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

Practice/Industry Group Overview

Increasing demand drives innovation
Global energy supply concerns, increased environmental demands, and the rising costs of traditional energy sources have dramatically accelerated the pace of innovation in the market for advanced energy and environmental technologies. Investment in technologies that produce renewable, clean, efficient, and affordable energy has never been greater, and the future for growth in this area seems limitless.

Services Available

Protecting investments in innovative technologies
Backed by 350 intellectual property lawyers, Finnegan stands at the forefront of helping companies protect, advocate, and leverage their advanced energy and environmental technologies. We advise well-known industry leaders such as Toyota Motor Corporation and BP Solar, as well as many emerging companies involved in areas as diverse as photovoltaic cells, biofuels, and wind power. We counsel them on the full range of IP issues:

• Drafting and prosecuting patent applications
• Writing opinions and providing ongoing counseling for new and evolving technologies
• Developing licensing programs
• Conducting due diligence investigations
• Developing portfolio management strategies
• Protecting against infringement through litigation or other dispute resolution options
• Providing trademark protection and counseling

Legal and scientific expertise offers a unique advantage
Many alternative energy innovations combine multiple technologies and scientific disciplines. The scope and depth of Finnegan’s technical experience spans electrical and computer technologies, chemistry and chemical engineering, materials science, biotechnology, industrial manufacturing, mechanical engineering, nanotechnology, and other alternative energy-related fields. This background positions us to understand both the science at the foundation of our clients’ intellectual property assets and the relevant legal issues. More than 80 of our professionals have Ph.D.’s, and nearly 100 have Masters of Science degrees. Our talent pool includes former in-house counsel, patent examiners, researchers, and engineers.

Extensive industry experience
We work with alternative energy clients across a broad range of disciplines and technologies, including:

Agriculture

• Bio-based materials
• Farm efficiency technologies
• Natural pesticides and fertilizers

Energy

• Energy management systems
• Fossil fuels
• Fuel cell stacks
• Geothermal
• Hydrogen generators
• Microturbines
• Nuclear
• Off-grid hybrid systems
• Oil field management
• Photovoltaics
• Solar cells
• Ultracapacitors
• Wind turbines

Manufacturing

• Advanced packaging
• Emissions reduction and exhaust purification
• Next generation sensors
• Project-level carbon accounting, carbon trading, and carbon sequestration
• Smart construction

Transportation

• Batteries
• Electropropulsion
• Flywheel energy storage
• Fuel cell vehicles
• Hybrid propulsion
• Stirling engines
• Superconducting transmissions

Water

• Biological water filtration
• Desalination
• Tidal power

Representative Engagements

Ensuring the broadest possible patent protection
We provide in-depth patent prosecution and counseling services for one of the world's leading solar companies. Our service includes preparing patent applications directed to novel silicon materials and processing technologies, specifically geared toward photovoltaic applications.

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

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.

Managing the global portfolio for fuel cell patents
Nuvera Fuels Cells retained Finnegan to manage all of the company's IP portfolio assets, which were recently consolidated. Much of the management is focused on the procurement of patents, both U.S. and foreign, directed to various aspects of fuel cell technology.

Securing solid patents for a range of high-tech applications
We worked with our client in acquiring patent protection for its technology related to the deposition of high-dielectric layers and development of applications for the resulting layers. Such technology is applicable to optically transparent barrier layers for solar cell and OLED applications, dielectric materials for high energy-density capacitors, and materials for high-efficiency solid-state batteries.