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Leadership in IP litigation
Finnegan’s singular focus on intellectual property brings a peerless depth to our litigation practice. Our lawyers have litigated hundreds of cases in nearly all federal district courts, numerous state courts, the U.S. Court of Appeals for the Federal Circuit, and the U.S. Supreme Court. We routinely appear before the U.S. Patent and Trademark Office, the U.S. International Trade Commission, the Board of Patent Appeals and Interferences, the Trademark Trial and Appeal Board, and the U.S. Copyright Office. When you work with Finnegan, you have a smart, seasoned champion in your corner.
Our vast archive of trial experience in the IP field provides us with the insight and tools to handle all types of cases—large or small, complex or straightforward. We assess the potential risks and rewards of disputes and provide creative solutions for innovative clients of all sizes, including Fortune 100, Global 1000, start-ups, and public and private organizations. We have worked with clients in virtually every industry. Our cases have involved issues as arcane as human growth hormones, gene therapies, and semiconductor chips. Others have involved more everyday products, like washing machines, diapers, and makeup brushes. We also regularly handle trademark matters involving some of the world’s most renowned brands.
A comprehensive litigation practice
Our litigation practice covers all aspects of IP disputes, from complex patent litigation and appeals to trademark disputes before the PTO’s Trademark Trial and Appeal Board. The common thread is that Finnegan brings impressive depth, strategic vision, technical understanding, and legal expertise to each matter.
- Patent infringement and related litigation issues
- Patent appeals
- U.S. International Trade Commission, Section 337 cases
- Interference proceedings
- Trademark litigation
- Copyright litigation
- Trade secret litigation
Pre-trial strategy
A full exploration of effective alternatives
When you retain Finnegan, our entire firm becomes part of your team. All of our expertise, our reputation, and our experience, both legal and technical, are brought to bear in deciding how to approach your case. We begin with frank and honest conversations, timely and judicious discovery, careful analysis of the potential risks and rewards, and a mapping of the strengths and weaknesses of your position. We listen carefully to better understand your business objectives, your options, your risk tolerance, and your ultimate goals. We then develop a team approach and strategy that best meets your needs.
We understand that the realities of litigation can be daunting, but we work with clients to find enterprising solutions that are both cost-effective and case-effective. Historically, fewer than four percent of district court patent cases ever go to trial. Thus, while we litigate with a potential trial or appeal in mind, our vision is to resolve each case successfully as soon and as economically as possible. This may mean pursuing litigation alternatives, such as licensing, mediation, or arbitration, or a companion proceeding before another court or administrative agency, such as the PTO. Or you may decide that settlement is the best resolution.
As a case proceeds, we can adjust our deployment of resources as needed. There are multiple ways to approach any given IP case. The most important factor is that we remain flexible and committed to your goals throughout.
District court litigation
Strong cases built on complete comprehension
When cases involve highly technical issues in a complex legal field, it is essential that your lawyers understand the subject matter of the dispute. Finnegan assists businesses in virtually all industries and technologies. More than 90 of our lawyers, student associates, and technical specialists hold Ph.D.’s, and 390 of our professionals have undergraduate degrees in scientific fields. This deep understanding of the technology allows us to build and present arguments that are logical, understandable, accurate, and persuasive.
We have the experience and expertise to select and prepare witnesses who provide accurate and credible testimony. Our international network of resources, combined with our technical backgrounds, enables us to identify and retain the world’s leading technical experts. Our lawyers’ technical training and diverse backgrounds allow them to persuasively present and cross-examine trial witnesses, particularly on complex technical issues. We have long-standing relationships with top jury consultants and graphical experts to ensure that your case is presented in the best light. When beneficial, we conduct mock trials to gauge likely outcomes and develop the most effective themes of your case.
ITC proceedings
Exploit unique challenges to your advantage
In the global economy, intellectual property disputes are often litigated in Section 337 proceedings at the U.S. International Trade Commission (ITC). Most of these cases are patent disputes that involve complex technology, substantive and procedural laws that are unique to the ITC, and a procedural schedule that is the fastest track to trial in the U.S. Finnegan’s combination of ITC experience and technical expertise enables us to thrive in these high-pressure litigations.
ITC cases proceed to trial in about 9 to 12 months, much faster than the two-plus years in most U.S. district courts. Since trials trigger settlements, the average time to settlement is fast in the ITC. But only those litigants that are prepared to defend their rights at trial can expect the most favorable settlements. When Finnegan does proceed to trial, we deploy our full range of resources, as needed.
Over 90 percent of Section 337 cases are patent disputes. They require lawyers with engineering and scientific expertise to analyze the technology, and extensive knowledge of ITC procedural law. We have lawyers with decades of ITC trial experience. Six of our lawyers formerly worked at the ITC as either Staff Trial Attorneys or Advisors to the Administrative Law Judges, and over 100 of our lawyers have been involved in ITC cases. We litigate at the ITC every day. During their careers, our ITC litigators have handled more than 20 percent of all Section 337 cases in U.S. history. Our ITC teams draw upon all of Finnegan’s practice groups—Electrical and Computer Technology, Biotechnology/Pharmaceutical, Chemical/Metallurgical, Mechanical, and Trademarks—to forge litigation teams with a working knowledge of the law and technology necessary for success. And win, lose, or draw, most ITC cases are appealed to the U.S. Court of Appeals for the Federal Circuit, where our appellate litigators have briefed and argued more cases than any other law firm.
Our ITC practice operates in technology, manufacturing, and marketing capitals around the world. We are the only U.S. IP firm with offices in Taiwan, Japan, and China that can provide local support for the 75 percent of ITC cases involving parties and products from these countries. And our home office in Washington, D.C. is minutes from the ITC.
Patent interferences
Patent litigation in the PTO and in "Section 146" district court actions
From the question of who invented the steamboat to today’s cutting-edge technologies, such as an AIDS vaccine, life-saving medical devices, and digital rights management, patent interferences in the PTO have resolved some of the most important commercial disputes through a distinct type of litigation requiring strategic thinking, litigation skills, and intimate knowledge of PTO procedures in contested cases. Finnegan is one of the few firms that has an interference specialty practice. It draws on the extensive litigation, patent prosecution, and strategic patent transactions experience for which the firm is so well known.
While patent interferences have much in common with litigation (discovery, the inter-party and contentious nature of the work, the importance of expert testimony), they require a specialized set of skills. Finnegan’s patent interference practice is among the most highly regarded in the country and has the ability to handle cases in any discipline and at any level of complexity. With 60 former patent examiners on staff and a world-renowned reputation in both patent prosecution and litigation, we know the inner workings of the PTO and how to succeed in these PTO proceedings. In fact, since the new interference rules were adopted in 1984, we have been involved in more interferences than any other law firm. At any given time, we are typically handling 10 to 15 percent of all pending interferences.
In addition, Finnegan's unique skill set well positions us to handle the proceedings before the patent examiner that lead to the interference. The set-up of an interference is critical. In fact, many of the interferences we provoke for clients are terminated not long after they are declared by the PTO, with an adverse judgment entered against our opponent. We can also place our clients in the best position possible for post-interference proceedings—whether it is in a review of the PTO decision in the specialized district court litigation under 35 U.S.C. § 146, in an appeal to the U.S. Court of Appeals for the Federal Circuit, or in follow-up patent prosecution before the patent examiner at the conclusion of court proceedings.
If the circumstances are right, an interference can be an attractive alternative or parallel proceeding to district court litigation, and clients often need to consider the possibility of trying to provoke an interference as an additional litigation tool. In other situations, an opponent might be provoking an interference against our client's patent or patent application. But whether we are attacking another patent’s validity or prosecuting your first-to-invent rights, we bring to interferences and pre- and post-interference proceedings our signature dedication to strategic planning, sound counseling, and first-rate representation.
Appeals
Insight that can make all the difference
Finnegan’s attorneys have briefed and argued more cases before the U.S. Court of Appeals for the Federal Circuit than any other law firm. These cases have covered a wide range of industries and issues that require meticulous attention to the details of the technology involved and that demand a thorough understanding of appellate law, Federal Circuit practice, and the strategies necessary for success. Knowing Finnegan’s reputation, both appellants and appellees seek our advice and representation on appeal.
The factors that distinguish Finnegan in this highly specialized area of patent litigation are numerous. We are widely known for the quality of our briefs and oral arguments. We have a comprehensive understanding of the technology and the law, and this allows us to quickly identify the one or two arguments that hold the most promise to persuade. Our knowledge helps us craft concise and powerful arguments. In addition, we are highly experienced at preserving issues for appeal during the post-trial motion period. Our meticulous attention to detail and knowledge of science and the law also help us come up to speed quickly on cases where we did not serve as trial counsel. With only one or two briefs and 15 minutes of oral argument to make your case, Finnegan brings the type of experience that can make all the difference.
Settlement
Coming together to avoid uncertainty
When circumstances warrant, we are adept at crafting settlements before, during, and after trial. Historically, some of our most significant achievements for clients have been effected through tactics that allowed them to meet their business and financial goals without the risks attendant to having a jury, judge, arbitration panel, administrative board, or appellate panel decide their future.
Our experience is that a good settlement can often result in advantageous business solutions. We can bring magistrates, mediators, and arbitrators to the table to help craft win-win scenarios. When settlement becomes an option close to or during trial, our deep bench of talent enables us to turn to additional experienced lawyers to address settlement strategies, while allowing the litigation team to remain focused on the trial.
Arbitration and other alternative dispute resolution
Sidestepping costly choices to find better answers
Finnegan has one of the strongest reputations for litigating IP disputes through trial and appeal. But when circumstances merit its use, we favor alternative dispute resolution (ADR). We often develop a litigation strategy designed to meet goals through ADR instead of trial.
Our ADR capabilities run the gamut from resolution of domestic infringement cases to settlement of multinational infringement disputes, resulting in agreements that set standards to be used as the basis for future patent challenges. Over the past decade, we have participated in a number of important national and international ADR proceedings with the International Chamber of Commerce, the World Intellectual Property Organization, and the American Arbitration Association.
We have national and international experience in a variety of ADR procedures, including mediations before U.S. magistrate judges, under pilot programs of various U.S. district courts, before neutral experts, through various ADR organizations, and in open negotiations between principals and their lawyers. Our attorneys often act as neutral lawyers and have served as special masters and court-appointed advisors for patent cases in U.S. district courts across the country.
Trademark litigation
Full representation for your mark
Our counseling services often begin at a trademark’s inception, with proactive advice during the selection and prosecution process. But when problems arise and valuable trademark rights are at stake, clients like Caterpillar, Disney, and Yahoo! rely on Finnegan’s experience to solve them. Both Managing Intellectual Property and The Legal 500 U.S. have recognized Finnegan’s trademark litigation experience, naming Finnegan the #1 U.S. Law Firm for Trademark Litigation in 2008 (Managing Intellectual Property) and the #1 IP Law Firm for Trademark Litigation in 2007 and 2008 (The Legal 500 U.S.).
Finnegan has handled cases that span numerous industries and implicate all types of trademark rights, including trademarks, service marks, trade dress, product configurations, trade names, and even telephone numbers. Representing both plaintiffs and defendants, our lawyers have decades of experience litigating both large and small trademark cases before courts throughout the country. We routinely appear before the U.S. Patent and Trademark Office and its Trademark Trial and Appeal Board (TTAB), the U.S. International Trade Commission, and other tribunals. Our trademark team includes a former administrative law judge at the TTAB.
We’ve developed an international reputation in the area of domain names and other Internet-related trademark issues. We have written summaries of every Internet-related trademark decision from U.S. courts. Our lawyers handle hundreds of domain name resolutions each year and have filed or defended approximately 400 complaints under the Uniform Dispute Resolution Policy of the Internet Corporation for Assigned Names and Numbers.
Trade secrets
Obtain immediate protection and relief
When litigation is necessary to protect our clients' trade secrets or to address a challenge from a competitor, our trial lawyers draw on decades of experience in federal and state courts throughout the U.S. We have successfully litigated hundreds of cases involving the most technologically advanced and complex innovations, and we have a proven track record in obtaining ex parte and preliminary injunctions to preserve trade secrets. With preliminary injunctive relief in hand, you have considerable leverage to achieve a favorable settlement or capitulation before trial.
Copyright litigation
Acting to protect original works
Finnegan has a dedicated and seasoned copyright practice, with experience at the U.S. Copyright Office, the U.S. Customs Service, and in district courts throughout the country. Our experience is broad—from software, databases, audio recordings, film and video productions, and technical and architectural designs to books, music, sculptures (such as toys), fabric designs, and motion pictures. We work with each of our clients to evaluate strengths and weaknesses, and to determine the most durable method of protecting their valuable works. Our lawyers have also played an active role in shaping U.S. copyright law.
With popular sentiment currently shifting against copyright owners and the rise of Internet technology, copyright protection has taken on even greater importance. We assist clients with registering copyrights, expediting applications, recording documents, and performing title searches. While we have the expertise to help a client avoid a trial, we also proceed in all phases of litigation when copyrights are threatened or questioned. Once in litigation, we accurately calculate damages and argue the finest details of copyright and licensing law.
Representative Engagements
"Customer defendant" characterization helps Nikon avoid costly protracted litigation and trial
Finnegan obtained an early stay and a subsequent voluntary dismissal for Nikon Corporation and Nikon Inc. in a multi-party patent infringement suit, thus limiting Nikon's involvement in a litigation filed by Honeywell International Inc. and Honeywell Intellectual Properties, Inc. Honeywell filed a series of suits against 30+ corporations claiming infringement of a patent directed to LCD modules. Nikon was accused of infringement in one of the suits, even though it was not a manufacturer of the LCD modules used in its digital still cameras. Characterizing Nikon as a "customer defendant," we filed a successful motion to stay the litigation with respect to Nikon. During the stay, Honeywell eventually settled with the defendants that were LCD suppliers for Nikon's cameras, allowing for Nikon's dismissal from the litigation based on the fact that Nikon was protected by Honeywell's settlements with Nikon's suppliers.
$45 million judgment overturned for Ericsson
Finnegan convinced the Federal Circuit to wipe out a $45 million judgment against Ericsson. Harris Corporation had sued Ericsson in the Northern District of Texas on a patent related to technology for correcting intersymbol interference, which can arise during use of communications equipment such as cell phones. The Federal Circuit agreed that the district court misconstrued the claims, and erred in its calculation of the appropriate royalty rate. The Federal Circuit also ruled against Harris on its cross-appeal, which concerned the award of enhanced damages.
A complete ITC victory for Halliburton
Petredat sought an ITC order excluding Halliburton’s petroleum well-data recorders from importation and sale in the U.S. Early in the proceedings, we showed Petredat why Halliburton’s products were not covered by the Petredat patent, why the Petredat patent was invalid, why Petredat lacked a good-faith basis for filing its complaint, and after we identified counterclaims that Halliburton could assert against Petredat, the ITC case was promptly settled without trial.
A fast-track trial and settlement for Integri-Test
We filed an ITC patent infringement action for Integri-Test with a request for a temporary exclusion order against circuit-board testing equipment imported into the U.S. by Bath Scientific and BSL North America. A five-day trial was held one month after the case began, and a settlement was reached before a final decision on the merits.
A high-impact result for R&D licensing programs in the pharmaceutical industry
In this ANDA case, our client, Elan Corporation PLC, filed suit to prevent infringement of its patent directed to naproxen formulations for once-daily oral administration. The district court held Elan’s patent claims invalid in view of Elan’s offer to license technology directed generally to the joint R&D of such pharmaceutical products. The Federal Circuit vacated the district court’s holding and remanded the case so that Elan could pursue its claims on the merits.
A reversal of a $70+ million judgment against Mattel and popular “Hot Wheels” toys
Jerome Lemelson had brought an infringement suit alleging that Mattel’s “Hot Wheels” toys—one of the most commercially successful toys in history—infringed one of his many patents. A jury verdict of infringement resulted in a judgment of over $70 million in damages and interest. Representing Mattel on appeal, we convinced the Federal Circuit that Mattel’s “Hot Wheels” toys did not infringe Lemelson’s patent as a matter of law. The court concluded that no reasonable jury could have found the patent claim to be both valid over the prior art and infringed, and therefore reversed the judgment against Mattel in its entirety.
A series of victories for Zoran results in a favorable settlement
We represented Zoran in two ITC investigations against MediaTek involving optical disk controller chips, acting as co-counsel with another firm. In Zoran’s affirmative case against MediaTek, the administrative law judge found in favor of Zoran after trial, and the commission ultimately entered an exclusion order against MediaTek’s infringing chips and products of many of its customers. In MediaTek’s case against Zoran, the judge exonerated Zoran’s products after a trial and found one of the two asserted patents invalid. Following issuance of the exclusion order in the first case, we also obtained a favorable ruling before the Customs Service excluding MediaTek’s supposed design-around chip. That series of victories resulted in a very favorable settlement.
A victory at trial for innovator of cardiovascular stents
Finnegan won a significant victory for Guidant (now Abbott) in the U.S. District Court for the District of Delaware. After a two-week trial, the jury returned a verdict in Guidant’s favor on all counts, finding that all 12 of the asserted patent claims were valid and that all 12 of the accused Medtronic coronary stents infringed the asserted claims. The district court also held that none of the 12 accused Guidant stents infringed any of Medtronic’s four asserted patents and further dismissed Medtronic’s claims against Guidant for trade secret misappropriation and unfair competition.
Abbott Laboratories’ dominance in the coronary stent market is protected
Abbott Laboratories’ motion to enforce a settlement agreement with Medinol Ltd. was recently granted. The court adopted Abbott’s interpretation of a settlement between the parties, which gave Abbott an unrestricted license to Medinol’s stent patents. After a two-week jury trial on the validity of Medinol’s remaining patent claims (but before the jury verdict was announced), the parties settled. When a disagreement arose over a material term during the drafting of the settlement agreement, Finnegan went back to court to enforce the agreement as the parties had stated on the record.
Asserting a patent on computerized recognition of handwriting
Xerox Corporation called on Finnegan after a district court found that 3Com/Palm’s line of personal digital assistants (commonly called “Palm Pilots”) did not infringe its patent. We secured a reversal of the district court’s claim construction, which led to a finding of infringement and entry of judgment for Xerox on remand. In a second appeal, we succeeded in obtaining an affirmance of the infringement finding.
Award of priority granted in case of treatment of PMS
We represented Novagen Research of Australia against Tufts College in successfully obtaining an award of priority against the patentee. The case involved a method for treating or ameliorating the symptoms of menopause or PMS by administering extracted isoflavones.
Broadcom and Altima Communications–successfully defending four separate patents in a complex case
Finnegan defended Broadcom’s Altima subsidiary against Intel’s patent infringement allegations based on four separate patents in two different ITC actions and two different district court cases. Intel withdrew the first patent before trial when we found invalidating prior art. The second patent we proved invalid at trial, and Intel did not seek an appeal. For the third patent, we proved that 14 of 18 claims were invalid and our clients were entitled to use any pattern of solder balls other than a “bulI’s-eye” pattern. And the ITC’s decision in Intel’s favor on the fourth patent was later rejected in the district court case when the judge issued a published decision in Altima’s favor on all claim construction issues.
Caterpillar relies on Finnegan for a full range of trademark services
Since 2000, Finnegan has worked closely with Caterpillar in protecting its well-known trademarks around the world. Recently, we obtained a preliminary injunction for Caterpillar against use of the word marks GAI, GAIERBILLART, GAIERPILLAR, GAIERPOLLAR, the yellow and black color combination for footwear and any associated packaging or labels, and/or any other trademarks, trade names, trade dress, logos, or other names or identifiers confusingly similar to the CATERPILLAR or CAT marks and/or Caterpillar’s footwear trade dress.
Changing the native coding sequence of corn takes deep technological experience; so does protecting the patents
When Monsanto brought suits asserting patents relating to genetically engineered corn against Syngenta Seeds, Syngenta turned to Finnegan and relied on our legal skills, strategic planning, and deep scientific background to make the strongest arguments. We succeeded in transferring one of the cases to the District of Delaware so suits could be consolidated. That court agreed with Syngenta’s defense and motions for summary judgment, holding one of Monsanto’s patents invalid and the other not infringed, and the Federal Circuit affirmed both decisions.
Defending ADT, Actron AG, and Tokai Denshi against attempt to block importation of resonate tags
We defended ADT, Actron, and Tokai Denshi against Checkpoint Systems’ attempt to block their importation of resonate tags used to detect merchandise theft. At trial before the ITC judge, we proved that Checkpoint’s patent was invalid on an unusual basis: another Checkpoint employee had conceived and reduced to practice the claimed invention before the work of the inventor named in the patent. The full commission agreed. We then successfully defended that decision on appeal, where the Federal Circuit not only affirmed the decision, but also bestowed a “chutzpah” award on our adversary.
Defending First International Computer, FIC America, and Everex’s right to import chips and motherboards
Finnegan defended First International Computer (FIC), FIC America, and Everex against an ITC case brought by Intel Corporation concerning personal computer motherboard chipsets.
Domestic and international patent portfolio management for a developer of digital rights management solutions
Intertrust is a leading developer of digital rights management (DRM) solutions and trusted computing platforms; the company is on the cutting edge of developing and monetizing next-generation technologies and inventions. Finnegan currently prosecutes and manages its entire patent portfolio.
Fast relief for Yahoo!
When Yahoo!’s famous YAHOO! trademark was misused on the Internet, the company turned to Finnegan. We obtained a temporary restraining order for Yahoo!, enjoining the defendants from using the domain name 21yahoo.com for a website offering free stock in 21Yahoo.com, Inc. In a separate matter, we obtained an ex parte temporary restraining order for Yahoo! against typosquatters who registered the domain name yaholigans.com (a typo of the name of Yahoo!’s children’s site, YAHOOLIGANS!), among others, and used them for an adult-entertainment site.
Finnegan acts quickly after secure certification exam compromised
When an organization that certifies medical personnel discovered that its secure certification exam had been compromised, Finnegan acted quickly to minimize the harm by obtaining an expedited certificate of registration from the U.S. Copyright Office and negotiating a favorable settlement for the client.
Finnegan protects invention from copycat claims
Clearwater International attempted to gain control over our client Halliburton’s invention of improved drilling methods and products. Clearwater copied claims from Halliburton’s previously issued patent disclosing methods of reducing borehole erosions during drilling for oil and gas, and the PTO initiated an interference. Clearwater’s goal was to convince the PTO that it made the invention first and that a patent on the copied claims should be issued to Clearwater, such that Clearwater could then sue Halliburton on the use of the invention. The PTO determined that Clearwater could not establish priority and ruled in Halliburton’s favor.
Finnegan secures an award of priority in transdermal drug delivery interference
On behalf of Minnesota Mining and Manufacturing Co., we provoked an interference in the PTO between 3M’s patent application and a patent issued to Adhesives Research, Inc. The subject matter was a type of transdermal drug delivery system that uses an adhesive composition, and both parties introduced evidence of actual reduction to practice. We were successful in obtaining an award of priority against the patentee in the PTO and thereafter prevailed in a Section 146 action for review of the PTO decision brought by the losing patentee in the U.S. District Court for the District of Columbia.
Gold Peak Battery Company avoids trial and maintains a competitive position
Finnegan defended four different affiliates of GP Batteries International Ltd. in an alkaline battery patent infringement case filed by Eveready at the International Trade Commission against 26 respondents. SEC records indicated that Duracell had previously paid Eveready $20 million for a license under the Eveready patent and that Rayovac and Panasonic had also been forced into paying Eveready a royalty for their alkaline batteries. Working closely with the Chairman of the Board, we devised a defense that resulted in a settlement agreement prior to trial that other respondents characterized as a "walk-away" deal.
Halting infringement on our client’s solar cell technology
We represented Solarex (now BP Solar) in a series of litigations on certain fundamental patents on thin-film amorphous silicon solar cells. These patents, which originated in RCA's research laboratories, were acquired by Solarex and formed the cornerstone of its thin-film solar cell business, along with the proprietary technology it had developed. We sued three different infringers (ARCO Solar, Advanced Photovoltaic Systems, and United Solar Systems) in order to protect Solarex's R&D investment in the fledgling technology, obtaining a judgment of validity and infringement of the patents.
High-profile interferences determine who was first to discover the AIDS virus and to invent a method of detecting HIV infection
We represented the Institut Pasteur against the National Institutes of Health in an interference which sought to determine which party was first to discover the AIDS virus and to invent the AIDS antibody test kit. Ultimately, this high-profile, high-stakes interference was settled by the intervention of the President of the United States and the Prime Minister of France. In another important interference for client Institut Pasteur, we challenged a patent owned by Chiron Corporation for a sensitive method of detecting HIV infection in human patients. The method has had widespread application in the diagnosis of such infections. Institut Pasteur succeeded in defending against Chiron’s attacks on its patent application and was awarded priority of invention by the PTO. This victory strengthened Institut Pasteur’s patent portfolio on HIV technology, which is licensed to benefit the public health and welfare.
In one of the first willful infringement verdicts since Seagate, U.S. Philips Corporation wins over $100 million
Finnegan won two major victories for U.S. Philips Corporation: the first against KXD Technology, Inc., the second against International Norcent Technology, Inc. In both cases, the district court found willful infringement of Philips’s patents directed to DVD technology and awarded Philips monetary damages. In the KXD case, Philips was awarded more than $91 million in trebled damages and interest, a permanent injunction, and attorney’s fees and litigation expenses. In the Norcent patent infringement action, the jury returned a verdict that found the Norcent defendants liable for willful patent infringement and awarded Philips $12.8 million.
In the highly competitive information technology industry, patent protection is vital
When Cisco infringed two of Telcordia Technologies’ key patents in the ATM and SONET areas, we pursed them vigorously on behalf of Telcordia. We built a solid case based on a thorough explanation of the technology in question. The jury awarded a multi-million-dollar verdict for Telcordia finding that Cisco had willfully infringed the patents in question. In addition, the jury found Telcordia’s patents enforceable and not invalid.
Interference victory for inventors of electrosurgical scissors
We provoked an interference for Boston Scientific against a patent owned by Everest Medical. We were able to prove that the Boston Scientific inventors were the true first inventors and the Board entered a judgment of priority of invention for Boston Scientific. The subject matter was electrosurgical scissors.
ITC victory for Toyota keeps U.S. market open for hybrids
Since 2000, Toyota has sold over 500,000 hybrid vehicles in the U.S. When its right to bring certain vehicles into the U.S. was challenged, the company needed fast and decisive relief. We represented Toyota before the ITC and argued that there was no violation of Section 337 or patent infringement.
Nortel’s plasma etching patent is upheld on appeal
Representing Nortel, Finnegan convinced the Federal Circuit to reverse the district court's determination that Nortel’s plasma etching patent was invalid. The Federal Circuit agreed that the district court had misunderstood the invention in finding the patent invalid for failure to disclose the best mode. In addition, the court upheld Nortel’s claim construction of the patent and affirmed an infringement finding against Samsung.
Organon Teknika–U.S. market remains open for virus diagnosis and quantification kits
We represented Organon Teknika against Hoffman-La Roche’s patent infringement claims in the ITC. Hoffman-La Roche asserted that its patents for polymerase chain reaction (PCR) were infringed by Organon’s nucleic acid sequence-based amplification (NASBA) kits for diagnosis and quantification of certain viruses. We reached a favorable settlement agreement without trial, thereby permitting Organon to market its NASBA kits in the U.S.
Overturning a damage award of nearly $20 million involving a novelty beach item
When Walgreen Co. faced a damage award of nearly $20 million, including prejudgment interest, for infringement of a patent on a “head chair,” the company turned to Finnegan. Although Walgreen had sold only $220,000 of the product, a jury awarded over $1 million in lost profits and another $10 million in future lost profits, which grew to nearly $20 million with interest. On appeal, the Federal Circuit agreed with our argument that the jury award, and the expert testimony on which it was based, was so speculative that it could not stand. The court granted a remittitur, reducing the damage award to $220,000—the amount of actual sales—and further reversed the award of prejudgment interest as it was based on future sales that had not occurred.
Owner of patents for advance processor design obtains favorable settlement with Intel
In a case that was settled ”on the courthouse steps,” Finnegan was able to obtain for its client BIAX Corporation a favorable settlement with Intel. During claim construction, BIAX’s construction prevailed on the issues important for infringement, which helped lead to the favorable settlement.
Pharmaceutical company wins judgment based on filing date
We assisted our client Elan Pharmaceuticals in obtaining a judgment against Paradissis based on the benefit of the earlier filing date of Elan’s foreign priority application. The subject involved controlled-release pharmaceutical formulation for once-per-day administration.
Priority of invention of hemodialysis catheter
We represented the University of Missouri and Covidien (formerly Tyco Healthcare) against C.R. Bard and VasCath, successfully obtaining an award of priority against the patentee in this longrunning interference. Navigating this interference through the PTO, two district courts and two trips to the Federal Circuit, we were able to achieve finality of the award of priority and secure important patent rights for our client. The technology at issue was a type of hemodialysis catheter for removing toxins from the blood of patients with kidney failure.
Priority of invention resolved by the PTO
The PTO initiated an interference between a patent application of Finnegan client Genetics Institute and a patent of Stryker Corporation. The PTO awarded judgment to Genetics Institute, thus resolving priority of invention to the disputed subject matter. The interference related to bone morphogenic proteins, which affect bone growth.
Protecting business-method patents for a travel-related company
We represented a major travel-related company in securing worldwide patent protection on a diverse portfolio of software and business-method–related inventions. We advised and defended the client on various allegations of patent infringement and third-party claims for indemnification against infringement allegations.
Protecting Crucible Materials Corporation from eight competitors
On behalf of Crucible Materials, we filed an ITC patent infringement case involving industrial neodymium-iron-boron magnets and prevailed against all eight respondents. We obtained a combination of consent orders, cease and desist orders, limited exclusion orders, and general exclusion orders against Chinese competitors. The general exclusion order prohibits all of Crucible’s foreign competitors from importing infringing magnets, regardless of whether they were parties to the ITC case. We later brought an enforcement action that resulted in civil penalties of $1.5 million against several respondents. The civil penalty was affirmed on appeal.
Protecting one of the most recognized global marks-the STARBUCKS trademark
Starbucks is a household name with thousands of retail locations across the globe and a brand that extends well beyond coffee. Finnegan successfully opposed an application for the mark LESSBUCKS COFFEE for coffee, tea, and coffee- and tea-based beverages and related retail locations. We obtained a ruling that the STARBUCKS trademarks is a famous mark entitled to a broad scope of protection, and that the LESSBUCKS mark was likely to cause confusion.
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.
Protecting System General’s product line
Finnegan represented System General as a respondent in an investigation involving power supply controllers found in many modern electronic devices. Complainant Power Integrations asserted infringement of four patents against System General’s entire product line. But the patent that threatened all of System General’s products was withdrawn when we found invalidating prior art, and another patent was withdrawn before trial.
Protecting the patents of a household name
The market for high-end, large-capacity, technologically advanced washing machines is intensely competitive. When LG entered the U.S.market, Whirlpool, Maytag, and Fischer & Paykel each sued LG, claiming LG’s washers infringed their patents. Not one prevailed, and LG remains in this important market. In each case, we employed an aggressive pretrial strategy based on team work. The asserted Fischer & Paykel patent stands rejected in a reexamination. The Maytag case was settled, as were two other infringement actions between Whirlpool and LG. In the third Whirlpool action, the judge granted summary judgment of no infringement on one patent and invalidity of the other patent.
Protecting the trademark of a household name
When LG’s “Life’s Good” and “LG Life’s Good” corporate taglines were challenged, the company turned to Finnegan. On the eve of the trial, the plaintiff agreed to dismiss with prejudice all claims. The “Life’s Good” campaign and mark continue to run globally for a wide range of products. The firm has also protected and defended some of LG’s most critical patents.
Proving first-to-invent status in interference involving metal alloys
We represented Allegheny Ludlum Co. against Allied-Signal in the area of iron-boron-silicon amorphous metal alloys. Despite having junior party status, we proved that the Allegheny inventors were the first to invent and the PTO ruled that they were entitled to the award of priority. Allied-Signal brought a Section 146 action in the U.S. District Court for the District of Connecticut. The parties settled the case after discovery and trial, but before a decision by the court.
Represented developer of wireless networking technology after joint venture failure
When the developer of a wireless networking technology found that its relationship with a joint venture partner had failed, Finnegan represented the developer in a copyright litigation in federal court in the Eastern District of Pennsylvania.
Represented plaintiff between two social networking website in Federal Court over copyright claims
Finnegan represented the plaintiff in a long-running copyright battle between two social networking websites in Massachusetts and California federal courts, which established new law on subject matter jurisdiction over copyright claims in federal court.
Resolving an appropriate standard for what Is “material” information in patent prosecution
In a Federal Circuit appeal on behalf of client Digital Control, Inc. (DCI), Finnegan was able to obtain a reversal of the district court’s judgment. The reversal paved the way for a favorable settlement, and it also resolved an important issue on what is “material” information in prosecuting patent applications in the PTO. The patents at issue in the case were fundamental to DCI’s business and involved electronic locating equipment for horizontal drilling devices.
Reversal of a $36 million judgment against a world leader in personal care, Conair
After a jury verdict against Conair for infringement of a patent on a safety mechanism in a hairdryer, the district court increased the damages and entered a judgment of over $36 million. On appeal, Finnegan achieved a total victory for Conair by obtaining a reversal of the infringement finding in the Federal Circuit.
Securing rights for hemophilia treatment
We represented Wyeth against Genentech in an interference that related to the treatment of hemophilia. The successful result we achieved allowed Wyeth to secure patent rights to a protein, known as B-domain deleted Factor VIII, which is used to treat hemophilia.
Sony Corporation cleared of infringement charges on two patents involving charge-coupled devices
Finnegan successfully defended Sony Corporation against Loral Fairchild Corporation’s claims for infringement of two patents on charge-coupled devices (CCDs), first obtaining a judgment of no infringement as a matter of law in the district court and then maintaining that judgment on appeal to the Federal Circuit. Following a jury verdict that Loral’s patents were valid and infringed under the doctrine of equivalents, the district court granted Sony’s motions that infringement of one patent was precluded by prosecution history estoppel and that infringement of the other patent could not stand under a proper claim interpretation. On a certified appeal to the Federal Circuit, the court upheld the judgment that Sony did not infringe either of Loral’s patents.
Stopping the unauthorized sale, distribution, and importation into the U.S. of gray-market soft drinks
Beverage giant AMBEV filed suit against Express Foods, Inc. and Paulmar Inc. (“Defendants”) seeking relief from Defendants’ unauthorized sale, distribution, and importation into the U.S. of gray-market GUARANA ANTARCTICA soft drinks from Brazil, the most popular soft drink in Brazil. AmBev asserted claims for copyright infringement, trademark infringement, and unfair competition. AmBev prevailed and obtained a consent judgment, which permanently enjoined Defendants from importing, offering for sale, and distributing any GUARANA ANTARCTICA products other than GUARANA ANTARCTICA products made by AmBev specifically for the U.S. market (i.e., non-gray-market products).
Success for Tyco in fast-moving case
We represented Tyco Healthcare in bringing a complaint against Absormex for importation of infringing absorbent garments from Mexico. The investigation was one of the fastest ITC cases to get to trial, with a trial date less than six months from the start of the investigation. On the last day before the trial was to begin, a favorable settlement was reached, and the case was terminated.
Successful defense of the Toyota MATRIX trademark
Matrix Motor Company, Inc. alleged that the Toyota MATRIX passenger car infringed the MATRIX trademark allegedly used for race cars and related components and parts. The plaintiff sought an injunction and damages, but the judge granted our motion for summary judgment, finding no likelihood of confusion between the parties’ respective uses of the MATRIX mark.
Successfully defending Fujitsu in the largest-ever ITC investigation
We defended Fujitsu in the largest-ever ITC investigation involving 10 different Texas Instruments’ DRAM patents. More than 450 motions were decided by the ITC judge, and there were three separate trials. The claims against Fujitsu were settled before a final decision on the merits.
Successfully defending GTECH against infringement accusations
Finnegan client GTECH Corporation was sued in the Eastern District of Texas for patent infringement by Flashmark Technologies and various individuals. GTECH sells lottery terminals and tickets, and Flashmark accused the company of infringing a patent related to document cancellation. The court issued its Markman decision, construing the claims in a way that precluded a finding of infringement against GTECH. Following this decision, the parties filed a stipulation of noninfringement.
Successfully proving noninfringement for Topcon Instrument’s glaucoma device
We defended Topcon Instrument against a multipatent ITC case brought by Cambridge Instruments involving devices for diagnosing glaucoma. In a one-week trial held just two months after the case began, we established that Topcon’s instruments were not covered by the patents, and the ITC judge thus denied Cambridge Instruments’ motion for temporary relief.
Successfully reversing a summary judgment on an innovative surgical method
The district court had granted summary judgment against firm client Origin (a subsidiary of Guidant Corp.) and a jury awarded nearly $13 million in damages, finding that the infringement was willful. The matter involved infringement of a patent on a method for using a balloon to create a space for surgery. On appeal, the Federal Circuit agreed with our interpretation of the patent claims and vacated both the judgment of infringement and the jury’s verdict that the infringement was willful.
Summary judgment allows Home Diagnostics Inc. to meet the needs of diabetics
Home Diagnostics Inc. (HDI) is one of the largest cobranders of blood glucose products for diabetics and offers low-cost alternatives to products offered by competitors. After a three-year battle with Roche, the district court granted a summary judgment of noninfringement in favor of HDI, concluding that no reasonable juror could find that HDI products infringed Roche’s patent relating to blood glucose monitors.
The world’s largest manufacturer of off-highway wheels turned to Finnegan to reverse a preliminary injunction
Titan Wheel faced a preliminary injunction that had far-reaching and negative implications to its core business. Patent owner Vehicular Technologies Corporation prevailed at the district court and sought to prohibit Titan from selling its EZ locker automatic locking differentials for automotive vehicles, as well as a recall of all differentials in its distributors’ possession. Finnegan obtained an emergency stay of the injunction while the appeal was pending at the Federal Circuit and then, on the merits, successfully argued that the district court improperly granted the preliminary injunction based on an incorrect infringement analysis under the doctrine of equivalents. In a 2-1 decision, the Federal Circuit concluded that the accused EZ locker differentials were not likely to infringe the patent claims under a correct understanding of the functions described in the patent-in-suit.
Trial victory in case involving commercial air conditioner components
Finnegan successfully defended York International in an action where American Standard alleged infringement of two patents, one on commercial air conditioner controls and the other on condensers. Trane claimed actual damages of approximately $122 million, together with prejudgment interest, a trebling of damages, attorneys fees, and an injunction. Had Trane fully prevailed in those claims, damages could have topped $400 million. The jury concluded that one of the Trane patents was not infringed, and that both patents were invalid. The court entered American Standard's post trial motion and granted York's fee request. After the court awarded York in excess of $1,500,000 in fees and costs, the case was settled.
U.S. market remains open for TEAC Corporation
We defended TEAC in an ITC case brought by Tandon Industries involving the head assemblies in floppy disk drives. While a temporary exclusion order was granted against all respondents, we later established that TEAC's head assemblies were not covered by the patent. The matter was favorably settled on behalf of TEAC before the hearing on permanent relief, and the noninfringement position we devised was successfully asserted by the remaining respondent. That noninfringement defense was adopted by the judge, the full ITC, and ultimately, the Federal Circuit.
United Catalysts turns to Finnegan to reverse an unfavorable judgment and $80 million in damages
United Catalysts retained Finnegan upon receiving an unfavorable judgment of infringement in the district court following a jury trial. The lower court had awarded United Catalysts’ competitor, Southern Clay Products, Inc., over $80 million in damages and fees for infringement of two patents related to organoclays. On appeal, the Federal Circuit vacated the judgment, invalidated one of the patents-in-suit, and remanded the case for consideration of the invalidity of the second patent.
VeriSign is cleared of infringement allegations on SSL protocol
We successfully defended VeriSign, Inc. in a lawsuit brought by Leon Stambler. The suit alleged infringement of three patents asserted against the Internet security protocol known as SSL and against VeriSign’s digital certificates and payment gateway technology. Stambler was seeking damages and an injunction, claiming that every Internet communication secured using the industry standard SSL protocol infringed his patents. We obtained a summary judgment on one patent, and the jury returned a verdict of no infringement of two of the Stambler patents.
Victory at the ITC and Federal Circuit keeps the U.S. market open for Hoechst AG
Finnegan successfully defended Hoechst against patent infringement claims by Kaken Pharmaceuticals in the ITC. Kaken sought to exclude Hoechst’s agricultural feed products containing salinomycin, an antibiotic, from U.S. markets. We persuaded the ITC that the Kaken patents were invalid and unenforceable on the grounds of inequitable conduct.
Victory for Hercules, Inc. allows it to compete globally
When our client’s patent was threatened by another large chemical company, we were able to win a summary judgment of noninfringement following a favorable claim construction hearing. Hercules was free to compete with a company that had sought to aggressively protect a specific technology.
Victory in a closely watched financial services business method patent case that challenged the way U.S. Treasuries are bought and sold
eSpeed and Cantor Fitzgerald claimed that Finnegan clients ICAP, the world’s largest electronic interdealer broker, and OMX, a Swedish technology company, infringed a patent related to the electronic trading of U.S. Treasury securities. When eSpeed appealed from a finding that its patent was invalid and unenforceable, we secured a favorable judgment for our clients, with the Federal Circuit holding eSpeed’s patent unenforceable for inequitable conduct.
When the patent for Zyprexa® and $2 billion in annual revenue were on the line, Eli Lilly turned to Finnegan
This ANDA case involved Zenith and two other generic drug manufacturers that attempted to invalidate Lilly’s patent and thereby open the market for generic sales. The lengthy trial involved complex technical and legal issues—calling upon our deep experience in both areas. Lilly prevailed in the district court on all issues, protecting its exclusive marketing rights and a large revenue stream. The Federal Circuit later affirmed the lower court’s decision, which upheld Lilly’s patent on its blockbuster drug.
Winbond Electronics prevails in complex ITC case
We defended Winbond against Oak Technology’s patent infringement claims concerning controller chips for optical disks. After we successfully defended against Oak’s motions for summary judgment, we filed a motion to compel production of Oak’s attorney-client communications based on the crime/fraud exception, and the case was promptly settled without a trial.
With hundreds of millions of dollars at stake in revolutionary technology involving genetic engineering, Finnegan prevails for Eli Lilly
Finnegan represented Eli Lilly in a landmark case brought by The Regents of University of California (UC). Two patents were at stake and both involved recombinant human insulin. UC claimed that its patents directed to DNA sequences that encode human proinsulin (a precursor to human insulin) covered Lilly's recombinant human insulin product. They argued that Lilly owed them hundreds of millions of dollars for infringing two of its patents. Finnegan succeeded in establishing that one patent was not valid and that the other patent was not infringed.
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