The intellectual property lawyers at Finnegan, Henderson, Fara­bow, Garrett & Dunner know just how even the smallest detail — one atom on a chemical compound, for instance — can make or break a case worth billions of dollars to a client.
Nearly 85 percent of the Washington-based firm's litigators hold degrees in computer science, electrical engineering, chemistry or biology. That depth keeps Finnegan on the front lines of precedent-setting intellectual property litigation and gives the firm a deep understanding of the technical issues that translated to big wins in 2012.
The underlying knowledge drives the analysis, advice, tactics and approach the firm offers to a client, said Laura Masurovsky, head of the Finnegan's litigation practice. A company's inventors and technical people with scientific doctorate degrees have respect for others with the same credentials, she said.
"It's why our clients trust us — because they know we speak their language," said Masurovsky, who came to Finnegan from a general-practice firm. "This is a world of difference — to be surrounded by reams and reams of people who have a field of expertise."
Take the chemical-engineering background of Washington partner James Monroe, experience that he said helped him convince the U.S. Court of Appeals for the Federal Circuit to uphold a drug patent and come down hard on an argument proffered by a generic pharmaceutical maker.
The May 2012 ruling clarified how a generic manufacturer can't invalidate a patent just by showing that a new chemical compound is structurally similar to a prior-art compound. "In chemistry, it's actually much, much more complicated than that," Monroe said. "A one-atom change could take something that could save millions of lives and turn it into something completely inactive."
As a result, Finnegan's client, Otsuka Pharmaceutical Co., maintained its patent protection through April 2015 for mental health drug Abilify, which had more than $5 billion in sales in 2011 and was the top-selling drug in the United States during the first quarter of 2013, Monroe said.
Finnegan has used its litigators' technical expertise to build the infrastructure that's made it a powerhouse in IP litigation, and the firm is prepared for any future developments in the law. About 68 percent of Finnegan's $348 million revenue in 2012 came from litigation.
The firm has on hand former staff attorneys from the International Trade Commission who are well versed in the specialized rules for practicing before that forum, Masurovsky said. Many technology companies are going to the ITC in hopes of winning speedy rulings or injunctive relief largely unavailable in the federal courts.
Lawyers need those technical degrees to practice before the U.S. Patent and Trademark Office, and former patent examiners have joined the firm. "We know the board — we've practiced before there. Not a lot of firms have," managing partner Barbara McCurdy said. "We're very committed to the whole IP world, so we're there when the development requires."
That cutting-edge work could soon help SAP America Inc. avoid a nearly $400 million damages award to Versata Development Group Inc. in a patent infringement case in the Eastern District of Texas. As that case was pending, SAP hired Finnegan to file the first post-grant proceeding before the new Patent Trial and Appeal Board created by the America Invents Act.
The board's first-ever ruling in June 2013 invalidated all of Versata's patent claims. Masurovsky said that development raises a new litigation battle: Can the district court verdict stand in light of the patent office invalidating those patents?
Finnegan's litigation team is adept at handling high-stakes cases before the IP-loaded Federal Circuit. Firm name partner Donald Dunner, who holds a degree in chemical engineering, was named one of The National Law Journal's 100 Most Influential Lawyers in America for his work in IP litigation.
In August, Dunner convinced the Federal Circuit to reject its own rule on the theory of "induced infringement" of a method patent. The divided en banc ruling in Akamai Technologies Inc. v. Limelight Networks marked a major change that makes it easier for plaintiffs to win cases when contracted parties perform some of the method patent's steps.
Finnegan partner Thomas Jarvis secured a complete victory for Research In Motion Ltd. in July 2012 with an International Trade Commission ruling that an Eastman Kodak Co. patent for electronic cameras was invalid. An earlier Kodak case before the ITC involving the same patent was settled for about $1 billion.
The later case was a good example of how the firm's technical expertise let the client make a decision to take a case all the way, Masurovsky said. The strategy can, she said, "allow the client to say, 'I understand the risks, but the strength of the technical argument makes it worth it.' "
KEYS TO SUCCESS
"One of the firm's greatest strengths is its Federal Circuit practice. The firm is blessed with 50 former Federal Circuit law clerks and has argued more cases before the court — with significant success — than any other law firm."
"Finnegan has been ­successful by focusing on what it does well — intellectual property law — and remaining committed to all aspects of that practice, from the Patent Office to the courts and the ITC. With so many attorneys all focused on IP law, there is always someone at the firm who has faced the same or a similar issue."
"Success often depends on remaining open to imaginative new theories as the evidence develops during discovery. We have often been able to turn our opponent's best evidence into our client's best evidence."
— Donald Dunner, Michael Jakes and Charles Lipsey, partners
|Litigation partners in D.C.||74|
|Litigation associates in D.C.||106|
|Other litigators in D.C.||17|
|Litigators as percentage of firm||77%|
|Litigators as percentage in D.C.||79%|
|Percentage of firm revenue||68%|
|Percentage of D.C. revenue||69 %|