The Legal 500

Twitter Logo Youtube Circle Icon LinkedIn Icon

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

James B. Monroe

Tel:
Work +1 202 408 4159
Email:
Finnegan, Henderson, Farabow, Garrett & Dunner LLP

Work Department

Intellectual Property

Position

Chair

Career

James Monroe, chair of Finnegan and former managing partner, is experienced in all aspects of intellectual property law. He focuses on U.S. district court and appellate litigation and has been lead counsel for numerous matters involving U.S. patent rights. In particular, he has extensive litigation experience involving the Hatch-Waxman Act governing the approval of pharmaceutical products.

Member

  • American Intellectual Property Law Association (past-chair, Awards Committee; past-vice-chair, Young Lawyers Committee)
  • American Bar Association (Sections on Litigation and Intellectual Property)
  • Virginia Bar Association (Sections on Litigation and Intellectual Property)
  • District of Columbia Bar Association (Sections on Litigation, and Intellectual Property)
  • Federal Circuit Bar Association
  • Giles S. Rich American Inn of Court
  • American Institute of Chemical Engineers

Education

George Washington University, National Law Center
J.D., 1991
Washington University
B.S., Chemical Engineering, 1986


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 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.

[back to top]

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.

[back to top]

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.

[back to top]


Back to index

Legal Developments worldwide

Legal Developments and updates from the leading lawyers in each jurisdiction. To contribute, send an email request to
  • New Legislation Reduces Maximum Weekly Working Hours in Korea

    *For better understanding of this article with other graphics , we highly recommend you to visit our firm's website as below. http://www.bkl.co.kr/upload/data/20180410/bkl-legalupdate-2018000410.html#.WsxBYIhuaHs
  • Supreme Court Renders Decision Calling for “Gender Sensitivity” in Sexual Harassment Cases

    Amid the widespread attention that sexual harassment/violence in the workplace has received due to international movements such as the “Me Too” movement, the Supreme Court of Korea has recently rendered a significant decision on the need to reform the judicial system’s approach to sexual harassment cases.
  • Geographical Indications Of Origin In Serbia: Where The Past Fuels The Future

    This article was written by Dragomir Kojić, Partner ⃰, and Tamara Bubalo, Associate ⃰, and was originally published in Issue 5.2 of the CEE Legal Matters Magazine. To see the original article, please follow this link.
  • Striving Towards the Black Gold

    This article was written by Petar Mitrović, Partner ⃰, and Nikolina Kažić, Associate ⃰, and was originally published in Issue 5.2 of the CEE Legal Matters Magazine To see the original article, please follow this
  • Montenegro To Publish A Tender For A 200 MW Solar Power Plant

    The Montenegrin Government plans to publish a tender for the lease of state land for the purpose of constructing a solar power plant in the municipality of Ulcinj. According to the announcement, the tender envisages a total of 6,621,121 square meters of land for the planning, construction, exploitation, and maintenance of a solar power plant at Briska gora, in the very south of Montenegro.
  • Laying the Foundations: ZF Group Building a Factory in Serbia

    The Karanović & Nikolić team, led by Senior Partner Marjan Poljak and Senior Associates ⃰ Ana Stanković and Ana Luković, advised ZF Friedrichshafen on the project of opening an electric vehicle parts factory in Pančevo, Serbia. The German company, a global leader specialising in the design, research and development, and manufacturing activities in the automotive industry, laid the foundations and began construction on 21 June 2018.
  • Harmonising the GDPR in Mauritius

    Mauritius is the first country in the southern hemisphere to have recently revamped its data protection legal regime by repealing the previous Data Protection Act 2004 (" DPA 2004 ") and adopting a new law, namely the Data Protection Act 2017 (" DPA 2017 ") following the adoption of the General Data Protection Regulation (Regulation (EU) 2016/679) (" GDPR ") in the European Union. 
  • Listing on the Emerging Companies Market of the Cyprus Stock Exchange

    A.     INTRODUCTION
  • DORDA advises on the acquisition of Austrian office properties Denk Drei

    Stefan Artner , Partner and Head of the Real Estate Practice Group, and real estate attorney Klaus Pfeiffer of DORDA advised Austrian Real Estate Development GmbH ( ARE , a subsidiary of Bundesimmobilien-Gesellschaft, the Austrian privatization agency) on the acquisition of the Denk Drei office properties from IC Development . The successful closing of the forward purchase transaction took place on April 30, 2018. The parties have agreed not to disclose the purchase price.
    - Dorda
  • A closer look at Settled Status for EU citizens

    Following the release of more details of the UK Government’s scheme for a streamlined application process to grant EU citizens in the UK settled status to safeguard their position following the UK’s departure from the EU, our EEA immigration solicitors here at OTS Solicitors take a look at the post-Brexit position for EU nationals and what the settled status scheme entails in more detail.