Appeals, Issues, and Legal Strategy
About
Appeals require meticulous attention to detail, particularly those involving intellectual property. And they demand a thorough understanding of both the law and the facts to identify the one or two arguments with the most promise to persuade a panel of appellate jurists. Finnegan is widely known for the quality of its appellate briefs and oral advocacy. But we also understand that the appellate process often starts well before an appeal is ever filed. Our appellate attorneys are creative legal thinkers and skilled writers who work with trial teams to develop legal strategies, draft winning briefs, and properly preserve issues for appeal.
Practice Areas
Appeals from the PTAB
Patent Trial and Appeal Board (PTAB) decisions are appealed directly to the US Court of Appeals for the Federal Circuit, where Finnegan attorneys have briefed and argued hundreds of cases.
Federal Circuit and Supreme Court Appeals
Appeals require meticulous attention to the details involved and demand a thorough understanding of appellate law to identify the one or two arguments with the most promise to persuade.
Patent Oppositions and Appeals
Patent opposition or revocation procedures offer third parties an opportunity to attack a European or German patent within a limited time after grant.
Experience
Obtained a $240 million jury verdict for client Promptu in a patent infringement lawsuit against Comcast. The jury found that Comcast willfully infringed Promptu’s patents covering voice recognition technology for TV.
2:16-cv-06516, E.D. Pa., Judge Sanchez
22-1939, Fed. Cir., Judges Prost, Moore, Taranto
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
Finnegan represented Bausch & Lomb’s licensee Eye Therapies, LLC in an appeal at the U.S. Court of Appeals for the Federal Circuit from a Patent Trial and Appeal Board (PTAB) decision finding Eye Therapies’ patent directed to a low-dose brimonidine treatment for eye redness (Lumify®) to be unpatentable. In a precedential decision, the Federal Circuit agreed with Finnegan’s arguments and found that the Board had wrongly invalidated the patent based on an incorrect claim construction, vacating and remanding the case back to the PTAB. The proceeding settled shortly thereafter
23-2173, Fed. Cir., Judges Taranto, Stoll, Scarsi
Secured a significant victory for client US Synthetic Corporation (USS) with a precedential decision from the U.S. Court of Appeals for the Federal Circuit (CAFC) overturning an unfavorable 35 U.S.C. § 101 eligibility ruling from the International Trade Commission (ITC).
23-1217, Fed. Cir., Judges Chen, Dyk, Stoll
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
In a rare rehearing proceeding, successfully represented petitioner Incyte in an inter partes review (IPR) challenging the validity of Concert’s patent before the Patent Trial and Appeal Board (PTAB). Continued representation of appellee Incyte before the Federal Circuit and secured a unanimous affirmance of the PTAB’s obviousness determination.
IPR2017-01256, PTAB, Judges Fitzpatrick, Hulse, Yang, Smith, Franklin
19-2011, Fed. Cir., Judges Hughs, Linn, Stark
