Finnegan Henderson Farabow Garrett & Dunner

Taiwan

Address:
Hung Kuo Building 12D, 167 DunHua North Road
Taipei
TW 105
Taiwan

Tel:+ 886 2 2712 70
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Managing Partner: Erika Harmon Arner
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Quick facts:

Firm - Year of Establishment: 1965
Total Number of IP Practitioners: 350
Languages Spoken at the Firm: Arabic, Belarusian, Bengali, Chinese, Chinese (Mandarin), Chinese (Cantonese or Mandarin), Fang, Filipino, French, German, Hebrew, Hindi, Italian, Japanese, Korean, Luxembourgish, Malayalam, Marathi, Norwegian, Portuguese, Romanian, Russian, Spanish, Taiwanese (Hokkien), Tamil, Telugu, Urdu


Finnegan, Henderson, Farabow, Garrett & Dunner, LLP is one of the world’s largest full-service IP firms. With offices in the United States, Asia and Europe, the firm practices European, German, UK, and US IP law. In addition to all aspects of patent, trademark, and copyright law, including counseling, prosecution, licensing, and litigation, Finnegan provides counseling and litigation services in advertising, privacy, and a wide spectrum of additional IP-adjacent commercial matters, including trade secrets, international trade, the Internet, e-commerce, government contracts, antitrust, and unfair competition. A comprehensive approach to clients’ IP needs and Finnegan’s mega-boutique size underpins its year-to-year, decade-to-decade preeminence in IP litigation and trials across all industries and tribunals.

With Finnegan’s practice centered on intellectual property, the firm can create economies of scale and focus all resources on providing the best tools and teams for clients. Approximately 300 of Finnegan’s legal professionals hold degrees in scientific disciplines (75+ hold PhDs), and the majority are also 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), or the European Union Intellectual Property Office (EUIPO).

With more than 60 years’ IP experience, Finnegan’s global IP enforcement, litigation, and trials practice is comprised of over 250 litigators, including career trial attorneys. The firm handles hundreds of cases and proceedings across all forms of US IP litigation, German patent litigation, and European patent, trademark, copyright, and trade secret litigation in courts, including US district courts, the US International Trade Commission (ITC), the USPTO’s Patent Trial and Appeal Board (PTAB), US Court of Appeals for the Federal Circuit, the US Supreme Court, German regional civil courts, UK courts, and the Unified Patent Court. As one of the first firms 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 patent office invalidity proceedings in the U.S. and Europe, including ex parte reexaminations, inter partes and post-grant reviews, nullity proceedings, oppositions, and third-party observations. The firm files approximately 2,500 US and 1,000 foreign patent applications annually.

Finnegan’s trademark practice, renowned for its experience, sophistication, creativity and depth, is comprehensive and follows the life of a mark from selection, clearance, prosecution and maintenance to portfolio management, trademark audits, licensing, watch disputes and litigation. The firm’s trademark clients include start-ups, small and medium-sized companies, as well as Fortune 100 companies. The range of industries represented includes sports and fitness, food and beverage, consumer products, mechanical, manufacturing, clean energy and renewables, entertainment, pharmaceuticals and biotechnology, financial services, publishing, the Internet, software, computers and telecommunications, and automotive.

Surveys conducted by legal and business publications consistently rank Finnegan as one of the leading IP law practices in the world. The firm is ranked in the United States for litigation and non-contentious patent and trademark 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 nearly two decades. 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 global patent offices, and ITC investigations.

Representative engagements

•  
 Obtained a $240 million jury verdict for client Promptu in a patent infringement lawsuit against Comcast. The jury found that Comcast willfully infringed Promptu’s patents covering voice recognition technology for TV. 

•    Secured a significant victory for client US Synthetic Corporation (USS) with a precedential decision from the U.S. Court of Appeals for the Federal Circuit (CAFC) overturning an unfavorable 35 U.S.C. § 101 eligibility ruling from the International Trade Commission (ITC).

•    Finnegan represents Subaru in multiple ongoing TTAB proceedings, including cancellations and oppositions.

•    Represented Sarepta Therapeutics, Inc. and its licensor The University of Western Australia in patent litigation relating to nucleic acid therapies for treatment of Duchenne muscular dystrophy (DMD). A federal jury in the District of Delaware awarded Sarepta Therapeutics over $115 million in its patent infringement case against Nippon Shinyaku Co. Ltd. This substantial verdict upholds the validity of Sarepta’s groundbreaking exon-skipping treatment, and the underlying work at the University of Western Australia.

•    Oversees the comprehensive trademark and copyright portfolio for the EMMY and EMMY Award Statuettes on behalf of The Academy of Television Arts & Sciences, handling all aspects of prosecution and enforcement. This work includes negotiating and drafting license agreements with authorized statuette manufacturers and sponsors, collaborating with Customs and Border Protection to prevent unauthorized imports, conducting due diligence on potential international partners, and managing U.S. and foreign trademark applications, prosecution, and oppositions.

•    Managing the global prosecution of AstraZeneca’s portfolio for Beyfortus® (nirsevimab), the recently FDA-approved extended half-life monoclonal antibody (mAb) aiming to protect all infants entering their first RSV season, when they are at highest risk for severe RSV disease.

Key IP Areas

Global IP Enforcement, Litigation, and Trials; Patent Office Invalidation Proceedings; Prosecution and Portfolio Management; Trademark Litigation; PTAB Litigation; Diligence, Licensing, and Opinions; Federal Circuit and Supreme Court Appeals; ITC Litigation; Design Rights; Copyright

Key Sector Expertise

Aerospace, Advertising, Aerospace, Agriculture, Artificial intelligence, Automotive, Biotechnology, Chemical, Computer technology & services, Construction & materials, Defence, E-commerce, Electrical, Electronics, Fashion & luxury goods, Financial services, FMCG, Food & beverage, Gaming, Hospitality & leisure, ICT & software, Industrials, Instruments, Internet, Life sciences, Logistics, Manufacturing, Mechanical, Media, Medical device, Mining, Nanotechnology, Not-for-profit, Oil & gas, Optics & photonics, Pharmaceutical, Publishing, Renewable energy, Retail, Robotics, Semiconductors, Sports, Technology hardware, Telecommunication, Tobacco