The Legal 500

Within Patent licensing and transactional , Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P. is a first tier firm,

Intellectual property powerhouse Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P. routinely advises some of the world’s largest companies on a wide variety of licensing and portfolio management issues. In the past year, the team has handled around 300 licensing matters for small and mid-sized companies and large corporations from diverse industries including electronics, pharmaceuticals and consumer products. The team includes three partners who spend more than half their time in the field and are supported by another 21 partners and 20 counsel and associates. Work highlights from 2010 included advising longstanding client and leading patent management company Audio MPEG on its licensing and enforcement program for patents relating to digital compression technology. The team also advised Vertex Pharmaceuticals on issues relating to their drug development programs for treating the Hepatitis C virus and Cystic Fibrosis. Eric Raciti in Cambridge also represents Boston Scientific on a number of ongoing licensing matters. The team is jointly headed out of the Washington DC office by Patrick O’ Reilley, who focuses on biotechnology and chemicals, and John Paul, who covers consumer products and medical devices. Other active partners include William Pratt and Douglas Henderson, also based in Washington DC. Major clients include Abbott Laboratories, Accenture, INEOS, Mitsubishi Corp, Philips Electronics North America and Sony.

Within Patent litigation: full coverage, Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P. is a first tier firm,

Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P. is highly regarded for its overall IP capabilities, and has ‘a strong ability to understand and translate complex technical principles into effective legal arguments’. The specialist firm draws on a large team with wide sector expertise to advise on patent infringement cases. Litigation head Doris Hines and Michael Jakes, who leads the appellate practice, offer particular experience in ITC cases, and successfully represented the complainant in Rambus v Nvidia Corp, regarding infringement of multiple semiconductor patents. It also represented Equitable Resources/Bilski in Bilski v Kappos, with the Supreme Court affirming that the Bilski business method was not patentable, and also overturning the Federal Circuit’s ‘machine-or-transformation test’. On the life sciences side, litigator Charles Lipsey successfully obtained a ruling for AstraZeneca, IPR and Shionogi that multiple generic drug companies infringed the patent of blockbuster drug Crestor, with a decision to maintain exclusivity until 2016. It also represented Eli Lilly and Company against patent invalidity claims from Teva Pharmaceuticals, winning both district court and appeal rulings in favor of the client. i4i is another key client.

Within Patent litigation: International Trade Commission, Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P. is a first tier firm,

Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P. has particular expertise in ITC litigation, fielding ‘a strong team that is deeply capable’. Headed by Smith Brittingham and Christine Lehman, it includes 15 partners focusing on patent litigation before the ITC. Drawing on knowledge across a range of industries, recent Section 337 representations include a successful outcome for LG Electronics in a case brought by competitor Whirlpool, as well as a ruling in favor of Mitsubishi regarding patent infringement of wind turbines. A particular highlight for the practice was successfully representing Rambus in its long-running battle with Nvidia, resulting in a bar on importation of semiconductor chips. Michael Jakes (noted for his ‘steadfast style and calm demeanour under fire’) was among the attorneys leading on the case. The team also acted for Pioneer against Honeywell, obtaining a settlement granting use of each company’s patent technology for GPS navigation devices. Other clients include semiconductor makers Phicom Corporation and Monolithic Power Systems.

Within Patent prosecution: utility and design patents , Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P. is a first tier firm,

Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P. is a well-known and well-respected full-service IP boutique regarded as ‘pre-eminent in intellectual property matters’. It has a global presence, with offices in Brussels and numerous locations across Asia, and covers diverse industries such as consumer products, nanotechnology and agriculture. Some 90 of the firm’s lawyers boasts a PhD, and 60 have previously served as patent examiners. Eighteen of the firm’s partners are dedicated purely to prosecution, and they are supported by some 53 others. The team is headed from Washington DC by chemistry and biotechnology specialist Charles Van Horn, supported by medical devices and technology expert Leslie Bookoff. Other key partners include Washington DC-based Bryan Diner, who has strong ties with Europe. Longstanding clients include Caterpillar, for which it has prosecuted several hundred applications, and Toshiba, which it advises in relation to areas including communications, electronics and semi-conductors. Other major clients are Accenture, Boston Scientific Corp, Intertrust Technologies, Sony, SAP AG and Vertex, and the practice has taken on a number of new clients in recent months including RIM and Cypress Bioscience.

Within Trademarks: litigation, Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P. is a first tier firm,

Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P.’s ‘practical, smart and effective’ trademark litigation practice receives high praise for its broad capabilities, and expertise in domain name disputes, and is ‘best of the best, especially when losing is not an option’. The East Coast-based team is mainly located in Washington DC, and is led by David Kelly, who is lead counsel for major names in hi-tech, insurance and industrial manufacturing. Also noted is experienced trial and appellate attorney Douglas Rettew, who recently defended Under Armour in a case brought by sporting goods company Rawlings alleging trademark infringement, and sought an injunction against the sale of Under Armour’s recently launched helmet line. The court denied the injunction. Mark Sommers provides experience in representing international clients, with a focus that includes domain name disputes. The practice is increasingly taking on high-stakes lawsuits before the Trademark Trial and Appeal Board, and had a successful result for Italian fashion label Emilio Pucci in a case arguing that the defendant’s mark ‘Emidio Tucci’ was confusingly similar to the client’s brand name. Other recent disputes have involved trade dress issues and household names in media, fashion and consumer products. Trademark attorney Monica Riva Talley left to join Washington DC firm Sterne, Kessler, Goldstein & Fox PLLC in August 2010.

Within Trademarks: non-contentious (full coverage), Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P. is a first tier firm,

The ‘outstanding’ trademarks team at Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P. is led by David Kelly in Washington DC, and includes 11 partners, who ‘are helpful, friendly and go the extra mile’. The team is notable for its depth and breadth of experience, geographical reach, and industry knowledge, with a practice ranging from routine to complex matters. In Washington DC, Julia Anne Matheson ‘responds promptly, gives a thorough assessment of the issues and provides accurate information and direction on how to proceed’. The hugely experienced and well-respected team, which includes recommended lawyers Jonathan Gelchinsky and Brett Heavner, is praised as ‘responsive, creative in their solutions, and extremely knowledgeable in their field’. The team assists Starbucks with its domestic portfolio, handling routine clearances relating to the company’s time-sensitive seasonal promotions, and also acts for The Walt Disney Company (and related companies Pixar, The Disney Channel, and ABC Television), The Association of Tennis Professionals (ATP), Caterpillar, XConnect Global Networks, and Shenzhen TRONY Science and Technology Development. It recently gained The NFL Players Association as a new client.

Within Trade secrets, Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P. is a third tier firm,

With patent and trademark protection as its bread and butter, Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P. is a natural choice for technology-focused operations from innovative start-ups to Fortune 500 giants in the battle to maintain control over critical know-how. Fifteen partners with trade secrets experience command a network of 400 attorneys, over 90 of whom hold doctorates in disciplines ranging from neurobiology to electrical engineering, and can consequently assimilate technical information quickly and impart this to judge and jury to full effect. Clients include Sinterfire, Force Protection Industries, A10 Networks, Toyota and Intercil. Leading partners Stephen Peterson and John Hornick in Washington DC complement the additional offering in Atlanta, Cambridge, Palo Alto and Reston.