Finnegan, Henderson, Farabow, Garrett & Dunner LLP > Reston, United States > Firm Profile
Finnegan, Henderson, Farabow, Garrett & Dunner LLP Offices

TWO FREEDOM SQUARE
11955 FREEDOM DRIVE
RESTON, VA 20190-5675
VIRGINIA
United States
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Finnegan, Henderson, Farabow, Garrett & Dunner LLP > The Legal 500 Rankings
Intellectual property > Patents: prosecution (including re-examination and post-grant proceedings) Tier 1
Finnegan, Henderson, Farabow, Garrett & Dunner LLP‘s team is well-equipped to advise on complex patent work for a diverse roster of clients. Its workload ranges from advising on the establishment and management of global patent portfolios to handling complex litigation. Nishla Keiser and Jeffrey Jacobstein are experienced in handling contentious patent matters and providing strategic counseling relating to life sciences and biotech, in particular. Cory Bell handles post-grant patent management concerning computer and electronic tech. Bell and Jacobstein are both based in Boston. Erika Harmon ArnerPractice head(s):
Jeffrey Jacobstein; Cory Bell; Erika Harmon Arner; Anand Sharma
Other key lawyers:
Aaron Capron; Karthik Kumar; David Weingarten; Colin Kreutzer; Abhay Watwe; Kai Rajan; Stephanie Ham; Adriana Burgy; Mark Feldstein; Gracie Mills; Kelly Horn; Mary Till; Nishla Keiser; Joshua Goldberg
Testimonials
‘Vast technological and legal knowledge – very responsive.’
‘They have good understanding of the technology and our unique situation.’
Key clients
AI21 Labs
Alibaba Group Holding Limited
Archer Aviation Inc.
ASML Netherlands B.V.
AstraZeneca
Coupang Corp.
Dukosi Ltd
Eisai Co, Ltd.
GlycoMimetics, Inc.
Google, Inc.
GSK plc.
Included Health Inc.
Innoscience Zhuhai Technology Company, Ltd.
Innoscience (Zhuhai) Technology Company, Ltd.
Innoscience, Inc.
Innoscience America, Inc.
Innoviz Technologies Ltd.
Mobileye Vision Technologies Ltd.
NiKang Therapeutics, Inc.
Oncorena AB
Samsung Electronics Co. Ltd.
Samsung Electronics America Inc.
Scynexis, Inc.
Vertex Pharmaceuticals, Inc.
Xiaomi
Work highlights
- Advising Alibaba on patent drafting and prosecution in cutting-edge technologies.
- Assisting AstraZeneca with patent prosecution and strategic counseling matters.
- Serving Xiaomi’s US counsel in strategic patent planning, patent prosecution, and other patent-related issues.
Intellectual property > Trademarks: non-contentious (including prosecution, portfolio management and licensing) Tier 1
Noted for its ‘vast technological and legal knowledge’, Finnegan, Henderson, Farabow, Garrett & Dunner LLP provides its esteemed global clients with a full service offering which spans a plethora of complex selection, clearance, portfolio management and licensing matters, routinely operating within the industries of entertainment, financial services, pharma and consumer products. Three highly experienced practitioners spearhead the firm’s non-contentious trademark offering: Naresh Kilaru, who possesses a wealth of experience in relation to brand protection and enforcement, managing partner Erika Harmon ArnerPractice head(s):
Naresh Kilaru; Erika Harmon Arner; Anand Sharma
Other key lawyers:
Testimonials
‘Vast technological and legal knowledge.’
Key clients
Academy of Television Arts & Sciences and National Academy of Television Arts and Sciences
Advanced Drainage System
Albaik
American Retirement Association
ATP Tour, Inc.
Biogen
BSN Sports, LLC
Canon Medical Systems Corp.
Carlyle Investment Management L.L.C.
Caterpillar Inc.
Commercializadora Eloro
Coupang Corp.
Crinetics Pharmaceuticals Inc.
Cytokinetics
ECCO
Head Sport GmbH, Head USA
Hologic
Infiltrator Water Technologies, LLC
Infosys, Ltd./EdgeVerve Systems Limited
InterContinental Hotels Group (IHG)
ISDIN
Koninklijke Philips Electronics NV
Leo Pharma A/S
Merwas
Orasis Pharmaceuticals, Inc.
PNC
Science Applications International Corp. (SAIC)
SpringWorks Therapeutics
Varsity Brands
VIAVI Solutions
Welspun Inc.
Wipro Limited
Work highlights
- Managed the entire trademark and copyright portfolio for the EMMY and EMMY Award Statuettes, including prosecution and enforcement.
- Advised a major pharma company in relation to strategic counseling relating to its drug trademark filings, including comprehensive trademark filings for drug names in more than 100 countries, trademark clearance and protection corresponding patient support programs and corresponding screening goods and services, and other global defensive strategies.
- Advised Welspun in relation to their global trademark portfolio. Handle various enforcement matters including oppositions, cancellations, and U.S. district court actions.
Intellectual property > Patents: litigation (full coverage) Tier 2
Finnegan, Henderson, Farabow, Garrett & Dunner LLP boasts technical expertise and a proven track record in complex patent litigation before the PTAB, as well as district and federal courts. The team are particularly well-positioned to represent clients in ANDA and trade secrets cases. Elizabeth D. Ferrill stands out for her expertise in design patents related to industrial products, medical devices and vehicles. Ferril co-heads the team with John Williamson, who focuses on technology patents; Anand K. Sharma, a specialist in handling particularly complex and high-value patent portfolios; and managing partner Erika Harmon ArnerPractice head(s):
Elizabeth D. Ferrill; John Williamson; Erika Harmon Arner; Anand K. Sharma
Other key lawyers:
James Barney; Virginia L. Carron; William B. Raich; John Livingstone; Mark Feldstein; David Weingarten; Jeff Freeman
Testimonials
‘Unparalleled scientific plus legal expertise. Knows the science but also knows how to convey it to anyone that needs to understand and make a decision. ’
‘John Livingstone digs in hard to matters and does not give up until he gets the best result possible. Mark Feldstein is brilliant, direct, and hard to beat. David Weingarten loves the science and he gives even the most tenured experts a run for their money. Jeff Freeman excels at fact discovery and also in-depth damages analysis.’
Key clients
AbbVie Inc.
Bausch & Lomb Inc.
BMW of North America, LLC and Bayerische Motoren Werke AG
Eastman Chemical Company
Eli Lilly and Company
Ghost Robotics Corporation
Intuitive Surgical, Inc.
Kettenbach GmbH and Co. KG, Kettenbach LP, and Xinial Systems GmbH Co. KG
Mobileye Vision Technologies Ltd.
Neurocrine Biosciences Ltd.
Novartis Pharmaceuticals Corporation
Otsuka Pharmaceutical Co., Ltd.
Promptu Systems Corporation
Rocket Pharmaceuticals, Inc.
Samsung Electronics America, Inc.
Sarepta Therapeutics, Inc.
Volkswagen Group of America, Inc.
Volvo Financial Services, LLC v. ModoPayments, LLC
Work highlights
- Representing AbbVie Inc., AbbVie Ltd., and Neurocrine Biosciences, Inc. in the District of Delaware, asserting infringement of several patents by nine generic drug companies that filed Abbreviated New Drug Applications related to AbbVie’s ORILISSA® (elagolix sodium) drug product, which treats endometriosis symptoms.
- Secured a royalty free covenant-not-to-sue on an asserted patent, ensuring that Arigna cannot reassert claims against BMW.
- Finnegan defended Intuitive Surgical in a patent infringement litigation filed by CICAS targeting Intuitive’s newest robotic surgical system, the Ion endoluminal system.
Intellectual property > Patents: litigation (International Trade Commission) Tier 2
Finnegan, Henderson, Farabow, Garrett & Dunner LLP is well-versed in Section 337 patent infringement cases and exclusion orders. The practice demonstrates expertise across a diverse range of technologies, including semiconductors, tech devices, medical devices, and chemical products. The team is led by four seasoned IP litigators: Smith R. Brittingham IV, who is dedicated to ITC investigations in a wide range of tech; Elizabeth Niemeyer, who is sought after by international and domestic clients for her expertise on electrical patents; managing partner Erika Harmon ArnerPractice head(s):
Smith R. Brittingham IV; Elizabeth A. Niemeyer; Erika Harmon Arner; Anand K. Sharma
Other key lawyers:
Mareesa A. Frederick; Frank A. DeCosta III; Lionel M. Lavenue; Forrest A. Jones; J. Preston Long
Key clients
Bayerische Motoren Werke AG; BMW of North America, LLC
Innoscience Zhuhai Technology Company, Ltd.; Innoscience (Zhuhai) Technology Company, Ltd.; Innoscience, Inc.; Innoscience America, Inc.
Innoscience America, Inc.; Innoscience (Suzhou) Semiconductor Co., Ltd.; InnoScience (Suzhou) Technology Holding Co., Ltd. f/k/a Innoscience (Suzhou) Technology Company, Ltd.; Innoscience (Zhuhai) Technology Company, Ltd.; Infineon Technologies Americas Corp.
MediaTek Inc.; MediaTek USA Inc.
VILOX Sweden AB
Intellectual property > Trademarks: litigation Tier 2
A team that is noted for its ‘high expertise’, Finnegan, Henderson, Farabow, Garrett & Dunner LLP leverages its wide-ranging experience in representing clients before the Trademark Trial and Appeal Board, federal circuit courts of appeal and other tribunals to advise global scale clients including Biogen and BSN Sports. Washington DC’s Naresh Kilaru, Anand Sharma, and Erika Harmon ArnerPractice head(s):
Naresh Kilaru; Erika Harmon Arner; Anand Sharma
Other key lawyers:
B. Brett Heavner; Douglas Rettew; Mark Sommers; Morgan E. Smith; Patrick Rodgers
Testimonials
‘High expertise in IP litigation. Extremely practical advice focusing on the business.’
‘Douglas Rettew has a pragmatic approach in this highly specialized field. His availability and responsiveness is outstanding.’
‘The Finnegan team is knowledgeable, agile, and responsive. They provide thorough legal counsel and are strategic in their approach.’
‘Finnegan is no nonsense. They solve problems strategically and do not waste time. They provide reasonable and business-friendly solutions while embracing risk.’
‘Super professional and business oriented.’
‘They have acquired knowledge about our business making them able to apply legal knowledge in a very strategically efficient way.’
‘Finnegan is the main counsel of record representing our IP portfolio, leading all registration, enforcement, and litigation efforts. Their deep bench of expertise and experienced talent, with resources to draw upon for any new or novel issue, has been essential.’
‘Brett Heavner’s comfort distilling complex issues in lay terms for our leadership team is always appreciated.’
Key clients
ABRET, Inc.
Academy of Television Arts and Sciences and National Academy of Television Arts & Sciences (Emmy’s)
Atlassian US, Inc.
ATP Tour, Inc.
Birkenstock
Bridgestone Americas, Inc.
Carlyle Investment Management L.L.C.
Cascade Maverik Lacrosse, LLC
Caterpillar, Inc.
Chuxin Intelligence Enterprises Management (Nanjing) Co. Ltd.
Combe Incorporated
Diamond Wind North America, LLC d/b/a Diamond Offshore Wind
ECCO
Glioblastoma Foundation Inc.
GOLO, LLC
Goose Insurance Services, Inc
InterContinental Hotels Group (IHG)
ISDIN
Kettenbach GmbH and Co. KG, Kettenbach LP, and Xinial Systems GmbH Co. KG
Kinesio
LG Electronics Inc.
LG H&H
Marriott International, Inc.
PNC
ROCKWOOL International A/S
Sennheiser Electronic GmbH & Co. KG
Sturm, Ruger & Co., Inc.
Subaru of America Inc.
Sweet Grace Distilling Company LLC
Tenergy Corporation
Topgolf Callaway Brands Corp
Türkiye Turizm Tanitim ve Gelistirme Ajansi
Under Armour, Inc.
Varsity Brands
Vibe Inc.
Welspun Inc.
Whaleco, Inc. d/b/a TEMU
Wipro Limited
Zimmer, Inc.
Work highlights
- Canceled Puma’s registration for the PROCAT mark, which was used for a line of children’s soccer cleats and related apparel and accessories.
- Defended Kettenbach in a high-stakes trademark infringement, patent infringement, and false-advertising litigation related to newly launched, cutting-edge dental products.
- Represented InterContinental Hotels Group (IHG) in litigation asserting infringement of IHG’s distinctive deep blue corporate color, IHG logo, and the trade dress of IHG’s website.
Intellectual property > Patents: licensing Tier 3
Finnegan, Henderson, Farabow, Garrett & Dunner LLP‘s IP management and transactions group works closely with small entrepreneurs and well-established corporations offering comprehensive IP-related transaction advice, particularly on IP licensing and portfolio development. Headed by Brian Kacedon in Washington DC, who boasts deep experience in transactional practice and specializes in patent and tech licensing and litigation. Michele C. Bosch has great experience representing domestic and international clients in inter partes and ex parte matters. In Atlanta, Virginia L. Carron, is well vested in patent and trademark litigation counselling and in Boston, Nishla Keiser specializes on IP counselling and patent litigation in life sciences. Reston-based lawyer Elliot C. Cook operates across an array of IP practices including patent litigation, portfolio management and post-grant patent challenges. In Washington DC, Gerson S. Panitch and Aaron Parker are seasoned patent litigators in the US district courts.Practice head(s):
Brian Kacedon
Other key lawyers:
Michele C. Bosch, Virginia L. Carron, Nishla Keiser, Elliot C. Cook, Gerson S. Panitch; Aaron Parker
Key clients
Dukosi Ltd
Neurocrine Biosciences Ltd.
Otsuka Pharmaceutical Co., Ltd. and H. Lundbeck A/S
Work highlights
- Handled life science licensing and collaboration transactions including a collaboration worth up to $2.85 billion in milestone payments.
- Assisted on IP-related due diligence projects prior to close of multi-billion dollar acquisition of medical device company.
- Represented an electronics manufacturer in a breach of contract and declaratory judgment case.
Finnegan, Henderson, Farabow, Garrett & Dunner LLP > Firm Profile
Finnegan, Henderson, Farabow, Garrett & Dunner LLP is one of the world’s largest firms focusing on intellectual property law. With offices in the United States, Asia and Europe, Finnegan practices all aspects of trademark, copyright, and patent law, including counselling, prosecution, licensing and litigation. Finnegan also represents clients in IP issues relating to advertising, trade secrets, international trade, portfolio management, the Internet, e-commerce, government contracts, antitrust and unfair competition.
- Finnegan offers full-service IP legal and technical experience in virtually every industry and technology, including consumer products, sports and fitness, textiles, food and beverage, automotive, biotechnology, pharmaceuticals, life sciences, chemicals, electronics, semiconductors, computers and software, industrial manufacturing, medical devices, clean energy and renewables, robotics, artificial intelligence, media, and three-dimensional printing.
With the firm’s practice centered on intellectual property, the firm is able to create economies of scale and focus all resources on providing the best tools, practices, and procedures for clients’ IP matters.
- 225+ are registered to practise before the US Patent and Trademark Office (USPTO), European Patent Office (EPO), the German Patent and Trade Mark Office (DPMA), the UK Intellectual Property Office (UKIPO), and the European Union Intellectual Property Office (EUIPO).
- With more than 55 years’ IP experience, Finnegan handles hundreds of litigation cases across the spectrum of IP-related venues, including district courts, the US International Trade Commission (ITC), the USPTO’s Patent Trial and Appeal Board (PTAB), the US Court of Appeals for the Federal Circuit, and the US Supreme Court. Since being the one of the first to file a petition and subsequently argue a post-grant review of a covered business method case following the implementation of the America Invents Act, Finnegan is one of the busiest law firms representing petitioners and patent owners in post-grant review proceedings, with more than 90 covered business method reviews (CBMs), more than a dozen post-grant reviews (PGRs, relatively few of which have been filed), and more than 900 inter partes review (IPR) proceedings. The firm files approximately 2,500 US and 1,000 foreign patent applications annually.
Surveys conducted by legal and business publications consistently rank Finnegan as one of the leading intellectual property law practices in the world. The firm is consistently ranked in the United States for contentious and prosecution trademark and patent work by publications including Managing Intellectual Property and The Legal 500, which have ranked Finnegan as a top tier firm in nearly every significant IP category for more than 10 years. The publications cite the firm’s winning record, technical expertise, and deep bench of talent in all aspects of IP litigation, including trials, appeals, and proceedings at the USPTO and ITC investigations.
Representative engagements:
- Handled appeal after TCL received an unfavorable judgment of willful infringement in district court, which resulted in a damages award of over $110m. Convinced the Federal Circuit that the claims were patent ineligible under 35 U.S.C. § 101. The court reversed the district court’s ruling of no invalidity, vacated the entire judgment, and awarded costs to TCL. Finnegan further persuaded the Eastern District of Texas to tax $2.35m in costs.
- Represented petitioner DJI at the PTAB in a series of IPRs against five Synergy Drone patents, resulting in cancellation of all 76 claims related to unmanned aerial vehicles.
- Appealed adverse IPR decision to the Federal Circuit for Kaken Pharmaceuticals and Bausch Health, arguing that the final written decision finding the patent obvious/unpatentable was based on an erroneous claim construction ruling. The Federal Circuit overturned the PTAB’s claim construction of a key term in the patent, reversing the finding of obviousness that led to the finding of unpatentability and remanding to the Board.
- Convinced the Federal Circuit to vacate and remand adverse PTAB decisions for client FOX Factory, finding the patent owner was not entitled to any presumption that the patented invention (related to bicycle chainring technology) was responsible for the alleged secondary considerations. On remand, the PTAB found all of patent owner’s claims unpatentable.
- Provided strategic worldwide intellectual property counselling to Vertex with a focus on Vertex’s FDA approved cystic fibrosis products, including Kalydeco®, Orkambi®, and Symdeko®, as well as several preclinical compounds, for several still-expanding patent portfolios protecting these approved and future products for treatment of cystic fibrosis.
Sample client list: AstraZeneca; Bausch Health; Bridgestone; Capital One; Caterpillar; Eli Lilly; FedEx; FIS; Head; Google; IBM; IHG; LG; Lockheed Martin; Marriott; Nestlé; Otsuka; Patagonia; Petco; Philips; Subaru; Toyota; Varsity; Under Armour
Main Contacts
Department | Name | Telephone | |
---|---|---|---|
Managing Partner | Erika H. Arner | [email protected] | +1 571 203 2754 |
Chair | Anand K. Sharma | [email protected] | +1 202 408 4446 |
Post-Grant Proceedings: Appeals of PTAB Trial Decisions; Derivations; Interferences; IPR, PGR, and CBM | Cory C. Bell | [email protected] | +1 617 646 1641 |
ITC Section 337 Investigations | Smith R Brittingham IV | [email protected] | +1 202 408 4158 |
Patent Litigation: Arbitration and Other ADR; Patent Trial; Pre-Trial Strategy | Elizabeth D. Ferrill | [email protected] | +1 202 408 4445 |
Design Patents | Elizabeth D. Ferrill | [email protected] | +1 202 408 4445 |
Advertising | Jennifer Fried | [email protected] | +1 202 408 4166 |
German and European IP Law, German Federal Patent Court, German Patent and Trade Mark Office (DPMA), European Patent Office (EPO) | Dr. Dr. Jochen Herr | [email protected] | +49 89 83931 1240 |
Patent Office Examinations: Prosecution; Reexaminations; Reissue Proceedings; Appeals to the PTAB | Jeffrey M. Jacobstein | [email protected] | +1 617 646 1664 |
European and UK IP Law: Designs; EPO Third Party Observations; EPO Opposition and Appeals; Patent Prosecution; Supplementary Protection Certificates (SPCs); Trade Marks; The Unitary Patent System (UPS) and the Unified Patent Court (UPC); United Kingdom Patent Law | Darren M. Jiron | [email protected] | +44 (0)20 7864 2853 |
Patent Portfolio Management, Monetization, and Transactions: Antitrust and Misuse; Due Diligence; Licensing, Pooling, and Other Transactions; Opinions and Counseling; Patent Mining and Mapping; Portfolio Management | D. Brian Kacedon | [email protected] | +1 202 408 4301 |
Trademark: Counterfeiting/Gray Market Goods; Domain Name Litigation and UDRPs; Trademark Counseling and Prosecution; Trademark Litigation; TTAB Litigation; Copyright | Naresh Kilaru | [email protected] | +1 202 408 4236 |
Trade Secrets | Robert McCauley | [email protected] | +1 650 849 6673 |
ITC Section 337 Investigations | Elizabeth A. Niemeyer | [email protected] | +1 202 408 4238 |
Appeals: Federal Circuit and Supreme Court Appeals; Appeals from the PTAB | Jason L. Romrell | [email protected] | +1 202 408 4349 |
Patent Litigation; Arbitration and Other ADR; Patent Trial; Pre-Trial Strategy | John M. Williamson | [email protected] | +1 202 408 4282 |
Trade Secrets | John M. Williamson | [email protected] | +1 202 408 4282 |
Lawyer Profiles
Photo | Name | Position | Profile |
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Scott Burwell | Partner-in-Charge, Diversity, Equity, & Inclusion. | View Profile |
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Elliot C. Cook | Managing Partner, Reston Office | View Profile |
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Erika Harmon Arner | Managing Partner | View Profile |
Languages
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American Intellectual Property Law Association (AIPLA) International Trademark Association (INTA) Intellectual Property Owners Association (IPO) American Bar Association (ABA) Licensing Executives Society (LES)- Intellectual property > Patents: prosecution (including re-examination and post-grant proceedings)
- Intellectual property > Trademarks: non-contentious (including prosecution, portfolio management and licensing)