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

Finnegan, Henderson, Farabow, Garrett & Dunner LLP
TWO FREEDOM SQUARE
11955 FREEDOM DRIVE
RESTON, VA 20190-5675
VIRGINIA
United States

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 Arner is a PTAB and related appeals specialist who splits her time between Reston and Washington DC, and is experienced acting for both patent challengers and owners. The three co-head the practice alongside DC’s Anand Sharma. Also at the DC office, Gracie Mills – who was promoted to partner in January 2025 – has expertise in PTAB work, while Adriana Burgy has a specialism assisting with pharma, biotech and chemical industry-related issues.

Practice 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 Arner and firm chair Anand Sharma. Notable practitioner Danny Awdeh utilises his commercial and legal skillset to operate for some household name clients on a domestic and international scale, with B. Brett Heavner a particularly strong choice for pharma companies, medical device manufacturers and food product companies. Douglas Rettew is a force to be reckoned with in the sports sector, and Mark Sommers excels across a multitude of non-contentious issues, from trademark clearance to rights of publicity. Boston’s Laura Johnson handles a litany of automotive, machinery, medical products and music trademark mandates, with Palo Alto’s Morgan E. Smith bolstering the practice with her strategic enforcement counseling work. All other listed attorneys are based in Washington DC.

Practice head(s):

Naresh Kilaru; Erika Harmon Arner; Anand Sharma

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 Arner, who splits her time between Reston and Washington DC. James Barney is a key attorney for patent litigation and appeals, while Atlanta-based Virginia L. Carron is noted for her expertise in the food and beverage, chemicals and polymer industrial sectors. As head of the firm’s biotechnology and pharmaceutical department, William B. Raich specializes in representing innovative companies developing biologics and pharmaceuticals. All mentioned attorneys are based out of Washington DC, unless otherwise stated.

Practice 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 Arner, who splits her time between Reston and Washington DC; and Anand K. Sharma. Mareesa A. Frederick  is a key name for high-stakes Section 337 proceedings for tech companies. Frank A. DeCosta III is a first-chair litigator who brings expertise related to computers, software and medical devices. In Reston, Lionel M. Lavenue focuses on patent infringement cases. The practice also includes Forrest A. Jones and J. Preston Long, who provide additional expertise in high-tech patents.

Practice head(s):

Smith R. Brittingham IV; Elizabeth A. Niemeyer; Erika Harmon Arner; Anand K. Sharma

Other key lawyers:

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 Arner jointly head up the offering. Kilaru’s skillset encompasses computer source code, product packaging and domain name disputes. B. Brett Heavner is routinely entrusted by a host of medical device manufacturers, trade associations and financial services clients, while Douglas Rettew excels in relation to traditional trademarks, false advertising and rights of publicity issues. Mark Sommers possesses a wealth of experience before the federal district and appellate courts as well as the Trademark Trial and Appeal Board. In Pao Alto, Morgan E. Smith operates across a myriad of sectors, from sports equipment and apparel to automotive and telecoms. Washington DC’s Patrick Rodgers is also recommended.

Practice 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

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 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

Department Name Email 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
Photo Name Position Profile
Scott Burwell photo Scott Burwell Partner-in-Charge, Diversity, Equity, & Inclusion.
Elliot C. Cook photo Elliot C. Cook Managing Partner, Reston Office
Erika Harmon Arner photo Erika Harmon Arner Managing Partner
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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)