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Finnegan, Henderson, Farabow, Garrett & Dunner LLP

901 NEW YORK AVENUE, NW, WASHINGTON, DC 20001-4413, USA
Tel:
Work +1 202 408 4000
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

The ‘very knowledgeable’ team of IP giant Finnegan, Henderson, Farabow, Garrett & Dunner LLP impresses with its wide sectorial breadth and deep bench. The team is especially active in the pharmaceutical, electronics and technology sectors, and has extensive experience in combined district court litigation and IPR matters. Managing partner Mark Sweet, chair James Monroe and head of litigation Christine Lehman are based in Washington DC while appellate department head Erik Puknys sits in Palo Alto. Atlanta’s Virginia Carron and Washington DC’s Jeffrey Tottenare meticulous with follow-ups and follow-throughs’. Reston’s Charles Lipsey and Washington DC’s Justin Hasford are also noted. Among the many notable recent matters was the representation of Aqua Products and Fluidra Group in a Federal Circuit Appeal from an IPR regarding an automated pool-cleaning patent, securing a new precedent governing the burden of patentability in IPR proceedings. Equally impressive was the litigation work for Biogen in which thirty suits were filed against twenty-six sets of defendants seeking to obtain approval from the Food and Drug Administration for the marketing of generic versions of blockbuster drug Tecfidera®. Other clients include AbbVie, LG Electronics and Sony.

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

Impressing with ‘professional and efficient service’, IP heavyweight Finnegan, Henderson, Farabow, Garrett & Dunner LLP acts for complainants and defendants from a broad array of sectors, including the technology, automotive, electronics, chemical and pharmaceutical industries, and often assists with matters involving parallel ITC, district court and USPTO proceedings. Recent highlights include representing respondent Hangzhou Chic Intelligent Technology in two Section 337 investigations regarding hoverboards, and advising complainant DSM Desotech on an optical fiber patent infringement matter. Hytera America joined Caterpillar, Eli Lilly and LG Electronics on the client list. Noteworthy practitioners include practice head Smith Brittingham, Mareesa Frederick, Christine Lehman, John Livingstone and Elizabeth Niemeyer. Qingyu Yin has ‘significant experience in IP disputes with Chinese clients’. Luke McCammon made partner.

Leading lawyers

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

Next generation lawyers

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‘s ‘very knowledgeable’ team fields a very active PTAB practice - the main focus of Reston’s Erika Harmon Arner and Atlanta’s Jason Stach - with a strong track record in covered business method reviews, post-grant reviews and inter partes reviews (IPR); the group is also exceedingly well versed in patent applications and portfolio strategy development, with experience including utility, plant and design patents and its large sectorial breadth renders possible a varied caseload that recently included strategic patent counselling for Vertex Pharmaceuticals regarding cystic fibrosis products. Washington DC-based managing partner Mark Sweet led advice for NanoFlex Power on its worldwide patent portfolio in relation to application drafting work and due diligence work regarding competitors, while Elizabeth Ferrill and Gregory Gramenopoulos, both also in Washington DC, assisted Google with design patent application preparation and counselling matters regarding graphical user interfaces and icons. Arkema engaged the team, here led by Sweet, Mark Feldstein and Brian Kacedon, for a representation in a post-grant review before the PTAB, challenging a Honeywell patent regarding automobile air conditioning chemicals. Other clients include AstraZeneca, Caterpillar and Toyota. Elliot Cook in Reston, Li Feng, Joshua Goldberg and Erin Sommers in Washington DC made partner and former Lead Administrative Patent Judge at the United States Patent and Trademark Office (USPTO) Trenton Ward joined the Atlanta office.

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 giant Finnegan, Henderson, Farabow, Garrett & Dunner LLP excels in patent portfolio analysis and monetization and acts for a diverse client base that includes major multinationals such as Abbott Vascular, Otsuka Pharmaceuticals and LG Electronics alongside start-ups. The group is adept at negotiating and drafting agreements for business and technical collaborations, and has strong experience in handling corporate transactional work, including due diligence. Litigation settlement agreements are another key strength. Reston’s Anthony Gutowski and Washington DC’s William Pratt advised Toyota on multiple patent and technology licence agreements, including contracts with universities, research agreements with government laboratories, and commercial transactions, and non-profit institute Cognitive Research Enterprises engaged the team to assist with the licensing aspects of the acquisition of most of its IP assets. In a recent example of pharmaceutical work, the group negotiated an exclusive licence agreement for Dermavant Sciences with Portola Pharmaceuticals for the development and commercialisation of a hematologic cancer treatment. Other mandates stemmed from the chemical, robotics and electronics sectors. The firm’s deep bench also includes practice head John Paul, managing partner Mark Sweet, Doris Johnson Hines, Michele Bosch, Adriana Burgy, and Brian Kacedon, all from the Washington DC office.

Leading 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 attorneys handle matters ranging from state and federal court litigation and investigations to strategic reviews of data protection and non-disclosure agreements. Eric Fues led a team representing Flexsys America and Solutia in a trade secrets misappropriation claim against Process Engineering Associates; the case settled. Other highlights included defending Hytera against trade secret misappropriation claims filed by Motorola. John Williamson is another name to note. All attorneys mentioned are based in Washington DC, although the group also includes Erik Puknys, who is based in Palo Alto.

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Trademarks: litigation
Trademarks: litigation - ranked: tier 1

Finnegan, Henderson, Farabow, Garrett & Dunner LLP

Finnegan, Henderson, Farabow, Garrett & Dunner LLP’s ‘excellent’ practice has strong experience acting for clients in litigation brought before federal and state courts, as well as the Trademark Trial and Appeal Board (TTAB). Mark Sommers successfully represented LG in obtaining $168m in damages in a counterfeiting case brought against a number of companies. Practice co-head Douglas Rettew and Danny Awdeh led advice to Bridgestone in a suit brought against a number of companies regarding the client’s ‘Firestone’ mark. The firm also assisted Universal Audio with proceedings brought against Earbyte regarding the company’s unauthorized use of the client’s marks. Mark Sweet and James Monroe also lead the practice, which is 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

Noted for delivering the ‘highest levels of expertise’ in trademark and copyright law, Finnegan, Henderson, Farabow, Garrett & Dunner LLP’s practice handles registration and advises on portfolio management matters for high-profile domestic and international clients. Douglas Rettew led advice to TD Bank in a broad range of domestic portfolio management issues, including filing, prosecution, investigations and clearances. Brett Heavner assisted Xiaomi with prosecution and global brand enforcement matters, including trademark registrations. The group includes managing partner Mark Sweet, chair James Monroe, Christopher Foley and Danny Awdeh. All partners are based in Washington DC. Capital One, Patagonia and Varsity Brands are among its clients.

Next generation lawyers

Danny Awdeh - Finnegan, Henderson, Farabow, Garrett & Dunner LLP

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