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Concise, accurate, and powerful arguments
Appellate cases are a highly specialized area of patent litigation. Finnegan is widely known for the quality of our briefs and oral arguments. Our comprehensive understanding of the technology and the law allows us to quickly identify the one or two arguments with the most promise to persuade. Our experience before the court helps us craft concise and persuasive arguments for our clients. One of the court’s judges said at a conference of corporate counsel, “I would rather have a 10-page brief handwritten by Don Dunner on the back of envelopes, than a 50-page brief from some other law firm lawyer that reads like a Harvard Law Review article.” 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.
Being there when it counts
The appeals process often starts well before the actual filing of the appeal. Clients sometimes retain us at the trial stage to help them look ahead at post-trial appeal issues. In other instances, we are retained after trial to begin assisting with post-trial motions to make sure that issues are properly preserved for appeal. Approximately 60 percent of our appellate cases come to us after trial. We are well versed in what it takes to come up to speed quickly in these matters. Finnegan focuses solely on intellectual property law, and we bring unparalleled experience protecting, advocating, and leveraging intellectual property. We believe this makes us more effective in handling bet-the-company trials and appeals.
A long history of insight into the Federal Circuit
The specialized nature of our appellate practice and the experience of our attorneys help explain our success and lengthy involvement with the Federal Circuit and its predecessor courts. In addition to the inside experience of our former Federal Circuit clerks, several of our attorneys have served in leadership roles on the Court’s Advisory Council. They also helped found the Federal Circuit Bar Association, an organization in which many of our attorneys actively serve on committees and in leadership positions. Other Finnegan attorneys coauthored the leading treatise on Federal Circuit practice, Court of Appeals for the Federal Circuit—Practice and Procedure, published by Matthew Bender.
Representative Engagements
$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 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.
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.
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.
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.
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.
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.
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.
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.
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.
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.
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.
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.
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