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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
Email:
Web:
www.finnegan.com

United States: Intellectual property

Patents: licensing
Patents: licensing - ranked: tier 1

Finnegan, Henderson, Farabow, Garrett & Dunner LLP

Finnegan, Henderson, Farabow, Garrett & Dunner LLP boasts 'a very strong team', consisting of 'a large number of excellent attorneys' who 'work as a team to get complex matters handled effectively and efficiently'. The IP giant was especially active in pharmaceutical matters, which included the representation of Roivant Sciences in the negotiation and drafting of several worldwide licensing and collaboration agreements, including an agreement with Poxel relating to an oral therapy for type-2 diabetes and extensive due diligence work. A recent electronics highlight was Doris Johnson Hines' representation of defendant Toshiba America Information Systems in breach of contract litigation against MPEG LA. Other instructions came from a semiconductor manufacturer and a renewable energy player. Clients also include AbbVie, Fujifilm and United Technologies. Other key practitioners include practice head John Paul, Brian Kacedon and Jill MacAlpine, all based in Washington DC.

Leading lawyers

Brian Kacedon - Finnegan, Henderson, Farabow, Garrett & Dunner LLP

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Patents: litigation (International Trade Commission)
Patents: litigation (International Trade Commission) - ranked: tier 1

Finnegan, Henderson, Farabow, Garrett & Dunner LLP

'Top-level firm' Finnegan, Henderson, Farabow, Garrett & Dunner LLP 'combines deep technical expertise with dynamic litigation skills'. 'Professional and experienced', the group demonstrates wide sectorial breadth in its recent caseload, with instructions coming from electronics and medical device players, computer hardware and LED lighting manufacturers, among others. A recent biotechnology highlight was the representation of complainant Ajinomoto against CJ Cheil Jedang at the ITC, and in related district court and PTAB litigation, regarding patents covering genetically modified organisms to be used for the production of tryptophan. Other clients include Caterpillar, Hytera America and Toyota. 'ITC expert' Smith Brittingham heads the practice, and Atlanta's John Livingstone 'always has the best interest of his client in mind'. Mareesa Frederick is 'deeply familiar with the ITC practice and greatly contributes to the resolution of complicated problems, which occasionally arise during ITC proceedings'. Other names to note include Elizabeth Niemeyer, Gerson Panitch, David Mroz and recently promoted partner Cecilia Sanabria. Christine Lehman joined Reichman Jorgensen LLP.

Leading lawyers

Elizabeth Niemeyer - Finnegan, Henderson, Farabow, Garrett & Dunner LLP

Next Generation Partners

Mareesa Frederick - Finnegan, Henderson, Farabow, Garrett & Dunner LLP

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Patents: litigation (full coverage)
Patents: litigation (full coverage) - ranked: tier 1

Finnegan, Henderson, Farabow, Garrett & Dunner LLP

IP boutique Finnegan, Henderson, Farabow, Garrett & Dunner LLP fields a particularly active practice in the pharmaceuticals sector. Examples include the long-standing representation of multinational Biogen in contentious matters, such as the recently filed series of infringement suits against 26 generics companies seeking to market generic versions of blockbuster multiple sclerosis drug TecfideraŸ; this marks the largest-ever set of Abbreviated New Drug Application (ANDA) cases ever filed for a single drug. In addition to the pharmaceuticals sector, the group offers wide-ranging sector expertise. For PPC Broadband, the practice secured a Federal Circuit victory against Corning Optical Communications after a district court win affirming willful patent infringement of a patent covering coaxial cable connector technology, obtaining $61m in damages. The group also successfully appealed three inter partes review (IPR) decisions for Nestlé in Federal Circuit litigation against Steuben Foods regarding patents on food packaging. Managing partner Mark Sweet, chair James Monroe and the new head of the litigation practice Frank DeCosta, all based in Washington DC, and appellate head Erik Puknys in Palo Alto are key practitioners. Reston's Charles Lipsey is also noted. Aliza Carrano and Jason Romrell, Cecilia Sanabria and Yanbin Xu in Washington DC, Daniel Cooley and Shana Cyr in Reston, and Jacob Schroeder in Palo Alto joined the partnership. Christine Lehman joined Reichman Jorgensen LLP. Other clients include medical device manufacturer Zimmer Holdings, construction equipment giant Caterpillar and Otsuka Pharmaceuticals.

Leading lawyers

Charles Lipsey - Finnegan, Henderson, Farabow, Garrett & Dunner LLP

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Patents: prosecution (including re-examination and post-grant proceedings)
Patents: prosecution (including re-examination and post-grant proceedings) - ranked: tier 1

Finnegan, Henderson, Farabow, Garrett & Dunner LLP

The team at Finnegan, Henderson, Farabow, Garrett & Dunner LLP has 'a passion for its craft, deep knowledge of the law, inexplicable creativity and great openness for dialogue and discussion with the client'. 'Thorough in identifying options and in then following through', the group is 'very ethical and professional' and impresses with 'responsive' partners. Considered 'a go-to firm for patent prosecution', the practice covers a range of sectors, with the majority of recent highlight matters coming from the life sciences sector, including instructions from clients active in pharmaceuticals, medical devices, biologics and biosimilars. Examples include representing Incyte in two inter partes reviews (IPR): once successfully obtaining a re-hearing after the Patent Trial and Appeal Board (PTAB) had denied institution of Incyte's IPR against a patent claiming deuterated versions of Incyte's Jakafi product and securing a rare grant for discovery for Incyte, and another successfully defending Incyte against institution of a post-grant review filed against the same Jakafi patent. Google relied on the practice for the preparation and prosecution of design patents regarding graphical user interfaces and icons, and also trusts the team with the development of international patent filing strategies to ensure worldwide protection of its design patents. A recent semiconductor highlight was the representation of Taiwan Semiconductor Manufacturing Company ('TSMC') in several IPRs filed by a patent owner against customers of TSMC; the team obtained declarations of invalidity for most of the asserted patents, with two patents moving on to appeal at the Federal Circuit. Managing partner Mark Sweet, chair James Monroe, Patent Office practice leader Adriana Burgy and Atlanta-based PTAB trials section leader Jason Stach fare the key contacts in the practice group. Elizabeth Ferrill, Erika Harmon Arner in Reston, Jill MacAlpine, Boston's Leslie McDonell and Palo Alto's Aaron Capron are also recommended. Also of note, Amanda Murphy and Reston-based Michael Young made partner. Other clients include AbbVie, LG Electronics and Xiaomi. All lawyers are based in Washington DC unless otherwise stated.

Leading lawyers

Erika Harmon Arner - Finnegan, Henderson, Farabow, Garrett & Dunner LLP

Jason Stach - Finnegan, Henderson, Farabow, Garrett & Dunner LLP

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

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Trade secrets (litigation and non-contentious matters)
Trade secrets (litigation and non-contentious matters) - ranked: tier 3

Finnegan, Henderson, Farabow, Garrett & Dunner LLP

Finnegan, Henderson, Farabow, Garrett & Dunner LLP is particularly prominent in technology-related trade secret cases. Washington DC-based John Williamson jointly leads the team and is highly experienced in cases relating to technology, telecoms and pharmaceuticals. Fellow practice head Robert McCauley III is based in Palo Alto and regularly handles cases involving pharmaceuticals and medical devices. Also recommended is Ming-Tao Yang, who is notably skilled in cases involving software and electronics. Notable clients of the firm include AbbVie Inc, Eastman Chemical Company, RichWave Technology Corp. and Nestec, Ltd.

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Trademarks: litigation
Trademarks: litigation - ranked: tier 1

Finnegan, Henderson, Farabow, Garrett & Dunner LLP

The ‘knowledgeable and experienced’ lawyers at Finnegan, Henderson, Farabow, Garrett & Dunner LLP are ‘deeply engaged IP experts’ who ‘think ahead of the curve’. In a recent highlight, the team represented Under Armour in a lawsuit brought by Michael Calmese, who alleged that motivational phrases on the client’s products infringed upon his 'PROVE IT!' trademark. Douglas (Chip) Rettew and Virginia Carron also notably assisted NestlĂ© in a trademark infringement, unfair competition and dilution lawsuit against Gigi Anthony related to the similarities between the client’s 'HOT POCKETS' and 'LEAN POCKETS' trademarks and the defendant’s 'PIZZA POCKET' and 'PIZZA POCKETS' marks. Practice head Danny Awdeh is ‘an expert in the field’ and is noted as ‘the best’ and ‘most efficient attorney’. His team also includes the ‘outstanding’ Mark Sommers, who ‘really understands the strategic importance of IP’. Partners operate from Washington DC except for Christopher Foley who is Reston based.

Leading lawyers

Douglas (Chip) Rettew - Finnegan, Henderson, Farabow, Garrett & Dunner LLP

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

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Trademarks: non-contentious (including prosecution, portfolio management and licensing)
Trademarks: non-contentious (including prosecution, portfolio management and licensing) - ranked: tier 1

Finnegan, Henderson, Farabow, Garrett & Dunner LLP

Clients value Finnegan, Henderson, Farabow, Garrett & Dunner LLP for its ‘forward-looking strategic decisions’ and ‘broad and deep legal expertise’. Danny Awdeh, hailed for his ‘tremendous legal expertise and impeccable judgment’, leads the practice, which undertakes the full spectrum of non-contentious matters. Awdeh recently assisted InterContinental Hotel with the expansion of its brand portfolio through the launch of AVID and VOCO and alongside Douglas (Chip) Rettew acted for Varsity Brands regarding the IP considerations of its $2.5bn purchase by Bain Capital. Mark Sommers is an ‘exceptionally good attorney' and is lead counsel to Petco, routinely filing and prosecuting trademark applications domestically and internationally for the client. Boston-based associate Laura Johnson is recommended. Named partners are based in Washington DC.

Leading lawyers

Danny Awdeh - Finnegan, Henderson, Farabow, Garrett & Dunner LLP

Rising stars

Laura Johnson - Finnegan, Henderson, Farabow, Garrett & Dunner LLP

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