Finnegan

Firm overview:

Since it was founded in Washington, DC, in 1965, Finnegan has focused exclusively on intellectual property matters. Now one of the world’s largest IP firms, it is widely recognised for its calibre, including its patent services in both prosecution and litigation.

Its US offices are located in Atlanta, Boston, Palo Alto, Reston, and Washington, DC, with  European offices in London and Munich; and Asian offices in Seoul, Shanghai, Taipei, and Tokyo.

Finnegan annually files and prosecutes around 3,500 patent applications at the US Patent and Trademark Office (USPTO), the European Patent Office (EPO) and the UK Intellectual Property Office (UKIPO). Finnegan also files under the Patent Cooperation Treaty (PCT).

The firm’s US, European and UK patent professionals collaborate on clients’ global prosecution strategies. The technologies at issue span semiconductors, medical devices, chemicals, metals, pharmaceuticals, biotechnology, industrial manufacturing, robotics, consumer electronics, computer software, and business methods.

Finnegan has represented more than 200 clients in defending the validity of their patents or challenging the validity of competitor’s patents, in proceedings to review a patent office’s decision to grant a patent. These proceedings often involve parallel litigation through post-grant review before the Patent Trial and Appeal Board (PTAB) and follow on procedures before international patent offices.

For nearly 60 years, Finngan has successfully litigated hundreds of cases involving the most technologically advanced and complex patents at trial and appellate level in the US in the district courts, the International Trade Commission (ITC), the Court of Federal Claims, the Court of Appeals for the Federal Circuit and the Supreme Court.

The firm offers a wealth of insights, with blogs such as its AtThePTABBlog.com, and IP news, articles and updates. It also hosts events and webinars.

Team overview:

Washington, DC-based Anand Sharma, chair of Finnegan and former managing partner, tries cases before judges and juries across the US, and manages patent portfolios for several multi-billion dollar companies. A former NASA software engineer, Sharma handles complex technologies, including data storage and software solutions, telecom, medical devices, automotive systems, polymer films, industrial manufacturing, and consumer appliances and electronics.

Erika Harmon Arner, managing partner of Finnegan, is a nationally recognised leader in trial practice before the Patent Trial and Appeal Board (PTAB) and related appeals to the US Court of Appeals for the Federal Circuit.  She has argued and won a number of landmark cases at the PTAB and Federal Circuit for both patent challengers and patent owners, and consistently ranks as one of the top three female attorneys appearing in PTAB trials.

Partner Cory Bell is a “very good lawyer that I would recommend”, according to a peer. Bell brings his experience as a former USPTO examiner to develop patent prosecution strategies for clients, having evaluated thousands of patent applications for licensing, monetisation or sale. Also strong on the litigation side, Bell leads Finnegan’s PTAB trials section and has represented clients before US district courts and the US International Trade Commission (ITC).

Elizabeth (Beth) Ferrill is renowned as an expert on design patents and her practice covers the complete life cycle, from prosecution to litigation and appeal. Ferrill has a particular interest in strategic counselling related to securing worldwide protection for designs, and also has extensive experience in utility patent litigation.

Key matters:

Prosecution:

• Finnegan assists OpenAI with matters related to patent application drafting and global prosecution, as well as patent counselling services. Partner Karthik Kumar and associate Maram Al-Shear, in Washington, DC, are the relationship lawyers.
• Finnegan designed and prosecuted a global patent strategy with client Eisai on MORAb-202, an antibody-drug conjugate (ADC), providing pivotal support for Eisai’s exclusive, global strategic collaboration agreement with Bristol-Myers Squibb Company (BMS) to co-develop and co-commercialise the asset.

Under the publicly announced financial terms of the agreement, BMS will pay Eisai $650 million, including $200 million as payment towards Eisai’s research and development expenses. Eisai is also entitled to receive up to $2.45 billion in potential future development, regulatory, and commercial milestones. Boston partner Jeffrey Jacobstein is the relationship lawyer.

• Finnegan prepared and prosecuted patents for start-up Hutchison Medipharma in the US for the treatment of metastatic colorectal cancer. Those patents cover a small molecule, fruquintinib, which received approval in China. Partners Paul Browning in Washington, DC, and Ningling Wang in Shanghai, are the relationship lawyers.

Litigation:

• Sonos v Google, Case No. 25-1338 , US Court of Appeals for the Federal Circuit, 2025

Finnegan represents Google in its ongoing dispute with Sonos over patented smart speaker technology—particularly concerning multi-room audio systems. Since Sonos sued Google in January 2020, alleging infringement of its patent related to the tech, the case has been heard in California district court, the US International Trade Commission (ITC), the Patent Trial and Appeal Board (PTAB) and the Federal Circuit.

Sonos secured a victory at the ITC in January 2022, resulting in a limited import ban on some of Google’s devices and the removal of some features from its smart speakers and smart displays.

Google then sued Sonos at the ITC, alleging infringement of seven patents that concerned voice input technology and ‘hotword’ detection and wireless charging.

In May 2023, a jury awarded Sonos $32.5 million after finding that Google had infringed on one of Sonos’ smart speaker patents. But five months later, on appeal, a federal judge overturned this, invalidating two of Sonos’ patents and affirming that Google had independently developed the contested technology.

As of January 2025, Finnegan has filed an appeal on behalf of Sonos with the Federal Circuit, challenging a Final Written Decision of the PTAB entered in November 2024 and from all underlying and related orders, decisions, rulings, institutions, and opinions regarding US Patent No. 11,050,615 at issue in Inter Partes Review No. IPR2023-00806.

Erika Harmon Arner is leading the appeal for Sonos, assisted by Cory Bell, Alissa Green and Umber Aggarwal.

Counsel for Google are Patrick Herman and Alyssa Caridis from Orrick, Herrington & Sutcliffe.

• BMW of North America and Bayerische Motoren Werke v Arigna Technology, Case No. 1:23-cv-01190, District of Columbia, Judge Contreras; Case No. 2:21-cv-00173, Eastern District of Texas, Judge Gilstrap; IPR2021-01531, PTAB, Judges Baer, Fenick, Ahmed; Case No. 23-1931, Federal Circuit

Finnegan defeated a US enforcement campaign by Arigna Technology, an Irish non-practising entity, against BMW Group.

Finnegan secured a covenant-not-to-sue and zero-dollar walkaway for its client in a declaratory judgment action concluding Arigna Technology’s high-profile patent enforcement campaign involving current amplification technology.

The outcome followed a decisive ITC victory, the dismissal of parallel district court litigation, and multiple concurrent patent office challenges pending at the time of resolution.

Finnegan’s team included partners Lionel Lavenue, Matthew Bernsten, Kara Specht and Gracie Mills.

• VDPP v Volkswagen Group of America, Case No. 4:23-cv-02961, Southern District of Texas, Judge Rosenthal, 2024

Finnegan represented Volkswagen Group of America in a patent infringement action brought by non-practising entity VDPP. The plaintiff’s complaint asserted a patent directed to a 3D display and glasses system, which it alleged was infringed by Volkswagen’s camera systems.

Finnegan moved to dismiss on several grounds, including VDPP’s failure to allege compliance with the marking statute, 35 U.S.C. § 287(a). The court agreed with the defendant’s arguments and dismissed the case with prejudice. Following dismissal, the court awarded Volkswagen its attorneys’ fees, finding both VDPP and its counsel jointly and severally liable.

Clients:

Non-Contentious: Acton, AeroMobil, Agouron Pharmaceuticals (now Pfizer), BrainScope, Caterpillar, Eisai, Hutchison Medipharma, LTA (Goelet), Principia Biopharma, OpenAI, Rockwell Collins, SRA International, Toshiba, Toyota Aviation, VirnetX, Walnut Technology

Contentious: Aerin Medical, Alzheon, ASSA ABLOY, Audi, B/E Aerospace, Bentley, BMW, Eli Lilly, Emergy, Fidelity National Information Services, Google, Incyte, Lamborghini, MediaTek, Robert Bosch, Tianhai Lace, Truist Bank, Volkswagen Group of America, Zuhai CosMX Battery