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Strong cases built on complete comprehension
Finnegan’s singular focus on intellectual property gives us a distinct advantage before and during trial. Unlike other types of litigation, patent cases are often resolved before a trial ever begins. The subject matter is complex and the legal issues are often unique to IP law. Claim construction, prior art searches, evaluations of a patent’s strengths and weakness, reexamination alternatives, building a damages strategy, identification of experts—these are just a few of the issues that can predetermine the outcome of a patent litigation.
When trial is the best or only option, Finnegan has the right mix of technical expertise and trial experience. For more than 40 years, we have successfully litigated hundreds of cases involving the most technologically advanced and complex patents, as well as global trademark issues. More than 90 of our lawyers, student associates, and technical specialists hold Ph.D.’s in fields ranging from neurobiology to electrical engineering. Over 390 of our lawyers have scientific degrees in addition to their law degrees. Before and during trial, our knowledge and intellectual firepower are applied to make the most complex issues easily understood and to undercut the opposing side’s arguments. We build and present cases that are accurate, understandable, and persuasive.
Insight into every court
We know the courts because we have successfully argued cases in almost all of them, including nearly all of the U.S. district courts, the U.S. International Trade Commission, the U.S. Court of Federal Claims, the U.S. Court of Appeals for the Federal Circuit, and the U.S. Supreme Court. We practice regularly before the U.S. Patent and Trademark Office, the Board of Patent Appeals and Interferences, the Trademark Trial and Appeal Board, and the U.S. Copyright Office. We have also worked at these courts and agencies. Many of our lawyers have backgrounds as clerks or PTO patent examiners, or both.
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.
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 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.
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.
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.
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.
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.
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.
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 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.
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).
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 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.
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.
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.
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.
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.
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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