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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

Mark D. Sweet

Tel:
Work +1 202 408 4162
Email:
Finnegan, Henderson, Farabow, Garrett & Dunner LLP

Work Department

Intellectual Property

Position

Managing Partner

Career

Mark Sweet, managing partner of Finnegan, focuses his practice on portfolio analysis; due diligence investigations; interference proceedings; reissue and reexamination proceedings; preparing patentability, validity, and infringement opinions; and client counseling. Mark is a registered patent attorney with extensive experience handling procurement matters before the U.S. Patent and Trademark Office (USPTO), including patent application drafting and prosecution, conducting examiner interviews, filing appeals to and presenting oral arguments before the Patent Trial and Appeal Board (PTAB) of the USPTO, interference proceedings, reissue proceedings, and reexamination proceedings. Mark also has significant experience in inter partes review (IPR) and post grant review (PGR) proceedings.

Education

Catholic University of America, Columbus School of Law
J.D., 1998
College of William and Mary
B.S., Chemistry, 1988


United States: Intellectual property

Patent litigation: full coverage

Within: Patent litigation: full coverage

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 Totten ‘are 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.

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

Within: Leading lawyers

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

Within: Patent: prosecution (including reexamination and post-grant proceedings)

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.

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Patents: licensing

Within: Patents: licensing

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.

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Trademarks: litigation

Within: Trademarks: litigation

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.

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

Within: Trademarks: non-contentious (including prosecution, portfolio management and licensing)

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.

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