Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

Finnegan, Henderson, Farabow, Garrett & Dunner, LLP is one of the largest law firms in the world focusing solely on IP law. With more than 375 lawyers and offices in the United States, Europe and Asia, Finnegan practises all aspects of patent, trademark, copyright and trade secret law, including counselling, prosecution, licensing and litigation. Finnegan also represents clients on IP issues related to international trade, portfolio management, the Internet, e-commerce, government contracts, antitrust and unfair competition. The firm offers full-service IP legal and technical experience in virtually every industry, including electronics, computers and software, industrial manufacturing, consumer products, medical devices, biotechnology, pharmaceuticals, chemicals and alternative energy. The firm has nearly 400 patent professionals (including 146 partners), many of whom hold scientific degrees (90 PhDs); 290 are registered to practise before the US Patent and Trademark Office (USPTO) and 65 are former USPTO patent examiners. 

Located in some of the world’s leading technology and business centres, Finnegan’s international offices serve as valuable resources to the firm’s worldwide IP law practice. In addition to the professionals based in the foreign offices, the firm has hundreds of attorneys who regularly work on cross-border matters. The firm’s professionals are fluent in more than 20 languages, including Chinese, French, German, Guajarati, Hebrew, Hindi, Japanese, Korean, Portuguese, Russian, Spanish and Urdu. 

Surveys conducted by legal and business publications consistently rank Finnegan as a leading IP law firm in the world. In Managing Intellectual Property’s 2005 to 2012 World IP Surveys, the firm was ranked as a Tier 1 or Tier 2 US law firm for contentious and non-contentious patent and trademark work; Chambers USA ranked Finnegan as a top IP law firm from 2008 to 2012; and in 2012 American Lawyer honoured Finnegan with its IP Litigation Department of the Year Award. 

Representative engagements: 

• Representation of Akamai Technologies, Inc in a Federal Circuit en banc appeal. The Federal Circuit reversed a panel decision that Limelight did not infringe Akamai’s patented technology because it had not performed all of the steps of a method claim. The en banc court determined that a party can still show induced infringement under circumstances where both the inducer and the induced party each perform some of the steps of a method claim. The court found that Limelight could be held liable for induced infringement and reversed and remanded the case for further proceedings. 
• Representation of Research In Motion (RIM) at the US International Trade Commission (ITC) regarding electronic cameras. The ITC issued a final determination in favour of RIM that the only asserted claim of Kodak’s US Patent 6,292,218 for electronic cameras was invalid. Kodak was seeking to exclude all RIM BlackBerry devices from the United States.
• Representation of Interdigital in Federal Circuit appeal. The Federal Circuit reversed a decision by the ITC against InterDigital that found Nokia did not infringe two InterDigital patents relating to 3G cellular telephone technology. The Federal Circuit also affirmed the ITC’s decision that InterDigital's substantial patent licensing programme satisfied the ITC’s domestic industry requirement.
• Argument before the US Supreme Court in Bilski v Kappos, a landmark case on the patentability of business methods. The court rejected the limiting ‘machine-or-transformation’ test and confirmed that business methods are not excluded from patenting.
• Representation of AOL in negotiating an agreement with Microsoft to receive $1.056 billion for selling more than 800 patents and granting Microsoft a licence on its remaining 300 patents and patent applications. The effective price of approximately $1.2 million per acquired patent set a new record. 
• Representation of AstraZeneca and Shionogi Pharmaceuticals in a Federal Circuit appeal.  The Federal Circuit upheld the lower court decision of the District of Delaware and affirmed the validity of the patent covering AstraZeneca PLC's cholesterol-reducing drug Crestor®, rejecting arguments by generics makers that it was invalid and unenforceable. 
• Representation of United Technologies Corp (UTC) in the Eastern District of Virginia, which granted summary judgment for UTC, ruling that it did not infringe Rolls-Royce’s patent related to jet engine fans. All claims and counterclaims were dismissed with prejudice, terminating Rolls-Royce’s quest for an injunction and almost $4 billion in damages plus increased damages for alleged wilful infringement.
• Represents Toyota Motor Corporation in numerous prosecution matters involving filing and prosecution of US utility and design patent applications, as well as transactional work ranging from patent licensing agreements, complex cooperative research and development agreements to research and development projects with US government agencies.
• Preparation and prosecution of hundreds of patent applications in the United States and globally for Caterpillar and assistance with other patent issues involving issues of validity, infringement, government contracts and licensing. Finnegan also plays a significant role protecting Caterpillar’s trademarks around the world.