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

Finnegan, Henderson, Farabow, Garrett & Dunner LLP > The Legal 500 Rankings

Intellectual property > Patents: prosecution (including re-examination and post-grant proceedings) Tier 1

The patent prosecution group at Finnegan, Henderson, Farabow, Garrett & Dunner LLP is well-regarded for its provision of ‘outstanding, commercially-focused legal advice’, which includes the establishment, preparation, filing and management of patent portfolios; inventions and foreign protection issues, as well as the handling of reissues; re-examinations, IPRs, PGRs, and the scope of work that may arise from range of patent transactions, all of which the group handles for such renowned clients as FedEx Corporation, Toshiba Corporation and Google. The team is headed up by specialist Jeffrey Jacobstein and Cory Bell who leads the PTAB sub-team, both are based at the Boston office. Bell and Jacobstein lead alongside Boston-based managing partner Erika Harmon Arner who has a focus on PTAB and federal-level appeal cases and Anand Sharma who splits her time between both Boston and Reston. Among the team are an array of IP and tech experts, with attorneys to note in DC being Adriana Burgy who is experienced handling litigation in the chemical, pharma and biotech industry sectors; ‘great mentor’ Aaron Parker, Mark Feldstein and associate Gracie Mills . On the West Coast, Aaron Capron in Palo Alto has expertise handling post-grant proceedings pertaining to electronics, telecoms and software-based tech. Arpita Bhattacharyya stands out at the same office. Senior counsel Thomas Irving retired in March 2023.

Intellectual property > Trademarks: non-contentious (including prosecution, portfolio management and licensing) Tier 1

Leveraging its vast experience before a diverse array of courts across the country including the Unified Patent and Trademark Office and the Trademark Trial and Appeal Board, tour-de-force Finnegan, Henderson, Farabow, Garrett & Dunner LLP enjoys an esteemed reputation across pharma, consumer products, entertainment and financial services sectors, acting for a consortium of high-profile clients such as IBM, Nestlé and Caterpillar. The ‘top-notch’ and ‘highly competent’ practice draws on the support of its offices across Europe and Asia. The practice is jointly led by Naresh Kilaru, who routinely handles trademark, copyright and unfair competition litigation before an extensive range of US district and appellate courts, managing partner Erika Harmon Arner and firm chair Anand Sharma. Key contact Danny Awdeh fields a strong practice that comprises assisting with global brand launches, high-value transactions, and strategic counselling, while B. Brett Heavner substantially bolsters the practice with his strengths in domestic and international trademark litigation. Sports sector specialist Douglas Rettew and Mark Sommers, whose wide-ranging experience representing clients before the USPTO and TTAB alongside federal district and appellate courts. Morgan E. Smith is well positioned to manage mandates arising from sports equipment, electronics and telecoms sectors, and Laura Johnson, who operates from the firm’s Boston office, is noted for her strong presence across automotive, medical products and music sectors, among others. All other listed attorneys are based in Washington DC.

Intellectual property > Patents: licensing Tier 2

Finnegan, Henderson, Farabow, Garrett & Dunner LLP‘s IP management and transactions section assists clients in IP-related transactions, IP licensing, and with their IP portfolios. The mechanical practice group is led by Brian Kacedon in Washington DC, who focuses on patent and technology licensing and litigation. Managing partner Erika Harmon Arner handles patent litigation related to computer software and electronic technology, while firm chair Anand Sharma handles patent portfolio management and strategy in addition to representing clients in litigation. Reston-based lawyer Elliot C. Cook advises his clients on patent litigation, portfolio development, and patent prosecution. Patent attorney Michele C. Bosch has a diverse practice with an emphasis on post-grant proceedings, while Virginia L. Carron in Atlanta counsels clients on diverse licensing and related transactional matters. In October 2023, Boston partner Nishla H. Keiser re-joined the firm from an in-house role at Orna Therapeutics. Unless otherwise mentioned, listed contacts are based in Washington DC.

Intellectual property > Patents: litigation (full coverage) Tier 2

Intellectual property boutique Finnegan, Henderson, Farabow, Garrett & Dunner LLP has technical expertise and a ‘deep understanding of the commercial environment‘ in the full range of patent infringement disputes. The group is co-led by Elizabeth D. Ferrill , John M. Williamson and Anand Sharma and also features patent litigation and appeals specialist James Barney as well as Atlanta lawyer Virginia L. Carron, who litigates and advises on patent and trademark matters in a wide range of industry sectors, including food and beverage, chemicals and fertilizers. Frank A. DeCosta III is an experienced patent attorney in cases relating to computers, consumer electronics, software, medical devices and information systems, and seasoned litigator Gerald F. Ivey focuses primarily on jury trial patent disputes in the tech sector. Arpita Bhattacharyya in Palo Alto, whose practice focuses on patent litigation, post-grant proceedings at the U.S. Patent and Trademark Office and client counseling, is also a key contact. All lawyers listed are based in Washington DC unless otherwise mentioned.

Intellectual property > Patents: litigation (International Trade Commission) Tier 2

Largely based in Washington DC, Finnegan, Henderson, Farabow, Garrett & Dunner LLP has a seasoned ITC practice that represents both claimants and respondents in Section 337 patent infringement cases related to a broad range of technologies. The ITC litigation practice is co-led by intellectual property litigator Smith R. Brittingham IV, who has particular expertise in cases before the ITC, and Elizabeth A. Niemeyer, who frequently assists clients before the ITC with patent litigation and administrative proceedings in the electrical arts, alongside Erika Arner and Anand Sharma. Frank A. DeCosta III frequently defends clients against patent infringement charges in tech, and Mareesa A. Frederick stands out for her ability to litigate cases related to mechanical and electrical patents before the ITC. The group also includes patent litigation specialists Forrest A. Jones and J. Preston Long as well as patent and trade secret litigator Cara Regan. Lionel M. Lavenue and Kara A. Specht, respectively based in Reston and Atlanta, are also key practitioners.

Intellectual property > Trademarks: litigation Tier 2

With an established presence in representing clients in the Trademark Trial and Appeal Board, federal circuit courts of appeal and various other tribunals, Finnegan, Henderson, Farabow, Garrett & Dunner LLP's extensive litigation experience enables it to operate for global brands such as Under Armour and Sony Corporation. The practice is jointly led by Naresh Kilaru, managing partner Erika Harmon Arner and chair Anand Sharma. Kilaru’s capabilities encompass disputes arising from computer source code, product packaging, and gray-market goods, while key contact Danny Awdeh, who leads the firm’s trademark, copyright, and advertising group, demonstrates an outstanding knowledge of litigation concerning trademark infringement, counterfeiting, unfair competition, dilution, and false advertising. B. Brett Heavner’s expansive expertise incorporates all aspects of domestic and foreign trademark protection, and Douglas Rettew capitalizes on his immense experience in US Court of Appeals cases to count blue-chip global names in his client roster. Mark Sommers frequently handles matters pertaining to trademarks, intermediary liability, and rights of publicity, with Morgan E. Smith contributing her prowess in injunctive relief and offensive and defensive discovery. All named lawyers are based in Washington DC.

Intellectual property > Trade secrets (litigation and non-contentious matters) Tier 4

Finnegan, Henderson, Farabow, Garrett & Dunner LLP harnesses capabilities across its trade secrets practice which enable it to handle the gamut of matters, with a specific focus on those relating to complex tech. Misappropriation and breaches of contract are the make-up of the team’s workload. The team also offers trade secrets advice and counseling. On the West Coast is Palo Alto-based Robert McCauley, while on the East Coast is litigator John Williamson, Anand Sharma and managing partner Erika Arner at its Washington DC office, though Arner also works from the Reston office.