In this special two-episode podcast series, Finnegan partner Jeffrey Totten chats with Finnegan attorney Alissa Green about the Federal Circuit’s inaugural ruling on derivation proceedings under the America Invents Act.

In this special two-episode podcast series, Finnegan partner Jeffrey Totten chats with Finnegan attorney Alissa Green about the Federal Circuit's inaugural ruling on derivation proceedings under the America Invents Act.

On January 8, 2025, the European General Court made history by ordering the European Commission to pay damages to an individual in the case of Bindl v. Commission (Case T-354/22). Mr. Thomas Bindl, a German citizen, claimed that the Commission violated his privacy rights by sharing his personal data with the United States without proper protections. He argued that this happened when he logged into a Commission website using his Facebook account, which collected information like his IP address. This ruling is important because it’s the first time the court has awarded monetary damages to an individual, and it highlights the legal risks businesses face when handling data from EU residents. In this podcast, Finnegan partner Lynn Parker Dupree, along with attorneys Julia Obradovic-Walz and Nessa Khandaker interview Mr. Bindl and his counsel, Peter Hense, about the significance of this case.

In this episode, Anna Chauvet and Troy Viger break down Warner Chappell Music, Inc. v. Nealy and discuss its implications for Copyright policy. 

In this episode, Finnegan partner and leader of Finnegan’s copyright practice Anna Chauvet discusses the legal questions raised by the use of generative artificial intelligence by innovators and what it could mean for copyright policy holders.

In this episode, Finnegan attorneys Kevin Rodkey and Beth Ferrill discuss the recent the en banc decision in LKQ Corporation v. GM Global Technology Operations LLC and what it means for the future of design patent disputes.

Welcome to the Last Month at the Federal Circuit—a look at recent Federal Circuit decisions impacting the intellectual property community. In this special episode, Daniel Klodowski and Cara Regan dig into statistics about the Federal Circuit's case load and offer takeaways about what they mean. 

In this podcast, Esther Lim, partner and Chief Diversity and Inclusion Officer at Finnegan chats with the Commissioner for Patents of the United States Patent and Trademark Office, Vaishali Udupa, about her role and her advocacy for diversity, equity, and inclusion.

Welcome to the Last Month at the Federal Circuit—a look at recent Federal Circuit decisions impacting the intellectual property community. In this episode, Beth Ferrill discusses recent design law cases from November.

Welcome to the Last Month at the Federal Circuit—a look at recent Federal Circuit decisions impacting the intellectual property community. In this episode, Cora Holt and Ryan McDonnell discuss recent cases from October. 

In this episode, Finnegan partner Elliot Cook speaks with the leader of the firm's privacy practice, Lynn Parker Dupree, and partner Scott Burwell about the California Privacy Protection Agency’s new enforcement review.

On June 1, 2023, the new patent system for the unitary protection of inventions in the EU was launched. Companies can now apply for patent applications with unitary effect in currently 17 participating EU countries (EPC states). In addition, patent disputes based on ordinary European patents and Unitary Patents can now be conducted in a centralized manner before the Unified Patent Court. it is already becoming apparent that the new patent system will offer far-reaching opportunities for the medical devices industry as well. In the field of medical technology, the protection of innovation is key. Research and development incur high costs, which are likely to have risen even further recently due to the mandatory requirements of the Medical Devices Regulation (VO (EU) 2017/745). Therefore, it is all the more important for innovative companies in the sector to be able to protect their valuable inventions and, if necessary, successfully enforce them against competitors. Until now, European patents could only be validated and maintained individually in the desired member states. Depending on the number of states, the cost of validating a patent can quickly add up over the years. Similar to the centralized CE marking, with the unitary patent, uniform protection for all 17 participating EU countries can now be achieved simultaneously in the EPG states with just one application. This can lead to significant savings in terms of validation costs. In addition, European patents can still be applied for and granted in the EU countries not participating in the unitary patent system. The same applies to the 17 EPC states. For companies seeking patent protection, the selection spectrum has thus become significantly broader. The Unified Patent Court has also opened up another strategic option for patent litigation in Europe. Classic European patents that have not been withdrawn from the jurisdiction of the new court by their owner and unitary patents can now each be enforced or challenged in one proceeding with equal effect for several European countries. For patent owners, this offers an efficient way to quickly enforce their claims across countries. Sharp rise in patent applications in medical technology. A look at the figures shows just how much potential the new patent system holds for the industry: The number of patent applications in the field of medical technology has risen significantly in recent years - by a full 50% since 2010. With 15,321 European patent applications in 2021 (source: European Patent Office, as of July 26, 2023), the medical technology sector ranks second among the technology sectors with the highest number of applications, directly after the digital communications sector with 15,400 applications. The German medical technology sector, which most recently generated more than 40 percent of industry sales in the EU (source: "The German Medical Technology Industry," SPECTARIS Yearbook 2022/2023), recorded the second strongest growth in European patent applications (plus 8.1% in 2021 compared to 2020). In view of the high filing figures, it is likely that patent disputes in the medical technology sector will continue to be fought out frequently in Europe in the future. New court already attracting proceedings The new Unified Patent Court is expected to grow rapidly in importance given the advantages it offers companies. Just a few weeks after its launch, companies from the medical technology sector have already filed actions with the Unified Patent Court. Of a total of 29 publicly registered cases, five are from the medical technology sector (as of July 31, 2023). In particular, the German local chamber in Munich, where three of the five lawsuits were filed, is a popular port of call for companies in the medical technology sector. The global patent dispute between DexCom Inc. and various Abbott Group companies, which was initially filed in both the U.S., U.K. and Germany and is now expanding to the Unified Patent Court, could generate a lot of interest. According to the court record, DexCom has filed two infringement suits against Abbott before local chambers in Paris and Munich, each with an amount in dispute estimated by the plaintiff at €4 million. In this case, the parties are litigating on the basis of two European patents (EP 3 797 685 and EP 3 435 866) that protect certain technologies that can be used for glucose monitoring devices. High amounts in dispute in the medical technology sector The amounts in dispute in the medical technology cases already pending before the Unified Patent Court are also not insignificant. The value in dispute in two main proceedings brought by Edwards Lifesciences Corporation for EP 2 628 464 ("Prosthetic valve") and EP 3 646 825 ("A system comprising a prosthetic valve and a delivery catheter") each amounts to €8 million. With an average value in dispute of EUR 4 million for the five proceedings registered to date, medical technology is the technical field with the second highest average value in dispute. Only in the field of biotechnology and pharmaceuticals (bio/pharm) have higher median amounts in dispute been reported (€7.5 million). Medical technology is followed by electrical engineering (median €1.0 million) and mechanical engineering (median €1.4 million). The highest amounts in dispute to date, €100 million each, were reported for lawsuits between companies of the Sanofi Group, Regeneron Pharmaceuticals Inc. and Amgen Inc. by EP 3 666 797 ("Antigen binding proteins to proprotein convertase subtilisin kexin type 9 (PCSK9)"). Such high amounts in dispute can probably be explained above all by the fact that the Unified Patent Court is able to decide for more than just one country. In view of the large territorial scope, disputes before the Unified Patent Court can therefore have extremely high economic relevance for the parties concerned. Companies should therefore already decide when filing their future patent applications whether or not they want to go before the new court. While the patent proprietor of classical European patents has a choice - depending on the individual circumstances of the case - during the (renewable) seven-year transitional period whether to enforce these patents in the new system or not, there is no such choice for unitary patents. The latter can only be enforced before the new court and can only be challenged there by way of an action for nullity. The decision on the type of patent application is therefore likely to depend essentially on how many strategic options the applicant wishes to keep open in case of doubt. In this context, European patents have the advantage that, once they have been withdrawn from the jurisdiction of the Unified Patent Court, they can also be reintroduced under certain conditions. Depending on the individual case, this can result in strategically valuable options.  High economic importance requires appropriate preparation   Against the background of the booming German medical technology market and the steadily increasing number of patent applications, the new court system offers new opportunities for the medical technology industry. On the one hand, it is characterized by its large territorial reach. On the other hand, proceedings can be conducted quite quickly there. For example, infringement proceedings in the first instance could be concluded within 12 to 14 months, even if the court has to rule on the legal status of the patent in dispute at the same time in the case of an invalidity counterclaim. This offers opportunities for rapid cross-border conflict resolution. Many different national proceedings, which can sometimes lead to divergent decisions in the individual jurisdictions, are thus avoided. In cases of particular urgency, temporary injunctions can also be applied for. These often play a role if, for example, patent infringements are imminent in the context of trade fair appearances and rapid action is required to prevent such infringements. The new court can issue such injunctions not only within a very short time, but also without hearing the affected party in advance. And the enforcement of titles is also to be made easier. In the future, the prevailing party will only have to enforce a single title, which will apply equally to the various EPC states for which the patent was asserted.  In view of these advantages, it is not surprising that the first proceedings are already pending before the new court. The number of proceedings suggests that the court will enjoy increasing popularity in the future. Medical technology manufacturers should therefore familiarize themselves with the new system - if they have not already done so - so that they can make the best possible use of it when it comes to securing their own market position. The main thing here is to prepare the legal arguments thoroughly and have the necessary evidence to hand. This is because, in view of the speed with which proceedings are conducted, the parties' deadlines for submitting briefs are extremely short. It is also important to know the legal basis in order to avoid pitfalls and to conduct proceedings successfully.

This podcast dives into the inspiring stories of Finnegan's junior attorneys who have gained trial experience early in their careers. Join us as we explore their triumphs, trials and tribulations, and how they built the confidence, resilience, and knowledge to become the next generation of trial attorneys. In this episode, Sonja Sahlsten explains how being an "evidence geek" proved to be beneficial early in her career. 

The "Getting to the Courtroom: Gaining Trial Experience as a Junior Associate Podcast" dives into the inspiring stories of Finnegan's junior attorneys who have gained trial experience early in their career. Join us as we explore their triumphs, trials and tribulations, and how they build the confidence, resilience and experience to become the next generation of trial attorneys. In this episode Connor McGregor highlights the importance of having mentors and nurturing relationships.

The "Getting to the Courtroom: Gaining Trial Experience as a Junior Associate Podcast" dives into the inspiring stories of Finnegan's junior attorneys who have gained trial experience early in their career. Join us as we explore their triumphs, trials and tribulations, and how they build the confidence, resilience and expertise to become the next generation of trial attorneys. In this episode, Jency Mathew describes her experience and explains how it has shaped her career. 

Welcome to the Last Month at the Federal Circuit—a look at recent Federal Circuit decisions impacting the intellectual property community. In this episode, Cara Regan and Sydney Kestle discuss two recent cases from July. 

In this podcast, Kevin Rodkey and the USPTO's Derrick Brent highlight the remarkable pro bono initiatives and resources offered by the United States Patent and Trademark Office. 

Welcome to the Last Month at the Federal Circuit—a look at recent Federal Circuit decisions impacting the intellectual property community. In this episode, Kevin Rodkey discusses IP decisions that were issued in the first half of 2023.  

This is a true story contrasting two Israeli mobility companies. There is a happy ending for one. But for the other, due to poor IP planning, dark clouds may be approaching. The story begins a number of years ago, when the co-founders of a seed-round mobility startup met me in a north Tel Aviv coffee shop on a bright spring day to share an idea way ahead of its time. For reasons you will understand when you read on, I am not sharing the name of the startup. But if you know the Israel mobility space, you know the company. During that meeting, the founders shared a paradigm-shift technology vision. Having spent years representing automotive companies, I had the immediate sense that the founders’ vision, while fascinating, was somewhat naïve in that it could put the company in a head-on collision with powerful market forces.  These forces would not hesitate for a second to investigate the startup’s technology and take its innovations without paying a shekel.  After all, the mobility space is fierce. The OEM automobile manufacturers are powerful and get what they want.  And the Tier 1’s who supply the OEMs often use cut-throat tactics to satisfy the OEMs’ demands.  The startup had one major potential advantage to ensure its survival. If the startup could develop a blocking patent portfolio, future competitors and potential partners would not be able to steal the startups’ innovations. Developing a blocking patent portfolio is easier said than done. Patents are like roadblocks. When done right, they restrict access. But ensuring that the roadblocks are properly located on the right roads takes significant planning and skill.  Due to a lack of up-front strategic planning, most patents end up off to the sides of the road or only block one lane, leaving room for competitors to bypass.  In that sunny spring meeting in the Tel Aviv café, I envisioned a series of patents that if properly executed would have been extremely powerful roadblocks.  But the startup did not appreciate the value, and that was the last I heard from them until we met last week, a few years later, when the company shared a problem. In the intervening years since we met, the startup pursued and obtained a few patents.  But those patents were not strategically developed, and barely blocked even one lane of traffic, leaving significant room for competitors to take what they choose.  The startup did a very good job of publicizing its technology to the point that one of the large OEM automobile manufacturers reached out to become a strategic partner.  Ordinarily, that would be a startup’s dream.  But because this startup lacked the patents to keep the OEM from taking the technology for itself, cutting-out the Israeli startup, the startup felt it had no choice but to reject the offer.  It was a dream that was hard to pass up, but the Israeli company felt that it could not take the risk of the more powerful OEM moving forward on its own after receiving the startup’s know-how.    A strategic patent portfolio would have leveled the playing field. Had the startup invested in a thoughtful strategic patent portfolio, the startup could have confidently partnered with the OEM, knowing that the strategic patents would minimize the risk of an underhanded play by the OEM.  Ironically, the startup’s unwillingness to partner may only have bought a short window of peace, because even without a partnering arrangement, the OEM, who employs hundreds of engineers, has the resources to copy the Israeli company’s technology freely and legally.  Since the Israeli company’s technology is already published and the product could be purchased and reverse engineered, it may be just a matter of time until the startup faces a competitor with far more market power than the startup will need to effectively compete.    Under these circumstances, investors may think twice before investing in the startup’s next round. When I met with management of the startup last week, one of the executives candidly conceded, “we understand technology inside and out, but there is a big black hole that we do not understand:  it’s how patents work.”  Time will tell if its lack of IP understanding will cost the Israeli startup its life. Not long after meeting that Israeli company, I received a call from the Chairman of another Israeli mobility startup, EVR Motors—the developer of electric motors with a new architecture that provides superior power and performance and is less than half the size and weight of existing motors.  The Chairman and the CEO are both patent-savvy. They understand that they are leading their company into a highly competitive space and that without a strategic patent portfolio carefully designed to block competitors, the technology will be copied. The Chairman and CEO also understand that developing strong patents is not just about protecting the company’s current products, but is also about envisioning how competitors will try to find their way around the patents, and block those alternative paths as well.  When competitors assess a patent portfolio to decide if they are free to use the technology, they do so from a litigation perspective.  In other words, a competitor’s lawyers ask themselves, will the patents hold up in court if our client is sued for infringement?  For this reason, EVR Motors chose to work with a strategic patenting team that included a seasoned U.S. courtroom litigator. A U.S. litigation perspective maximizes the chances a competitors’ lawyers will understand that the patents were built to withstand attack. EVR Motors undertook a disciplined patent strategy program to carefully aim their patents at would-be competitors. Then, over the course of 18 months, the company obtained 10 strategic U.S. patents, with more in the pipeline. Unlike the first Israeli startup who could not close a partnering deal for fear the partner would run away with the technology, EVR Motors’ strategic patent portfolio gave it the confidence to close six partnering relationships since 2022, and to be recognized as one of Israel’s top 10 Israeli startups electrifying transportation. Having considered the risk and reward of two very different approaches to patents, consider this question: Does your company have a strategic patent portfolio to prevent competitors from offering a competing product that will impact your expected revenue streams?

Welcome to the Last Month at the Federal Circuit. In this episode, Finnegan attorneys Jason Romrell and Ryan McDonnell discuss amendments to the Federal Circuit Rules, which went into effect in March 2023.