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Enforcement and Litigation

About

When your company is facing an intellectual property-related dispute, either as the IP owner enforcing your rights or as the accused party, the stakes can be staggering—both financially and in the marketplace. A loss may even put an end to your business. You need an informed risk calculation. You need seasoned IP litigators who bring multifaceted and strategic insights in assessing options and how they could impact your business. You need counsel fully prepared and qualified to handle your case from start to finish. At Finnegan, we have more than 200 attorneys well experienced in all forms of U.S. IP litigation, German patent litigation, and European patent litigation in courts, including the highly anticipated Unified Patent Court, before governmental agencies, and in arbitration forums.

At Finnegan, we understand that “victory” comes through many channels and in many forms. It’s all about achieving our clients’ goals. Our understanding of IP law and focus on obtaining favorable results in claim construction hearings, summary judgment proceedings, contested proceedings, arbitrations, and settlement negotiations means we often resolve cases without going to trial and at considerable savings to clients. Simply stated, a successful litigation outcome is one that meets your business goals in the most cost-efficient manner possible.

Full scope litigation services related to European, German, and U.S. laws

Finnegan’s extensive experience drives the insight and tools needed to handle all types of cases—large or small, complex or straightforward, competitor or non-practicing entity. We assess the potential risks and rewards of disputes and provide creative solutions for innovative clients of all sizes, including Fortune 100, startups, and public and private organizations. Our cases have involved issues as complex as human growth hormones, gene therapies, and semiconductor chips. Others have involved more everyday products, like washing machines, trampolines, and makeup brushes.

Even though few IP cases proceed to trial, Finnegan’s attorneys litigate as if we were going to trial from day one. That doesn’t mean indiscriminate discovery and inflated billings. It means putting together the best team and taking a careful and considered look at your case, your goals, the court, the precedents, and the opposition. It means positioning your company for the best outcome at every stage. One of our strengths is extensive insight on experts to use to enhance our clients’ legal positions. Another is experience in trials before juries as well as administrative law judges. IP cases involve distinct substantive and procedural laws, which can be different across venues and jurisdictions. Strategic moves in one case might harm positions in a parallel or appellate proceeding. An experienced, collaborative team that has a comprehensive understanding of IP laws and the associated nuances, as well as dedicated infrastructure and professional staff for supporting IP cases, allows for full focus on the client and learning their products, objectives, working preferences, and vision for success.

Partners in advancing business goals and market value

Protecting and promoting innovation and market trust is a foundational tenet for Finnegan. Through maintaining a culture of service and leadership in professional bar and legal associations, we collaborate with colleagues in industry and government in promoting IP rights and high professional standards. Organizations we are involved with include American College of Trial Lawyers; American Inns of Court; Association of Intellectual Property Experts (VPP); Federal Bar Association (FBA); Federal Circuit Bar Association (FCBA); German Association for the Protection of Intellectual Property & Copyright (GRUR); and International Trade Commission Trial Lawyers Association (ITC TLA).

Contacts

Everyone in this practice

Practice Areas

Advertising

From advertising clearance and claim substantiation to consumer class action lawsuits, advertising raises intellectual property issues across traditional and social media platforms.

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Antitrust and Misuse

Misuse claims raise many of the same issues as antitrust claims, but, if successful, they can result in unenforceability of patents.

View Antitrust and Misuse

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.

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Arbitration and Other ADR

In fast-moving, high-pressure mergers, acquisitions, partnering, and investment transactions, obtaining an accurate and comprehensive intellectual property evaluation is critical.

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Branded Hatch-Waxman (ANDA) Litigation

Success in Abbreviated New Drug Application (ANDA) litigation in the U.S. often begins months or even years before a case is filed. Whether you are anticipating receipt of a Paragraph IV notice letter or still in late-stage clinical trials, it is never too early to start preparation.

View Branded Hatch-Waxman (ANDA) Litigation

Copyright

To maintain a competitive advantage, companies and organizations need clear guidance in UK and U.S. intellectual property law and creative solutions to protect their copyrighted works.

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Counterfeiting/Gray Market Goods

Counterfeiting and gray market goods are growing at an alarming rate, resulting in industry losses of billions of dollars annually.

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Design Rights

Your designs separate you from the competition, make your products distinctive, and help preserve your competitive advantage.

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Domain Name Litigation and UDRPs

Because of the pervasive nature and extent of cybersquatting and infringement activity on the Internet, you need to manage and set priorities for enforcement efforts by developing specific guidelines and strategies.

View Domain Name Litigation and UDRPs

ITC Section 337 Investigations

Since cases before the U.S. International Trade Commission (ITC) go to trial faster than cases tried in almost any other forum in the world, they can be the first to be resolved in multi-forum disputes and often spearhead resolution of the other related cases.

View ITC Section 337 Investigations

Patent Litigation

To align litigation strategy with business goals might mean settling on reasonable terms as early as possible, or alternatively, sending a message to industry competitors through aggressive enforcement or defensive strategies.

View Patent Litigation

Pretrial Strategies

It begins with frank and honest conversations, listening carefully to better understand your business objectives, your options, your risk tolerance, and your ultimate goals.

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Privacy

From data gathering to data storage, from privacy by design to governance and legal compliance, all industries and sectors are faced with complex and often unsettled issues related to privacy.

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Trade Secrets

Intense competition, employee mobility, and the proliferation of spin-off and startup businesses make the trade secret protection critical.

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Trademark Litigation

When problems arise and valuable trademark rights are at stake or an accusation has been made, it pays to have seasoned litigators and trial lawyers on your side.

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Trademark Oppositions and Cancellations

In protecting your brand assets, trademark opposition and cancellation proceedings are effective offensive and defensive strategic tools.

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Unitary Patent System (UPS) and the Unified Patent Court (UPC)

The Unified Patent Court will open for business on 1 June 2023, and when it does, it will revolutionize the way in which patents are litigated in Europe.

View Unitary Patent System (UPS) and the Unified Patent Court (UPC)

Experience

Smith Interface Technologies, LLC v. Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc.
Representing Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc. in patent litigation involving touch-screen functionality used on mobile phones. The case is pending before Judge Gilstrap.

2:22-cv-00290, E.D. Tex., Judge Gilstrap

Arigna Technology Limited v. Volkswagen AG, et al.
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

In the Matter of Certain Power Inverters and Converters, Vehicles Containing the Same, and Components Thereof
BMW of North America, LLC and Bayerische Motoren Werke AG (collectively, “BMW”) earned a final determination rebuffing an International Trade Commission (ITC) complaint by Arigna Technology Limited (“Arigna”) aiming to ban the importation and sale of certain of BMW’s innovative mild-hybrid, hybrid, and all-electric SUVs and other vehicles.

337-TA-1267, ITC, Judge Bhattacharyya

Bay Materials, LLC v. 3M Company
Representing Bay Materials, LLC in district court patent litigation involving multilayer polymer sheet material used in clear dental aligners.

1:21-cv-01610, D. Del., Judges Andrews, Hall

ClearOne, Inc. v. Shure Acquisition Holdings, Inc.
Represented appellees Shure Acquisition Holdings, Inc. and Shure Incorporated in an appeal from the Patent Trial and Appeal Board (PTAB). In a precedential decision, the Federal Circuit unanimously upheld the validity of Shure’s substitute claims and rejected ClearOne’s procedural challenges to the Board’s ruling. The underlying inter partes review (IPR) was one of the first to utilize the Board’s Motion to Amend Pilot Program.

21-1517, Fed. Cir., Judges Moore, Newman, Hughes
IPR2019-00683, PTAB, Judges Zecher, Jurgovan, Zado

Promethean Limited v. FlatFrog Laboratories AB

Represented FlatFrog Laboratories AB in bringing claims of patent infringement against Promethean Limited and Promethean Incorporated, including defending against related petitions for inter partes review (IPR).

1:19-cv-02246, D. Del., Judge Noreika
IPR2022-00061, IPR2022-00065, PTAB, Judges Stephens, Baer, Khan

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Insights

Webinar

SEPs & Digital Video Broadcasting

March 30, 2023

Webinar

Conference

IPBC Europe 2023

March 27-29, 2023

Paris

Conference

Effective and Cost-Efficient Cooperation Between In-House & Outside Counsel in Licensing and Litigation

March 24, 2023

Taipei

European IP Blog

The Implausibility of “Plausibility” as an Evidentiary Standard at the EPO

March 24, 2023

40th FDA Boot Camp

March 22-23, 2023

Virtual

INCONTESTABLE® Blog

Widening Circuit Split, Eleventh Circuit Decides Retroactive Damages Are Recoverable for Timely Copyright Claims

March 22, 2023

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April 27, 2023

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April 25, 2023

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April 20, 2023

Washington

Webinar

SEPs & Digital Video Broadcasting

March 30, 2023

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March 27-29, 2023

Paris

News

Commentary

‘Cheese with Holes’: Gruyère's IP Woes in the US

March 14, 2023

Media Mention

Finnegan Shortlisted in 10 Categories in the Managing IP Awards 2023

March 6, 2023

Press Release

Finnegan’s Munich Office Ranked by The Legal 500 for Patent Litigation

February 27, 2023

Commentary

Semiconductor Patents Rise but Enforcement Challenges Mount

February 24, 2023

Commentary

Vidal Revives Baby Swaddle Patent Claims Axed by PTAB

February 24, 2023

Press Release

ITC Names Finnegan Partner Doris Johnson Hines an Administrative Law Judge

February 23, 2023

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