China: Foreign International Japan: Foreign United States - DC Metro Area United States - Georgia United States - Massachusetts United States Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

Finnegan, Henderson, Farabow, Garrett & Dunner, LLP is one of the world’s largest firms focusing on IP law. From offices in the United States, Asia and Europe, Finnegan practises all aspects of patent, trademark, copyright and trade secret law, representing clients on IP issues relating to US and European patent and trademark law, international trade, portfolio management, the Internet, cybersecurity, e-commerce, government contracts, antitrust and unfair competition.

Finnegan offers full-service IP legal experience and technical expertise in virtually every industry and technology, including biotechnology, pharmaceuticals, biologics and biosimilars, chemicals, electronics, semiconductors, computers and software, automotive, aerospace and aviation, industrial manufacturing, consumer products, medical devices, clean energy and renewables, robotics and three-dimensional printing.

More than 300 of Finnegan’s legal professionals hold degrees in scientific disciplines (over 75 hold PhDs), more than 230 are registered to practise before the US Patent and Trademark Office (USPTO) and nearly 40 are former USPTO patent examiners.

With more than 50 years’ IP experience, Finnegan handles hundreds of litigation cases across the spectrum of IP-related venues, including district courts, the US International Trade Commission, the USPTO’s Patent Trial and Appeal Board (PTAB), the Federal Circuit – where they have briefed and argued more cases than any other law firm – and the US Supreme Court. Since being 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. The firm files approximately 2,500 US and 1,000 foreign patent applications annually, and regularly manages large global trademark portfolios, including portfolios totaling more than 10,000 registrations and applications in more than 200 countries.

Surveys conducted by legal and business publications consistently rank Finnegan as one of the leading IP law practices in the world. Managing Intellectual Property ranked Finnegan as the first-ever “IP Firm of the Decade” and recognised the firm as “Global IP Firm of the Year” in 2016. In Managing Intellectual Property’s ‘World IP’ surveys, the firm is ranked as a top US law firm for contentious and non-contentious patent and trademark work; Chambers USA also ranks Finnegan as a top IP law firm.

Representative engagements

  • Successfully persuaded the US Court of Appeals for the Federal Circuit to vacate and remand the PTAB decisions that adversely affected three patents related to coaxial cable connectors owned by client PPC Broadband.
  • Defended ABBYY Software and Lexmark against infringement accusations directed to two patents relating to optical character recognition (OCR) software and a third patent directed to distributed document processing over a computer network. Nuance also sued Lexmark, a former Nuance customer, after it stopped using Nuance products and started using ABBYY’s OCR software. Nuance also alleged that ABBYY infringed its trade dress for software packaging used for retail and internet sales. Before trial, Nuance sought more than $260 million in damages from the defendants. The jury rejected Nuance’s infringement allegations in their entirety, returning a verdict of no infringement for all three Nuance patents and finding that Nuance’s alleged trade dress was not protectable. The Federal Circuit affirmed the district court’s judgment.
  • Provides strategic worldwide IP counselling to Vertex with a focus on Vertex’s US Food and Drug Administration (FDA) approved cystic fibrosis products, including Kalydeco® and Orkambi®, for several still-expanding patent portfolios protecting these products and future products for cystic fibrosis.
  • Provides ongoing protection of Otsuka’s blockbuster Abilify® franchise. Finnegan previously won injunctions in a set of cases against seven companies seeking FDA approval to market generic copies of Otsuka’s tablet version of Abilify®, precluding all of them from marketing their products for several years. Finnegan also assists Otsuka with the management and prosecution of its worldwide patent portfolio.
  • Secured a post-grant injunction and enhanced supplemental damages for Asetek Danmark A/S against CMI USA Inc, for its wilfully infringing sales following a jury verdict in Asetek’s favour. In deciding the post-trial motions, the presiding judge entered the permanent injunction requested by Asetek, found that CMI’s post-verdict sales were wilful, awarded Asetek an enhanced 25.375% royalty on those sales and rejected CMI’s motions for new trial and judgment as a matter of law.

Main address

901 New York Avenue North West
Washington DC 20001-4413
United States

Contact details

E: info@finnegan.com
T: +1 202 408 4000
F: +1 202 408 4400
W: www.finnegan.com

Professional contacts

Mark D Sweet, Managing partner
E: mark.sweet@finnegan.com

James B Monroe, Chair
E: james.monroe@finnegan.com

Other offices

Atlanta, Boston, London, Palo Alto, Reston, Seoul, Shanghai, Taipei, Tokyo

Sample client list

  • AOL
  • AstraZeneca
  • Caterpillar
  • Eli Lilly
  • FedEx
  • FIS
  • LG
  • Otsuka
  • Philips
  • Sony
  • Toshiba
  • Toyota

Recommended individuals at this firm

J Michael Jakes
United States - National

Anthony C Tridico
United Kingdom - England

Ningling Wang
China: Foreign

Jeffrey A Berkowitz
United States - DC Metro Area

Erika Harmon Arner
United States - DC Metro Area

Elizabeth D Ferrill
United States - DC Metro Area

Naoki Yoshida
Japan: Foreign

Charles E Lipsey
United States - National

Laura P Masurovsky
United States - DC Metro Area

Philip L Cupitt
United Kingdom - England

Smith R Brittingham
United States - DC Metro Area

Doris Johnson Hines
United States - DC Metro Area

Virginia L Carron
United States - Georgia

Gary C Ma
Taiwan

Robert Stanley

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Issue 87