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Services Available
A comprehensive scope of work
Finnegan provides a full range of IP services to electrical and computer technology companies:
- Developing IP portfolio and filing strategies.
- Drafting and prosecuting patents for high-value products and technologies.
- Providing formal opinions and counseling.
- Determining the appropriate vehicle to use for patent correction with the U.S. Patent and Trademark Office: a Request for Certificate of Correction, a Reissue Application, or a Reexamination Application (ex parte and inter partes).
- Counseling and representing clients in patent interferences—a unique type of PTO administrative proceeding requiring a specialized set of skills in litigation and prosecution.
- Asserting and defending IP assets in federal district courts and other dispute forums as well as various domestic and international arbitration tribunals.
- Representing clients at the U.S. International Trade Commission—more than a third of Finnegan’s lawyers been involved in ITC litigations, and six formerly worked at the ITC as either staff trial attorneys or advisors to the administrative law judges.
- Conducting due diligence for mergers, acquisitions, and other partnering opportunities—from assessing the strength of a single licensed patent to a thorough review of an entire portfolio.
- Analyzing opportunities to generate revenue from technology and IP assets, including formulating and executing licensing programs.
- Negotiating and enforcing complex license and technology transfer agreements.
- Advising on and assisting with trademark rights, including trademarks, service marks, trade dress, product configurations, trade names, and domain names.
- Guiding and protecting the rights of clients that have developed and use digital rights management technology to securely distribute key information and content.
- Tracking and assessing case law trends to best position our clients’ business-method inventions to receive the broadest patent protection available.
Understanding the technology is critical to success
The depth of our legal and technical knowledge and our understanding of our clients’ businesses enable us to identify opportunities, anticipate problems, and provide practical solutions. More than 80 of our lawyers have at least one degree in electrical engineering, computer science, or another form of technology relevant to electrical and computer technology. Some have worked in the electronics and computer industries and bring an insider’s perspective to the problems our clients face. Several of our lawyers have written their masters and doctoral theses in nanotech fields, including semiconductor fabrication for use in MEMS, nanoscale thin film deposition, and nanoscale printing. Whatever the electrical technology—LEDs, DSL, circuits, watermarking, digital signatures, microchips, flash memory, SSL, networking, digital video, MPEG, data compression, HD-WDM, or GPS—we have a professional with experience in that field.
Far-reaching experience
We have handled matters for clients in virtually every sector of the electrical and computer technology industries:
- Computer hardware and software
- Semiconductor devices and processing equipment
- Telecommunications
- Consumer electronics
- Internet applications
- Medical devices
- Optics
- Bioinformatics
- Alternative energy technologies
Computer software
Some of the most rapid changes in intellectual property law have involved computer software. Once thought unpatentable, computer software now accounts for an estimated 20,000 new patents each year. When evaluating our clients’ software for protection, we consider and balance many unique issues, such as development speed, ease of market entry, market fluidity, changing alliances, and ease of copying. We also evaluate current industry trends, potential product and industry developments, and the effect of those developments on our clients’ software protection. We then advise our clients on how to best protect their software through patents, copyrights, and trade secrets and we guide them around the intellectual property barriers created by others. In addition, to increase our clients’ return on investment, we assist them with licensing and technology transfer, and negotiating and drafting those agreements.
Semiconductor processing
We have extensive experience litigating, licensing, and prosecuting patents in the semiconductor industry. Our experience includes both semiconductor manufacturing and semiconductor devices, and it extends from single devices, such as light-emitting diodes and analog circuits, to complex VLSI and ULSI circuitry. We have also litigated, licensed and prosecuted patents that involve firmware, ASICs, and FPGAs. In addition, we have experience in obtaining protection under the Semiconductor Chip Protection Act and in litigating under that Act.
Telecommunications and consumer electronics
Decades of working with telecommunications and consumer electronics clients have given us a deep understanding of how those industries have evolved and where they are heading. We have been on the cutting edge of IP issues that arise out of the standard-settings processes prevalent in the telecommunications and consumer electronics industries. To capture economies of scale and customer conveniences that standards provide, many of our clients have developed, patented, and licensed their technologies. Some work with other companies to pool patents to make licensing more efficient. We help negotiate and enforce agreements to help our clients get the most from their assets, collect royalties, and ensure the protection of their rights. When contracts are violated, patents infringed, or invalidity challenges issued, we have a seasoned team that stands ready to take on our clients’ opponents.
A diverse client base
- Abbott Laboratories
- Actions Semiconductor
- AOL
- D-Link
- InterDigital Communications Corp.
- Intertrust Technologies
- LG Electronics
- Marvell Semiconductor
- Philips
- PNY Technologies
- SAP AG
- Seoul Semiconductor
- Sony
- Starent Networks
- Toshiba
- TSMC
- Winbond Electronics Corp.
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.
$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 fast-track trial and settlement for Integri-Test
We filed an ITC patent infringement action for Integri-Test with a request for a temporary exclusion order against circuit-board testing equipment imported into the U.S. by Bath Scientific and BSL North America. A five-day trial was held one month after the case began, and a settlement was reached before a final decision on the merits.
A series of victories for Zoran results in a favorable settlement
We represented Zoran in two ITC investigations against MediaTek involving optical disk controller chips, acting as co-counsel with another firm. In Zoran’s affirmative case against MediaTek, the administrative law judge found in favor of Zoran after trial, and the commission ultimately entered an exclusion order against MediaTek’s infringing chips and products of many of its customers. In MediaTek’s case against Zoran, the judge exonerated Zoran’s products after a trial and found one of the two asserted patents invalid. Following issuance of the exclusion order in the first case, we also obtained a favorable ruling before the Customs Service excluding MediaTek’s supposed design-around chip. That series of victories resulted in a very favorable settlement.
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.
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.
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.
Defending First International Computer, FIC America, and Everex’s right to import chips and motherboards
Finnegan defended First International Computer (FIC), FIC America, and Everex against an ITC case brought by Intel Corporation concerning personal computer motherboard chipsets.
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.
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.
Fast relief for Yahoo!
When Yahoo!’s famous YAHOO! trademark was misused on the Internet, the company turned to Finnegan. We obtained a temporary restraining order for Yahoo!, enjoining the defendants from using the domain name 21yahoo.com for a website offering free stock in 21Yahoo.com, Inc. In a separate matter, we obtained an ex parte temporary restraining order for Yahoo! against typosquatters who registered the domain name yaholigans.com (a typo of the name of Yahoo!’s children’s site, YAHOOLIGANS!), among others, and used them for an adult-entertainment site.
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.
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.
IP counsel to a global electronics innovator
Toshiba is one of Finnegan’s long-standing clients. The firm prosecutes hundreds of U.S. patent applications per year in various technologies, including computers, communications, electronics, semiconductors, and business methods. Toshiba turns to us for strategic advice and opinions regarding their extensive patent portfolio.
Leveraging patents for digital compression technology
When a leading patent management company wanted to generate royalties from patents developed and owned by an international group of research and operating companies, it turned to Finnegan for assistance in setting up and running a licensing and enforcement program involving a full range of activities—analyzing the patents, identifying infringers in the marketplace, negotiating and drafting license agreements, litigating to enforce the patents, and providing strategic advice throughout the process.
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.
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.
Patent pooling in standards arena
We assisted our client in developing and negotiating an arrangement for pooling essential patents for an adopted standard. We created contracts by which the client became the agent for the patent owners in granting licenses to all applicants on a RAND basis.
Protecting a legendary newspaper’s brand on the internet
Finnegan obtained an ex parte temporary restraining order for The Washington Post against typosquatters who registered the domain name washintonpost.com and used it for an adult-entertainment website.
Protecting business-method patents for a travel-related company
We represented a major travel-related company in securing worldwide patent protection on a diverse portfolio of software and business-method–related inventions. We advised and defended the client on various allegations of patent infringement and third-party claims for indemnification against infringement allegations.
Protecting System General’s product line
Finnegan represented System General as a respondent in an investigation involving power supply controllers found in many modern electronic devices. Complainant Power Integrations asserted infringement of four patents against System General’s entire product line. But the patent that threatened all of System General’s products was withdrawn when we found invalidating prior art, and another patent was withdrawn before trial.
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.
Represented developer of wireless networking technology after joint venture failure
When the developer of a wireless networking technology found that its relationship with a joint venture partner had failed, Finnegan represented the developer in a copyright litigation in federal court in the Eastern District of Pennsylvania.
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.
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.
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.
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.
Start-up licensing program
A start-up company providing the technology for LCD panels faced a difficult licensing challenge in the worldwide fragmented production environment. We assisted the client in formulating a licensing program that provided necessary rights to the various levels of value production in countries around the world while avoiding exhaustion of the client’s IP rights through unrestricted distribution of components.
Successfully defending Fujitsu in the largest-ever ITC investigation
We defended Fujitsu in the largest-ever ITC investigation involving 10 different Texas Instruments’ DRAM patents. More than 450 motions were decided by the ITC judge, and there were three separate trials. The claims against Fujitsu were settled before a final decision on the merits.
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.
U.S. market remains open for TEAC Corporation
We defended TEAC in an ITC case brought by Tandon Industries involving the head assemblies in floppy disk drives. While a temporary exclusion order was granted against all respondents, we later established that TEAC's head assemblies were not covered by the patent. The matter was favorably settled on behalf of TEAC before the hearing on permanent relief, and the noninfringement position we devised was successfully asserted by the remaining respondent. That noninfringement defense was adopted by the judge, the full ITC, and ultimately, the Federal Circuit.
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.
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.
Winbond Electronics prevails in complex ITC case
We defended Winbond against Oak Technology’s patent infringement claims concerning controller chips for optical disks. After we successfully defended against Oak’s motions for summary judgment, we filed a motion to compel production of Oak’s attorney-client communications based on the crime/fraud exception, and the case was promptly settled without a trial.
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