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Finnegan Henderson Farabow Garrett & Dunner

World IP Survey Coverage: Print-friendly version

Editorial coverage

United States

While some firms have just a few stars, the lawyers of Finnegan Henderson Farabow Garrett & Dunner share equally in the spotlight. "It is probably the deepest group of IP experts of any firm I know," said a client. "It shows through the quality of the work." First tier in the patent and trade mark rankings, the firm was highly praised by legal commentators. Bilski v Kappos and i4i Limited Partnership v Microsoft were just two of the matters the firm handled in the last year, and both reached the Supreme Court. "Finnegan is as good as they come," said a client. "When an issue is tough, we usually bring it to Finnegan."

Some individual lawyers did earn nods - the highly respected Donald Dunner, and patent litigators J Michael Jakes, Michael Morin and Jeffrey Berkowitz. Of the three, a client said: "When I work with them, I feel like we're the only client, and that's the way I want it." Led by trade mark and copyright chair David Kelly, the firm's trade mark group was recommended by peers. "I've always thought of them, among the IP boutiques, as the leader," said one.

Finnegan rose to first tier this year in the biotechnology/life sciences rankings and dominates pharmaceutical litigation. Asked to recommend a firm that represents brand drug companies, a rival said: "Finnegan is at the top of my list." The firm successfully represented AstraZeneca, IPR and Shionogi in multidistrict litigation involving the $4.5 billion-a-year drug, Crestor. After depositions in Japan, Hawaii and Europe, and parallel litigation in Canada, Europe and Israel, Finnegan prevailed in the District of Delaware in preserving market exclusivity for the drug until 2016.


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China

A leader in the US IP market, Finnegan Henderson Farabow Garrett & Dunner set foot in China in June 2008 and has been winning mandates from clients who are after first-class advice on their IP matters. Some of the clients it serves include leading local corporations like China Petroleum & Chemical Corporation, electronics manufacturer TCL Corporation and semiconductor developer China Resources Microelectronics. Core services the firm provides to its clients are strategic IP counselling, patent prosecution, due diligence and opinions on litigations.

A client explains why her company decided to use the firm: "Finnegan is a well-recognised and professional IP firm. When selecting a law firm, building trust and having confidence in its professionalism is very important. Secondly, there is smooth communication both with the team in Washington DC and the office in Shanghai. They are willing to learn and understand customer's needs." Partner Wang Ningling receives this accolade from the same client: "She is very thoughtful and professional. She understands what the customer wants and needs and is a good communicator."


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Japan

With expertise stemming from its IP practice in the United States, the Japan branch of Finnegan Henderson Farabow Garrett & Dunner has a strong reputation. The firm engages in litigation worldwide, serving clients such as Eli Lilly, Federal Express, Hyundai Motor, LG Electronics, Philips Electronics and Research In Motion. While its work in Japan varies widely, the team – consisting of key partners Naoki Yoshida and John Livingstone – focuses on licensing transactions or dispute resolution for Tokyo companies seeking US representation. For example, one of the most significant cases the firm handled this year involved Otsuka Pharmaceuticals in a multiple patent infringement lawsuit against seven companies seeking approval to market US generic copies of Abilify, a drug containing an active ingredient patented by Otsuka. The issues under litigation are validity and enforceability of the patent-in-suit. In addition to catering to the healthcare industry, the team also considers the electronics industry a particular strength. A recent International Trade Commission (ITC) case saw Roger Taylor and his team act for Mitsubishi Heavy Industries in defending General Electric against alleged infringement on three patents related to the operation of wind turbine generators with a power grid. The ITC terminated the case in favour of Mitsubishi as no violation had occurred.


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Taiwan

Although not ranked this year, US IP firm Finnegan Henderson Farabow Garrett & Dunner has an office in Taipei that mainly works with local clients on outbound matters in the US. Office managing partner Douglas Weinstein leads a small team that cooperates closely with its US colleagues and serves leading Taiwan hi-tech companies like Taiwan Semiconductor Manufacturing Company, Industrial Technology Research Institute and Vanguard International Semiconductor Corporation. One highlight of the firm was assisting clients Winbond Electronics and Nuvoton Technology to negotiate a settlement for a trade secret case.


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Firm contact

This firm does not have a profile in the 2011 Handbook