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 more than 400 patent professionals (including 140 partners), many of whom hold scientific degrees (80 PhDs), 290 are registered to practise before the US Patent and Trademark Office (USPTO), and 60 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, 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 noncontentious patent and trademark work; Chambers USA ranked Finnegan as a top IP law firm from 2008 to 2011; and in 2012 American Lawyer honoured Finnegan with its IP Litigation Department of the Year Award.

Representative engagements

• Representation of Eli Lilly and Company in defending the validity of its patents on its important osteoporosis drug Evista^® against Ariad Pharmaceuticals. The Federal Circuit took the case en banc and in its decision confirmed the existence of a separate written description requirement. It also affirmed the validity of the patent and issued exclusive patent protection until 2014.
• Argued 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 i4i, a Canadian software company that develops tools for working with documents containing XML markup. The Federal Circuit unanimously affirmed the district court judgment of wilful infringement against Microsoft Corp in one of the largest ($290 million) patent verdicts sustained on appeal.
• Representation of Rambus in a complex multi-party US International Trade Commission (ITC) investigation, regarding boards and cards containing memory controllers. The ITC affirmed the administrative law judge’s ruling in favour of Rambus and issued limited exclusion and cease-and-desist orders barring nVidia and other respondents from importing infringing products for sale in the United States.
• Representation of AstraZeneca and Shionogi Pharmaceuticals in the District of Delaware, which found that the Food and Drug Administration Orange Book listed patent for the active ingredient in the anti-cholesterol drug Crestor^® was valid and enforceable, and issued market exclusivity until 2016.
• 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.
• Serves a key role in implementing Research In Motion’s (RIM) global patent strategy, from prosecuting patents before the USPTO to coordinating the prosecution of counterpart cases in other jurisdictions around the world. The firm has also handled several significant reexaminations (ex parte and inter partes) for RIM.
• Prepares and prosecutes hundreds of patent applications globally for Caterpillar, and assists with other patent issues involving issues of validity, infringement, government contracts and licensing, and protecting Caterpillar’s trademarks around the world.