Practice Areas & Industries: Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P.

Practice/Industry Group Overview

Evaluate your IP assets through opinions and counseling.
If your company is considering litigation, a new line of business, the development of an innovative product, mining its portfolio, or licensing or selling patents, you need to understand your current legal and business position, risks, and options. Finnegan provides the information and guidance to help you make the right choices for your business.

Services Available

We render hundreds of opinions a year ranging from a single opinion on a specific patent to providing long-term, ongoing counseling on complex patent portfolios or litigation. We routinely address patent validity, enforceability, misuse, design-around issues, licensing potential, IP contract construction and enforcement, and export controls. We regularly partner with our clients’ legal, business, and technical staff to identify the potential for risk and reward, from idea to revenue-generating portfolios.

In addition to transactional counseling, we routinely advise clients on prelitigation strategies. Our extensive litigation experience gives us firsthand insight into the various types of arguments opponents may raise. Combining our litigation and IP transactional experience allows us to help guide our clients to favorable settlements of disputes before or during litigation.

Representative Engagements

Comprehensive patent transactions and strategic counseling for an international leader in the mining and distribution of industrial minerals
Since its founding, we have provided strategic intellectual property counseling and representation to Imerys, including its French parent company, international subsidiaries, U.S. headquarters, and multiple domestic business units. We have evaluated developing technology for patentability; drafted and prosecuted patent applications in the U.S. Patent and Trademark Office and abroad; analyzed patent enforcement opportunities; defended against third-party charges; and provided legal opinions on several aspects involved in bringing new products to market and maintaining Imerys’s strong, competitive position in the kaolin clay market.

Global patent analysis for renewable energy
A European company asked us to conduct IP due diligence on a technology it was looking to acquire. This renewable energy focused on the production of photovoltaic cells. In less than one month, we coordinated prior art searches in Europe and the United States, evaluated the search results containing over 500 U.S. and European patents, provided our opinion on freedom to operate with the target technology, and set up a system to monitor European and U.S. patents that may be granted in the future.

IP counsel to a global electronics innovator
Toshiba is one of Finnegan’s long-standing clients. The firm prosecutes hundreds of U.S. patent applications per year in various technologies, including computers, communications, electronics, semiconductors, and business methods. Toshiba turns to us for strategic advice and opinions regarding their extensive patent portfolio.

Leveraging patents for digital compression technology
When a leading patent management company wanted to generate royalties from patents developed and owned by an international group of research and operating companies, it turned to Finnegan for assistance in setting up and running a licensing and enforcement program involving a full range of activities—analyzing the patents, identifying infringers in the marketplace, negotiating and drafting license agreements, litigating to enforce the patents, and providing strategic advice throughout the process.

Protecting an international leader in chemicals, fibers and plastics
Finnegan’s work for Eastman Chemical covers a wide variety of technologies, including Eastman’s valuable specialty polyester resin portfolio. Our work has involved drafting and prosecuting applications for commercially important technologies; specialty prosecution proceedings, such as reexaminations and reissues; the preparation of opinions; prelitigation investigations; and issues involving licensing.

Protecting patents for a leader in medical devices
Finnegan has represented Boston Scientific in a variety of patent matters since 1995. The work has included prosecution of hundreds of U.S. and foreign patent applications in the medical device area. Finnegan has also represented Boston Scientific in interferences, due diligence investigations of target companies, product freedom-to-operate opinions, reissue applications, and European oppositions.

The world’s largest maker of construction and mining equipment, diesel and natural gas engines, and industrial gas turbines relies on us for patent protection
Since 2000, Finnegan has worked closely with the inventors and legal staff at Caterpillar Inc. The firm has prepared and is prosecuting several hundred patent applications in the U.S. and in many foreign countries. We have also assisted Caterpillar with many opinion matters involving issues of patent validity, infringement, and other subjects. During our relationship, we have also advised on intellectual property issues related to government contracts, licensing, and copyrights, and more recently, we have taken on a significant role protecting Caterpillar's well-known trademarks around the world.