Finnegan, Henderson, Farabow, Garrett & Dunner LLP

Finnegan, Henderson, Farabow, Garrett & Dunner LLP is one of the world’s largest firms focusing on intellectual property law. With offices in the United States, Asia and Europe, Finnegan practices all aspects of trademark, copyright, and patent law, including counselling, prosecution, licensing and litigation. Finnegan also represents clients in IP issues relating to advertising, trade secrets, international trade, portfolio management, the Internet, e-commerce, government contracts, antitrust and unfair competition.

Finnegan offers full-service IP legal and technical experience in virtually every industry and technology, including consumer products, sports and fitness, textiles, food and beverage, automotive, biotechnology, pharmaceuticals, life sciences, chemicals, electronics, semiconductors, computers and software, industrial manufacturing, medical devices, clean energy and renewables, robotics, artificial intelligence, media, and three-dimensional printing.

With the firm’s practice centered on intellectual property, the firm is able to create economies of scale and focus all resources on providing the best tools, practices, and procedures for clients’ IP matters.

• 225+ are registered to practise before the US Patent and Trademark Office (USPTO), European Patent Office (EPO), the German Patent and Trade Mark Office (DPMA), the UK Intellectual Property Office (UKIPO), and the European Union Intellectual Property Office (EUIPO).
• With more than 55 years’ IP experience, Finnegan handles hundreds of litigation cases across the spectrum of IP-related venues, including district courts, the US International Trade Commission (ITC), the USPTO’s Patent Trial and Appeal Board (PTAB), the US Court of Appeals for the Federal Circuit, and the US Supreme Court. Since being the one of the first to file a petition and subsequently argue a post-grant review of a covered business method case following the implementation of the America Invents Act, Finnegan is one of the busiest law firms representing petitioners and patent owners in post-grant review proceedings, with more than 90 covered business method reviews (CBMs), more than a dozen post-grant reviews (PGRs, relatively few of which have been filed), and more than 900 inter partes review (IPR) proceedings. The firm files approximately 2,500 US and 1,000 foreign patent applications annually.

Surveys conducted by legal and business publications consistently rank Finnegan as one of the leading intellectual property law practices in the world. The firm is consistently ranked in the United States for contentious and prosecution trademark and patent work by publications including Managing Intellectual Property and The Legal 500, which have ranked Finnegan as a top tier firm in nearly every significant IP category for more than 10 years. The publications cite the firm’s winning record, technical expertise, and deep bench of talent in all aspects of IP litigation, including trials, appeals, and proceedings at the USPTO and ITC investigations.

Representative engagements:

• Handled appeal after TCL received an unfavorable judgment of willful infringement in district court, which resulted in a damages award of over $110m. Convinced the Federal Circuit that the claims were patent ineligible under 35 U.S.C. § 101. The court reversed the district court’s ruling of no invalidity, vacated the entire judgment, and awarded costs to TCL. Finnegan further persuaded the Eastern District of Texas to tax $2.35m in costs.
• Represented petitioner DJI at the PTAB in a series of IPRs against five Synergy Drone patents, resulting in cancellation of all 76 claims related to unmanned aerial vehicles.
• Appealed adverse IPR decision to the Federal Circuit for Kaken Pharmaceuticals and Bausch Health, arguing that the final written decision finding the patent obvious/unpatentable was based on an erroneous claim construction ruling. The Federal Circuit overturned the PTAB’s claim construction of a key term in the patent, reversing the finding of obviousness that led to the finding of unpatentability and remanding to the Board.
• Convinced the Federal Circuit to vacate and remand adverse PTAB decisions for client FOX Factory, finding the patent owner was not entitled to any presumption that the patented invention (related to bicycle chainring technology) was responsible for the alleged secondary considerations. On remand, the PTAB found all of patent owner’s claims unpatentable.
• Provided strategic worldwide intellectual property counselling to Vertex with a focus on Vertex’s FDA approved cystic fibrosis products, including Kalydeco^®, Orkambi^®, and Symdeko^®, as well as several preclinical compounds, for several still-expanding patent portfolios protecting these approved and future products for treatment of cystic fibrosis.

Sample client list: AstraZeneca; Bausch Health; Bridgestone; Capital One; Caterpillar; Eli Lilly; FedEx; FIS; Head; Google; IBM; IHG; LG; Lockheed Martin; Marriott; Nestlé; Otsuka; Patagonia; Petco; Philips; Subaru; Toyota; Varsity; Under Armour