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

Practice/Industry Group Overview

Leadership in handling “first-to-invent” U.S. patent interference proceedings
When two or more independent parties claim to have invented the same subject matter at more or less the same time, the dispute over who invented first is almost always initiated and resolved in an interference proceeding before the Board of Patent Appeals and Interferences at the U.S. Patent and Trademark Office (PTO). The outcome can affect corporate revenue streams, market position, and shareholder value. Finnegan’s understanding of all facets of interference law, deep technical expertise, thorough familiarity with all relevant PTO procedures, and extensive patent litigation experience enable us to handle high-stakes interference matters.

Since the new interference rules were adopted in 1984, we have counseled and represented our clients in patent interferences—and in the process, we established one of the most highly regarded interference practices in the country. At any given time, we are typically involved in 10 to 15 percent of all pending interferences. We have handled more than 60 interferences in the past five years, and approximately 50 of our lawyers have experience in interference proceedings. Our clients range from Fortune 500 corporations to emerging biotechnology companies and technology start-ups.

Experience in every facet of interference practice
Patent interference cases have much in common with litigation: discovery, the contentious nature of the work, the importance of expert testimony—and much in common with prosecution: argument of patentability issues before the PTO, possible amendment of claims, assertion of benefit of earlier patent application filing dates, and establishing dates of invention. Thus, they represent a unique, hybrid type of administrative proceeding requiring a specialized set of skills. We bring deep experience in every aspect and phase of a patent interference, from the crucial motions phase through priority determination, and then post-decision options.

Services Available

Finnegan is one of the few law firms in the world that has an interference specialty practice supported by deep experience in patent prosecution, strategic patent transactions, and trial and appellate litigation. Knowledge of the interplay between these areas is key to developing and implementing a successful interference strategy. Having seen interferences evolve from all angles better equips us to advise a client on the most significant and often complicated aspects of an interference, such as whether to provoke an interference or negotiate a settlement, attack a patent’s validity before the Board or bring a claim of infringement in the district court, or to proceed with a § 146 action in district court versus a § 141 appeal at the Federal Circuit.

Navigating your interference through the courts
Finnegan's extensive experience in trial and appellate litigation allows us to continue to guide your interference through the court system following a decision from the PTO. Whether it is in a review of the PTO decision in the specialized district court litigation under 35 U.S.C. § 146 (Section 146 action) or in an appeal to the U.S. Court of Appeals for the Federal Circuit, Finnegan's representation provides a rare combination of specialized expertise in interferences with the significant litigation and appellate expertise for which the firm is so well known.

A deep understanding of technology
Our singular focus on intellectual property enables us to bring comprehensive technical expertise and experienced professionals to every case we handle. More than 90 of our lawyers, student associates, and technical specialists hold Ph.D.’s in fields ranging from neurobiology to electrical engineering. With 60 former patent examiners on staff, we know the inner workings of the PTO, and we understand the merits on which patents or applications will be upheld or dismissed.

Representative Engagements

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.

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.

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.

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.

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.

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 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.

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.

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.