Profile
Herbert H. Finn is an experienced professional in the complex world of Intellectual Property (IP) law, focusing on litigation and portfolio management for clients within the United States and globally. During his 30+ year career, he has focused on litigation handling clients’ matters in various jurisdictions across the United States including before District Courts, the U.S. Court of Appeals for the Federal Circuit, the U.S. International Trade Commission (ITC), the Patent Trial and Appeals Board (PTAB), and the Trademark Trial and Appeal Board (TTAB). Herb has represented clients in a broad range of industries including sports and energy drinks, nutritional supplements, medical equipment, cellular communications, computer hardware and software, digital camera technology, Internet/networking technology, LCD technology, anti-theft prevention equipment, mass transportation seating, novelty gaming, injection molding, and shipping and product packaging.
Herb’s proficiency isn’t confined to litigation. He embodies a wide-ranging understanding of the strategic dimensions of IP rights and portfolio management as well, by acquiring, protecting, and defending them on behalf of his clients. Furthermore, Herb is highly skilled in negotiating diverse agreements surrounding intellectual property; from acquisitions and licenses to non-competes and non-disclosures. Hence, Herb’s combination of litigation prowess and negotiation aptitude help him provide value and service to clients in a range of industries.
Herb’s seamless blend of strategic insight with practical tactfulness in handling litigation, license negotiations, acquisitions, and non-disclosures allows him to provide counsel that aligns with the goals of his clients while also rigorously defending their interests through developing comprehensive prosecution and enforcement strategies. In an environment where the legal nuances of IP rights are often multi-dimensional, Herb’s deep experience with the underlying issues and robust understanding of related market trends make him a valuable resource to clients across the globe.
Herb has been recognized by organizations such as Intellectual Asset Management (IAM) magazine, Leading Lawyers Network, Illinois Super Lawyers, and The Legal 500 United States.
Concentrations
- Patent litigation and arbitrations
- Section 337 investigations before the U.S. International Trade Commission (ITC)
- Trademark litigation, oppositions, cancellations and arbitrations
- Patent, trademark and copyright prosecution
- Searches for patentability, infringement and avoidance opinions
- Preparation and negotiation of intellectual property licenses
- Patent, trademark, trade secret and copyright transactions
- Intellectual property due diligence investigations and audits
- U.S. and international intellectual property law
Capabilities
Experience
- Represented LG Electronics as lead trial counsel in In re Certain Consumer Electronics And Display Devices And Products Containing Same before the U.S. International Trade Commission under Investigation No. 337-TA-836 defending against allegations of patent infringement relating to cell phone, tablet and LCD TV technology.
- Represented LG Electronics as lead trial counsel in In re Certain Electronic Imaging Devices before the U.S. International Trade Commission under Investigation No. 337-TA-726 defending against allegations of patent infringement relating to mobile device display and digital camera technology.
- Represented Verizon Wireless as trial counsel in multiple matters in defense of accusations of patent infringement.
- Representation and counseled VTech Holdings, and its subsidiaries, in connection with international intellectual property matters including the obtaining, maintaining, licensing and enforcing patents, designs, trademarks, trade names, trade dress, copyrights and trade secrets rights as well as defending against accusations of infringement of third party rights including in defense of allegations of patent infringement in Jackson v. IL Bell Telephone Co, et al., C.A. 01-cv-8001 (N.D. Ill.) related to caller-ID technology.
- Represented Google, and 50 other co-Defendants as members of the Open Handset Alliance, as lead trial counsel in Specht, et al. v. Google Inc., et al., C.A. 09-cv-02572 (N.D. Ill.) in a coordinated defense to allegations of trademark infringement and unfair competition.
- Represented Biomet as trial counsel toward enforcing its patents and defending against allegations of patent infringement including in Biomet Inc. v. Smith & Nephew Inc., C.A. 05-cv-413 (N.D. Ind.) and Smith & Nephew, Inc. et al v. Biomet, Inc. et al., C.A. 05-cv-611 (D. Ore.).
- Represented Wiley-X and 5.11 as lead trial counsel in Oakley, Inc. v. 5.11, Inc. et al., C.A. 11-cv-02173 (S.D. Cal.) defending against allegations of patent infringement related to eye glasses.
- Representation and counseled of Laboratories De Biologie Vegetale (Yves Rocher), a leading French health and beauty company, to develop, obtain, maintain and protect its intellectual property in the United States.
- Represented Primax Electronics Ltd. as lead trial counsel in Primax Electronics Ltd. v. KYE Systems America Corp., C.A. 09-cv-02821 (C.D. Cal.), and KYE Systems America Corporation v. Primax Electronics Ltd., C.A. 10-cv-04481(C.D. Cal.) defending against allegations of patent infringement related to computer input devices.
- Represented Likewise Software as lead trial counsel in Quest Software, Inc. v. Centrify Corporation and Likewise Software, Inc., C.A. 10-cv-00859 (D. Utah) defending against allegations of patent infringement.
- Represented Freedman Seating as trial, appellate and licensing counsel towards enforcing its patents and defending against allegations of patent infringement relating to mass transportation seating including in Freedman Seating Company v. American Seating Company, C.A. 02-cv-05347 (C.D. Cal.) and American Seating Company v. Freedman Seating Company, C.A. 05-cv-0130 (W.D. Mich.).Represented Lorillard Tobacco as lead trial counsel in multiple cases before the U.S. District and Appellate Courts enforcing its trademark rights against resellers (both wholesalers and retailers) of counterfeit goods.
- Represented Gen-Tran Corporation as lead trial counsel in Gen-Tran Corporation v. Universal Product Concepts, Inc., C.A. 08-cv-3777 (N.D. Ga.) towards enforcing its rights related to portable electric generators and transfer switches.
- Representation and counseled Douglas Press, a novelty gaming manufacturer, as trial and licensing counsel in its industry-wide enforcement efforts asserting its patent portfolio including in Douglas Press Inc. v. Arrow Intl Inc., C.A. 95-cv-03863 (N.D. Ill.), Douglas Press, Inc. v. World Wide Press, Inc., C.A. No. 99-cv-7539 (N.D. Ill.), Douglas Press, Inc. v. American Games Inc., C.A. 99-cv-7443 (N.D. Ill.) Bonanza Press, Inc. v. Douglas Press, Inc., C.A. C00-0133 (W.D. Wash), Douglas Press, Inc. v. Tabco Inc., et al., C.A. 00-cv-07338 (N.D. Ill.), Douglas Press, Inc v. Intl Gamco Inc., C.A. 00-cv-07340 (N.D. Ill.), Douglas Press, Inc. v. Universal Manufacturing Company Inc., C.A. 01-cv-2565 (N.D. Ill.), and Douglas Press Inc. v. Atlantic Gaming, Inc., C.A. 05-cv-1324 (N.D. Ill.).
- Representation and counseled Se-Kure Controls, a manufacturer of retail anti-theft and loss equipment, as trial, appellate and licensing counsel in its industry-wide enforcement and licensing efforts asserting its patent portfolio including in Se Kure Controls Inc. v. Vanguard Products Group, et al., C.A. 02-cv-03767 (N.D. Ill.), Se-Kure Controls, Inc. v. Diam USA, Inc., C.A. 06-cv-04857 (N.D. Ill.) and Se-Kure Controls, Inc. v. Sennco Solutions, Inc., et al., C.A. 08-cv-06075 (N.D. Ill.).
- Representation and counseled UBM PLC and Canon Communications, leading providers of international trade shows, conferences and publications dedicated to the advanced manufacturing sector, in counseled, supervising and maintaining their international trademark and copyright portfolio and web presence.
Recognition & Leadership
- Listed, Super Lawyers magazine, Illinois Super Lawyers, 2007-2024
- Listed, Leading Lawyers Network, 2009-2024
- Listed, IAM magazine, "IAM Patent 1000," Litigation, 2016-2024
- Team Member, a U.S. News - Best Lawyers® "Best Law Firms," "Law Firm of the Year" in Information Technology Law, 2024
- Team Member, a U.S. News - Best Lawyers "Law Firm of the Year" in Trademark Law, 2020, 2022
- Listed, The Legal 500 United States, Intellectual Property - Trademarks - Litigation, 2015
- Listed, Madison Who's Who
- Listed, Strathmore's Who's Who
- Member, American Bar Association
- Member, Association of Trial Lawyers of America
- Member, Decalogue Society of Lawyers
- Member, Illinois Bar Association
- Member, International Trade Commission Trial Lawyers Association
- Member, International Trademark Association
Credentials
- J.D., DePaul University College of Law, 1991
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M.B.A., DePaul University, 1991
- College of Commerce
- B.S., Computer Science/Engineering, University of Illinois at Urbana-Champaign, 1987
- Illinois
- U.S. Court of Appeals for the Federal Circuit
- U.S. Court of Appeals for the Seventh Circuit
- U.S. District Court for the District of Colorado
- U.S. District Court for the Eastern District of Texas
- U.S. District Court for the Northern District of Illinois
- U.S. District Court for the Northern District of Texas
- U.S. District Court for the Southern District of Illinois
- U.S. District Court for the Western District of Michigan
- U.S. District Court for the Western District of Wisconsin
- U.S. Patent and Trademark Office