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

Practice/Industry Group Overview

Manufacturing change
Industrial manufacturing powers much of the world’s economy and represents a large, diverse, and highly innovative sector. From farm machinery that sows and harvests the world’s food supply to airplanes and telecommunications equipment that connect the global community, industrial manufacturing plays a crucial role in producing goods and services that consumers either need or have come to expect. To expand market share, increase profitability, and remain competitive, manufacturers constantly seek to develop new product lines, enhance supply chains, improve inventory control, consolidate or outsource resources to improve efficiencies, and identify alternative components, parts, or ingredients. Innovations like these need solid protection. Finnegan has a long history of working with leading industrial manufacturing companies and delivering legal strategies to help protect, advocate, and leverage their valuable IP assets.

Understanding both the law and breakthrough science and technology
Protecting the advancements within this sector requires a multidisciplinary IP team. Finnegan’s legal and scientific expertise meets the myriad needs of industrial manufacturers. Our lawyers and professionals have deep experience in aeronautical, electrical, computer, and mechanical engineering; materials science; chemistry; biology; and microbiology. More than 60 of our professionals are former U.S. patent examiners, many with experience in industrial-related fields such as transmissions, robotics, textile manufacturing equipment, construction equipment, pump and valve assemblies, armaments, oil well drilling equipment, and various types of engine systems. In high-stakes cases involving complex matters, our professionals rely on their legal and technical backgrounds to provide insight and advice to clients on issues that have critical legal and business implications.

Protection for everyday improvements as well as cutting-edge advancements
Finnegan attorneys have worked on a wide range of projects for industrial manufacturing clients. The diverse work has included analyzing and prosecuting patents to better measure machine workflow; patent mapping and mining the competitive landscape of alternative energy sources; drafting and negotiating international transactions to license manufacturing technologies; advising clients on government contracting rules relating to aeronautical IP; counseling clients on export controls that may affect the international trade of computer equipment; and litigating automotive patents before the U.S. International Trade Commission.

Services Available

From determining the competitive landscape for new products to developing winning litigation strategies, we provide a full range of services to our industrial manufacturing clients, including:

• Conducting invention capture sessions
• 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
• Counseling on government contracting and export rules as they relate to intellectual property
• Protecting against infringement through litigation or other dispute resolution options
• Providing trademark protection and counseling

A diverse client base
We work with innovative clients of all sizes, including Fortune 100 and Global 1000 companies in industrial manufacturing. Our clients include:

• Caterpillar
• Brooks Automation
• Harley-Davidson Motor Company
• Hon Hai Precision Industries
• Hyundai/Kia Motors
• Imerys
• LG Electronics
• Mitsubishi Heavy Industries, Ltd.
• Subaru
• Toyota Motor Corporation

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.

Caterpillar relies on Finnegan for a full range of trademark services
Since 2000, Finnegan has worked closely with Caterpillar in protecting its well-known trademarks around the world. Recently, we obtained a preliminary injunction for Caterpillar against use of the word marks GAI, GAIERBILLART, GAIERPILLAR, GAIERPOLLAR, the yellow and black color combination for footwear and any associated packaging or labels, and/or any other trademarks, trade names, trade dress, logos, or other names or identifiers confusingly similar to the CATERPILLAR or CAT marks and/or Caterpillar’s footwear trade dress.

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 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.

ITC victory for Toyota keeps U.S. market open for hybrids
Since 2000, Toyota has sold over 500,000 hybrid vehicles in the U.S. When its right to bring certain vehicles into the U.S. was challenged, the company needed fast and decisive relief. We represented Toyota before the ITC and argued that there was no violation of Section 337 or patent infringement.

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.

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.

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.

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.

The world’s largest maker of construction and mining equipment, diesel and natural gas engines, and industrial gas turbines relies on us for patent protection
Since 2000, Finnegan has worked closely with the inventors and legal staff at Caterpillar Inc. The firm has prepared and is prosecuting several hundred patent applications in the U.S. and in many foreign countries. We have also assisted Caterpillar with many opinion matters involving issues of patent validity, infringement, and other subjects. During our relationship, we have also advised on intellectual property issues related to government contracts, licensing, and copyrights, and more recently, we have taken on a significant role protecting Caterpillar's well-known trademarks around the world.

The world’s largest manufacturer of off-highway wheels turned to Finnegan to reverse a preliminary injunction
Titan Wheel faced a preliminary injunction that had far-reaching and negative implications to its core business. Patent owner Vehicular Technologies Corporation prevailed at the district court and sought to prohibit Titan from selling its EZ locker automatic locking differentials for automotive vehicles, as well as a recall of all differentials in its distributors’ possession. Finnegan obtained an emergency stay of the injunction while the appeal was pending at the Federal Circuit and then, on the merits, successfully argued that the district court improperly granted the preliminary injunction based on an incorrect infringement analysis under the doctrine of equivalents. In a 2-1 decision, the Federal Circuit concluded that the accused EZ locker differentials were not likely to infringe the patent claims under a correct understanding of the functions described in the patent-in-suit.

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.

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.