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

Practice/Industry Group Overview

Chemical innovations improve lives
From basic elements to highly specialized goods, chemicals are the foundation for products that change the way we live. The chemical industry plays a fundamental role in everything from the raw materials used in manufacturing to the high-tech products that allow us to communicate, travel, eat, and save lives. Innovative companies and organizations are meeting the demand for greener, faster, and more flexible and efficient products. Beginning with the groundbreaking discoveries of Ziegler and Natta and continuing with today’s nanotechnology advancements, Finnegan has represented innovators that span the full breadth of the chemical industry.

Legal and technical insight
For over 40 years, Finnegan’s legal expertise and broad technical experience have mirrored the breadth and complexity of the industry. Our team includes lawyers who were also trained as chemists, biological chemists, chemical engineers, polymer scientists, metallurgists, and material scientists. Some of our professionals have worked directly for major chemical companies, serving as corporate counsel or scientists. As a result, our lawyers understand the science and engineering behind today’s discoveries and have the legal experience to protect, advocate, and leverage critical IP assets.

Whether it is a new chemical compound, a new combination of chemicals, or a special formulation behind the innovation, we work to protect the IP rights associated with the resulting compositions and products. The various segments of the chemical industry and their customers have their own rules, techniques, and subtleties that can significantly affect the technical and legal analyses and methods of protection.  Our clients rely on us to analyze their patent portfolios and provide comprehensive, accurate assessments of their IP assets, determining their value, identifying where they need protection, and uncovering potential challenges.

Services Available

We have addressed virtually every type of IP issue for our clients in the chemical industry. Our experience includes:

• Developing and executing prosecution strategies.
• Providing counsel on business-related issues, including landscape analyses of the competitive marketplace and strategies for generating value from IP assets.
• Writing opinions and providing ongoing counseling for new and existing technologies.
• Advocating for, and defending client interests in, complex patent interferences and reexamination proceedings at the U.S. Patent and Trademark Office.
• Litigating high-value chemical products in district and appellate courts.
• Conducting due diligence for mergers, acquisitions, licensing, and partnering opportunities.
• Structuring, drafting, and negotiating IP license agreements.
• Providing trademark prosecution and counseling services.

A broad range of experience
Our expertise in the chemical industry is broad and covers a number of disciplines. We work with our clients in many areas of manufacturing and processing, from lab discoveries through commercial application. Our experience includes:

• Biological chemistry
• Chemical engineering
• Construction
• Consumer products
• Fabrication
• Food and beverage
• Glass manufacturing
• Inorganic and organic chemistry
• Materials science
• Metallurgy
• Nanotechnology
• Oil and gas exploration and refining
• Paper and pulp
• Packaging
• Pharmaceutical chemistry
• Physical chemistry
• Plastics, resins, and polymers
• Rubber manufacturing

A diverse client base
We work with innovative clients of all sizes, including Fortune 100, Global 1000, and public and private organizations in chemical and related industries. Our chemical industry clients include:

• Bausch & Lomb
• Coca-Cola Company
• Eastman Chemical Company
• Guardian Industries
• Hercules Incorporated
• Imerys
• INEOS
• MWV
• NOVA Chemicals

Representative Engagements

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.

Comprehensive patent transactions and strategic counseling for an international leader in the mining and distribution of industrial minerals
Since its founding, we have provided strategic intellectual property counseling and representation to Imerys, including its French parent company, international subsidiaries, U.S. headquarters, and multiple domestic business units. We have evaluated developing technology for patentability; drafted and prosecuted patent applications in the U.S. Patent and Trademark Office and abroad; analyzed patent enforcement opportunities; defended against third-party charges; and provided legal opinions on several aspects involved in bringing new products to market and maintaining Imerys’s strong, competitive position in the kaolin clay market.

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. 

Protecting a trade association’s reputation, trademark, and consumer safety in the oil and gas industry
Finnegan represented the American Petroleum Institute (API), the nation’s leading trade association for petroleum companies. Defendant PEMCO had unsuccessfully sought to have oil drilling and oil well equipment certified by API. Despite the fact that it was not certified, PEMCO placed a counterfeit of the API certification mark on its products. API objected and PEMCO agreed to cease using the counterfeit API certification mark. API later discovered that PEMCO was continuing to use the counterfeit API certification mark and retained Finnegan to sue PEMCO for trademark infringement, counterfeiting, and breach of contract. PEMCO agreed to a permanent injunction against further use of the API marks and payment of API’s costs. This result successfully stopped a counterfeiting operation that falsely passed off uncertified products as meeting API’s safety standards.

Protecting an international leader in chemicals, fibers and plastics
Finnegan’s work for Eastman Chemical covers a wide variety of technologies, including Eastman’s valuable specialty polyester resin portfolio. Our work has involved drafting and prosecuting applications for commercially important technologies; specialty prosecution proceedings, such as reexaminations and reissues; the preparation of opinions; prelitigation investigations; and issues involving licensing.

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.

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.

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 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.