building legal strategies designed to help protect, advocate, and leverage their high-value IP assets.

Understanding the law, science, and technology

Protecting advancements within the automotive manufacturing and supply chain requires a multidisciplinary IP team. Finnegan’s lawyers and professionals have deep experience in mechanical, electrical, and computer hardware and software technologies, as well as materials science. Over 40 of our professionals are former U.S. patent examiners, many with experience in automotive-related fields such as transmissions; powertrains; suspension systems; brakes and braking systems; lubrication and cooling systems; body and component parts; pump and valve assemblies; car seats and other interior items, including airbags and other safety devices; exhaust systems; GPS and other guidance systems; instrumentation; batteries, alternators, and generators; fuel cells; hybrid vehicles; tires and wheels; and various types of engine systems. In high-stakes cases involving complex matters, our professionals rely on their legal and technical backgrounds to provide insight and advice to clients on issues that have critical business implications.

From determining the competitive landscape for new products to developing sophisticated litigation strategies, we help by:

Litigating high value products in all IP venues, including trial and appellate courts, the International Trade Commission (ITC), and contentious America Invents Act (AIA) trial proceedings before the Patent Trial and Appeal Board (PTAB)
Conducting invention capture sessions focusing on the client’s business and legal needs
Developing and executing global utility and design patent prosecution and counseling strategies
Conducting in-depth clearance and freedom to operate analyses
Contributing to training efforts on best practices for procuring and protecting IP
Developing licensing programs
Conducting due diligence investigations for merger and acquisitions
Developing portfolio management strategies to increase portfolio value and minimize unnecessary expenses
Identifying opportunities within IP portfolios for strategic IP protection and patent monetization opportunities
Counseling on government contracting and export rules as they relate to IP
Providing trademark, copyright, and advertising services
Identifying and protecting trade secrets

Everyone in this industry

Experience

Obtained complete victory against Carrum on appeal of the District of Delaware’s claim construction to the Federal Circuit following Carrum’s stipulation of non-infringement under the claim construction, thereby exonerating BMW’s ACC system, first sold in 2000, against Carrum’s 2004 patents. Invalidated several asserted claims through post-grant efforts before the U.S. Patent Office, including IPRs and EPRs, and pursued claims through proceedings before the Eastern District of Virginia to vindicate BMW’s patent challenges.

1:18-cv-01645, D. Del., Judge Andrews
21-1435, 24-1480, Fed. Cir., Judges Clevenger, Cunningham, Lourie, Moore, Prost, Taranto
IPR2019-00902, -00903, -00904, -00905, -00927, 00928, PTAB, Judges Browne, Scanlon, Tornquist
90/019,010, CRU

Obtained a swift, cost-effective walk-away in the Southern District of Texas by showing that Ad Innovations’ infringement theory accused a feature not present in the U.S.

3:25-cv-00179, S.D. Tex., Judge Brown

Secured a covenant-not-to-sue and zero-dollar walkaway for BMW Group in a declaratory judgment action, concluding Arigna’s high-profile patent enforcement campaign involving current amplification technology. This outcome follows a decisive ITC victory, the dismissal of parallel District Court litigation, and multiple concurrent patent office challenges pending at the time of resolution.

1:23-cv-01190, D.D.C., Judge Contreras
2:21-cv-00173, E.D. Tex.
IPR2021-01531, PTAB, Judges Baer, Fenick, Iftikhar
23-1931, Fed. Cir.
90/019,261, USPTO

Finnegan represented Volkswagen Group of America, Inc. in this patent infringement action brought by VDPP, LLC. VDPP’s complaint asserted a patent directed to a 3D display and glasses system, which it alleged was infringed by Volkswagen’s camera systems. We moved to dismiss on several grounds, including VDPP’s failure to allege compliance with the marking statute, 35 U.S.C. § 287(a). The Court agreed with our arguments and dismissed the case with prejudice. Following dismissal, the Court awarded Volkswagen its attorneys’ fees, finding both VDPP and its counsel jointly and severally liable.

4:23-cv-02961, S.D. Tex., Judge Rosenthal

Secured a royalty-free covenant not to sue from NorthStar for its present and future patent portfolio, which includes patents related to displaying navigation information on electronic maps, mobile devices selectively reporting GPS position information to others, and route-based communication planning architecture and wireless communication. This result was achieved after filing a declaratory judgement as well as IPRs on all claims of all asserted patents, leading to favorable institution decisions.

2:22-cv-00486, E.D. Tex., Judge Gilstrap
6:23-cv-00456, W.D. Tex., Judge Albright
IPR2023-00890, -00934, -01017,-01049, -01190, -01191, PTAB, Judges Droesch, Flax, Petravick, Wood

Achieved prominent wins for clients Volkswagen, Audi, Bentley, and Lamborghini by defending them against multiple allegations of patent infringement involving power electronics and power semiconductor structures at the International Trade Commission (ITC) and the Eastern District of Texas, and by securing institution of inter partes reviews (IPRs) on patents at issue at the Patent Trial and Appeal Board (PTAB).

337-TA-1267, ITC, Judge Bhattacharyya
IPR2021-01321, -01531, PTAB, Judges Baer, Fenick, Iftikhar
2:21-cv-00054; -00172, E.D. Tex., Judge Gilstrap