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Finnegan, Henderson, Farabow, Garrett & Dunner LLP

271 17TH STREET, NW, SUITE 1400, ATLANTA, GA 30363-6209, USA
Tel:
Work +1 404 653 6400
Fax:
Fax +1 404 653 6444
Web:
www.finnegan.com

United States: Intellectual property

Patent litigation: full coverage
Patent litigation: full coverage - ranked: tier 1

Finnegan, Henderson, Farabow, Garrett & Dunner LLP

Finnegan, Henderson, Farabow, Garrett & Dunner LLP’s ‘top-tier’ group provides ‘an excellent level of service and business-oriented advice, and has strong knowledge of IP topics’. Reston-based Charles Lipsey successfully represented Forest Laboratories in Hatch-Waxman litigation against generics manufacturer Mylan concerning the Savella fibromyalgia treatment; all asserted patents were found to be valid and infringed. In Palo Alto, Erik Puknys and Lily Lim represented ABBYY and Lexmark International in a case brought by Nuance Communications, obtaining a unanimous defense verdict in US district court and a successful affirmation at the Federal Circuit. Washington DC's Michael Jakes handles technology and medical devices-related cases; he recently acted for PPC Broadband in two related appeals to a Patent Trial and Appeal Board (PTAB) decision which adversely affected the client’s coaxial cable connector patents, and represented Philips Electronics in three cases against ZOLL Medical concerning various medical device technologies. Also in Washington DC are firm chair James Monroe, managing partner Mark Sweet and litigation head Gerald Ivey.

Leading lawyers

Charles Lipsey - Finnegan, Henderson, Farabow, Garrett & Dunner LLP

Next-generation lawyers

Justin Hasford - Finnegan, Henderson, Farabow, Garrett & Dunner LLP

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Patent litigation: international trade commission
Patent litigation: international trade commission - ranked: tier 1

Finnegan, Henderson, Farabow, Garrett & Dunner LLP

Finnegan, Henderson, Farabow, Garrett & Dunner LLP’s Washington DC-based ITC Section 337 team handled a large number of investigations, representing both complainants and respondents in cases involving parallel district court litigation. The team includes practitioners with ITC experience in the chemical, pharmaceutical and mechanical fields. In 2016, John Livingstone (Atlanta) and Mareesa Frederick represented Ajinomoto in US district court and before the ITC in proceedings against CJ CheilJedang to prevent the importation of certain L-tryptophan and L-tryptophan products. Among other high-profile matters, Elizabeth Niemeyer, Qingyu Yin and Smith Brittingham are representing respondents BMC Medical in an ITC investigation regarding four patents of ResMed’s breathing machines and accessories. Christine Lehman, who previously served as an investigative attorney at the ITC, is another main contact.

Next generation lawyers

Elizabeth Niemeyer - Finnegan, Henderson, Farabow, Garrett & Dunner LLP

Mareesa Frederick - Finnegan, Henderson, Farabow, Garrett & Dunner LLP

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Patent: prosecution (including reexamination and post-grant proceedings)
Patent: prosecution (including reexamination and post-grant proceedings) - ranked: tier 1

Finnegan, Henderson, Farabow, Garrett & Dunner LLP

Finnegan, Henderson, Farabow, Garrett & Dunner LLP has in-depth expertise and experience in patent office examinations, from prosecution, reexamination and reissue proceedings, to appeals before the Patent Trial and Appeal Board (PTAB) at the US Patent and Trademark Office (USPTO), where the group is highly recommended for representing petitioners and patent owners from a broad range of industries. The prosecution team files US and foreign patent applications for utility, design and plant inventions, and its patent office trials practice handles inter partes reviews (IPRs), post-grant proceedings and covered business method (CBM) reviews. The ‘phenomenal team’ includes the highly recommended Reston-based Erika Harmon Arner, who was appointed president of the PTAB Bar Association; Washington DC-based Charles Van Horn, who is ‘a luminary in his field’; chemical and biotech specialist Adriana Burgy, also based in Washington DC, who ‘provides exceptional thinking in terms of navigating patent prosecution in light of competing technology’; Atlanta’s Virginia Carron, who has ‘exceptional legal and practical business sense’; and, also in Atlanta, PTAB trial practice head Jason Stach, who represents clients before the PTAB and in Federal Circuit appeals stemming from reexaminations and court actions. Managing partner Mark Sweet (Washington DC) counts NanoFlex Power Corporation as his client, which he assists with its worldwide patent portfolio related to organic photovoltaic devices. Sweet and Reston-based Christopher Isaac are acting for Caterpillar in prosecuting several hundred utility and design patent applications in the US and elsewhere, assisting with opinions involving issues of patent validity and infringement, and handling IPR proceedings.

Leading lawyers

Erika Harmon Arner - Finnegan, Henderson, Farabow, Garrett & Dunner LLP

Mark Sweet - Finnegan, Henderson, Farabow, Garrett & Dunner LLP

Next generation lawyers

Jason Stach - Finnegan, Henderson, Farabow, Garrett & Dunner LLP

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Patents: licensing
Patents: licensing - ranked: tier 1

Finnegan, Henderson, Farabow, Garrett & Dunner LLP

IP powerhouse Finnegan, Henderson, Farabow, Garrett & Dunner LLP is routinely engaged in top-level transactional and contentious work for a large number of industry giants in the consumer products and pharmaceuticals space. Patent litigator Doris Johnson Hines is representing Toshiba Corporation and Toshiba America Information Systems in litigation initiated by MPEG LA alleging breach of contract with respect to two license agreements for two patent pools administered by MPEG LA. Among other highlights, seasoned litigators Laura Masurovsky and Houtan Khalili Esfahani in Washington DC successfully represented S3 Graphics, a subsidiary of HTC Corporation, in a patent license ownership dispute with Advanced Micro Devices, ATI Technologies and ATI International relating to high-performance graphics chips used in software and video game components, and Washington DC-based Michele Bosch advised Axon Neuroscience on IP issues related to licensing and cooperative research and development agreements. Atlanta-based Roger Taylor, who also operates from the firm’s Tokyo office, is also a key name to note, as is Washington DC-based Brian Kacedon, who focuses on patent and technology licensing and litigation. In addition to the locations mentioned already, the group has a presence in Boston, Palo Alto and Reston. It also regularly works with individuals from the firm’s Tokyo and Taipei offices.

Next generation lawyers

Brian Kacedon - Finnegan, Henderson, Farabow, Garrett & Dunner LLP

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Trade secrets (litigation and non-contentious matters)
Trade secrets (litigation and non-contentious matters) - ranked: tier 3

Finnegan, Henderson, Farabow, Garrett & Dunner LLP

Finnegan, Henderson, Farabow, Garrett & Dunner LLP’s Washington DC-based team handles consulting, counseling, non-litigation enforcement and dispute resolution. Gerson Panitch secured a victory in a summary judgment for Macrocure in a longstanding dispute with Cognate BioServices arising from alleged theft of data concerning human and veterinary cell therapy products. Eric Fues represented Flexsys America in a misappropriation of trade secrets claim filed against Process Engineering Associates concerning the manufacturing of insoluble sulfur; the case is one of the first complaints filed under the new federal Defend Trade Secrets Act. Other highlights included defending RichWave Technology and its president against claims of trade secrets misappropriation filed by Epic Communications. John Williamson is also recommended.

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Trademarks: litigation
Trademarks: litigation - ranked: tier 1

Finnegan, Henderson, Farabow, Garrett & Dunner LLP

Finnegan, Henderson, Farabow, Garrett & Dunner LLP is a highly regarded boutique with remarkable litigation expertise; it has been handling a large number of trademark disputes in a broad range of industries and has particular expertise in survey research. Recent highlights include the successful representation of PNC Bank in a dispute with mobile application developer Keith Alexander Ashe regarding the use of the ‘Spendology’ mark, and obtaining a preliminary injunction for LG against 18 companies that sold counterfeit LG TONE Bluetooth headsets. The team also handled several contentious matters for Under Armour, including a recent defense against a trademark infringement claim by Healthbox Global Partners regarding the client’s newly launched connected fitness product under the name ‘Healthbox’. Recommended experts include practice head Douglas Rettew as well as Mark Sommers, Danny Awdeh and Julia Anne Matheson, all of whom are based in Washington DC.

Leading lawyers

Douglas Rettew - Finnegan, Henderson, Farabow, Garrett & Dunner LLP

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Trademarks: non-contentious (including prosecution, portfolio management and licensing)
Trademarks: non-contentious (including prosecution, portfolio management and licensing) - ranked: tier 1

Finnegan, Henderson, Farabow, Garrett & Dunner LLP

Specialist firm Finnegan, Henderson, Farabow, Garrett & Dunner LLP has remarkable expertise in managing large domestic and international trademark portfolios as well as prosecution work. For example, the team assisted new client Illumina with a comprehensive inventory of its trademark holdings around the world, has been handling its international trademark portfolio, and provided assistance for the launch of the new ‘Basespace’ product. Another new client is Charming Charlie, for which it handles its international trademark portfolio and assists with expanding into new markets. Longstanding clients of the firm include Bridgestone Firestone, Caterpillar, Fuente Cigar, Head USA, Starbucks and Subaru. On the transactional side of the practice, the team provided trademark due diligence to XO Communications regarding its acquisition by Verizon. Recommended lawyers include Julia Anne Matheson, Christopher Foley and Brett Heavner, who are all based in Washington DC, while the practice also has resources in Boston and Atlanta.

Leading lawyers

Julia Anne Matheson - Finnegan, Henderson, Farabow, Garrett & Dunner LLP

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Legal Developments worldwide

Legal Developments and updates from the leading lawyers in each jurisdiction. To contribute, send an email request to
  • New requirement for all issuers operating on the Luxembourg Stock Exchange

    On 10 August 2017 the Luxembourg Stock Exchange announced that all domestic and foreign issuers operating on the regulated market (Bourse de Luxembourg) or on the multilateral trading facility (Euro MTF) of the Luxembourg Stock Exchange must provide their legal entity identifier (“LEI ”) codes to the Luxembourg Stock Exchange before 15 September 2017.
  • Luxembourg law on the exploration and use of space resources entered into force

    The Luxembourg law on the exploration and use of space resources of 20 July 2017 entered into force on 2 August 2017 and placed Luxembourg among the most innovative space-oriented nations in the world.
  • VAT in the GCC – Q&A updates from the UAE Ministry of Finance

    On 9 July the United Arab Emirates (UAE) Ministry of Finance (MOF) published an update of the Value Added Tax (VAT) FAQ section of its website.
  • PRIIPs KID: The final pieces of the puzzle

    The pieces of the puzzle are finally falling into place. The long-awaited level 3 and 4 measures have been published earlier this week, half a year before the PRIIPs KID becomes compulsory.
  • MiFID II: Further guidance on product governance requirements

    Amongst the numerous topics covered by the Markets in Financial Instruments Directive II (MiFID II), the European Securities and Markets Authority (ESMA) has decided to provide further guidance on the requirements regarding product governance through its guidelines dated 2 June 2017 which focus on the target market assessment by manufacturers and distributors of financial products.     
  • Arendt & Medernach is again the “Luxembourg Tax Firm of the Year”

    The partners of Arendt & Medernach are pleased to announce that their firm has been awarded once again the prestigious “Luxembourg Tax Firm of the Year” title during the International Tax Review’s European Tax Awards ceremony held at the Savoy Hotel in London on 18 May.
  • Signature of the Multilateral instrument – reservations made by Luxembourg

    On 7 June 2017, the official ceremony for the signing of the multilateral instrument (“MLI”) took place bringing to a close a process initiated last year when a consensus was reached on the wording of the MLI on 24 November 2016 (see also our newsflash dated 2 December 2016, available on our website www.arendt.com section Publications/Newsflash).
  • Arendt & Medernach: Luxembourg Law Firm of the Year

    Luxembourg, May 2017 – Arendt & Medernach is proud to have been named “Luxembourg Law firm of the year” both by Chambers & Partners and IFLR (International Financial Law Review). The prestigious trophies were both received in April in London at the respective ceremonies of the Chambers Europe Awards 2017 and the IFLR European Awards 2017.
  • First VAT EU case law on the cost-sharing VAT exemption

    The question of the scope of the cost-sharing VAT exemption, also referred to in the Council Directive 2006/112/EC of 28 November 2006 as amended ("EU VAT Directive") as “Independent Groups of Persons” or “IGPs”, is currently being debated at the Court of Justice of the EU (“CJEU”) in several cases. Last Thursday marked the first milestone regarding this specific VAT exemption since the CJEU released its judgment in the case Commission v Luxembourg (C-274/15).
  • An Introduction to Corporate Guarantee

    In the UAE, the risk management activities inherent in running a corporate or investment banking business remain of crucial importance, not least because of the strong local characteristic of “name lending”, by which is meant lending or providing other banking facilities to family or other private businesses, primarily on the strength of the “name” or “names” of the proprietors standing behind the business, rather than on the strength of the asset quality and underlying credit of the particular business. Of course, in practice, there is commercial overlap between the proprietors and the companies which they own, but the credit analyses can break down where poor banking practices and procedures result in poorly constructed legal documentation and gaps in guarantee and security support documents.