Matthew M. Gardlik

AIPLA Provides Legislative Proposal on Patent Eligible Subject Matter

May 17, 2017

The AIPLA has provided a new Legislative Proposal and Report on Patent Eligible Subject Matter under 35 U.S.C. § 101. This report urges congressional action to overhaul, and indeed expressly overrule the current judicially created framework under section 101 in light of recent jurisprudence from the Supreme Court and other lower Courts applying the new standard.

You can read the full Proposal here.


Magistrate Judge in Eastern District of Texas Adds to the Developing Jurisprudence of Estoppel in the Context of IPRs and 35 U.S.C. § 315.

May 16, 2017

A magistrate judge in the Eastern District of Texas has recommended to the Court on May 11, 2017 that Microsoft be estopped from raising certain defenses at trial stemming from a total of six (6) IPRs filed by Microsoft against the patent owner Biscotti Inc.

Specifically, the magistrate judge states that:

Section 315(e) estops Microsoft from asserting at trial: (1) grounds for which the PTAB instituted IPR and determined those grounds to be insufficient to establish unpatentability after a trial on the merits; (2) grounds included in a petition but determined by the PTAB to not establish a reasonable likelihood of unpatentability (in other words, administrative review on the merits of a ground); and (3) grounds not included in a petition that a “skilled searcher conducting a diligent search reasonably could have been expected to discover.” See, e.g., 157 Cong. Rec. S1375 (daily ed. Mar. 8, 2011) (statement of Senator Jon Kyl); see also Clearlamp, LLC v. LKQ Corp., No. 12 C 2533, 2016 WL 4734389, at *9 (N.D. Ill. Mar. 18, 2016) (adopting the skilled searcher standard). As for the third category, the Court agrees with the Delaware court when it remarked, “extending [Shaw’s] logic to prior art references that were never presented to the PTAB at all (despite their public nature) confounds the very purpose of this parallel administrative proceeding . . . .” Intellectual Ventures I, Case No. 13-CV-00453-SLR, Dkt. No. 559 at 26-27. Finally, Microsoft is not estopped from asserting grounds included in a petition but which the PTAB found redundant or declined to institute review for another procedural reason. See Shaw, 817 F.3d at 1300; HP, 817 F.3d at 1347.

p. 13-14.

Read the full Report and Recommendation here.


Defend Trade Secrets Act of 2016

August 8, 2016

On May 11, 2016, the Defend Trade Secrets Act (“DTSA”) was signed into law. The DTSA creates a federal cause of action that provides civil remedies for the misappropriation of trade secrets. The presentation below provides the definitions of some of the important terms used in the act, and also provides a summary of the type of remedies and damages that may be recovered. Download the presentation here.


Woodard Attorney Featured in The Indiana Lawyer Article on Law Firm Apps

November 7, 2014

As a law student, Matthew Gardlik wanted to keep a copy of Black’s Law Dictionary nearby for quick reference, but he didn’t want to lug the massive tome from class to class. So he did what many smartphone and tablet users do: He found an app for that, downloaded it and always had the dictionary handy whenever he had a question.

Gardlik, now an associate at Woodard Emhardt Moriarty McNett & Henry LLP, is using the same idea to create the firm’s first app, which will have the current laws on intellectual property, like patents and trademarks, as well as the Code of Federal Regulations. See the full article published in The Indiana Lawyer here.


Dr. Matthew Gardlik Elected Chairman of the Indiana Section of the American Chemical Society

January 30, 2014

Dr. Matthew Gardlik was recently nominated and elected Chairman of the Indiana Section of the American Chemical Society. This three year commitment to the Executive Committee includes roles as Chairman-Elect, Chairman, and Chairman-Emeritus. Matt has been a member and involved with the American Chemical Society for over 10 years. In 2012 Matt was honored with the Catalyst Award by the Cincinnati Local Section of the American Chemical Society for his work with the Cincinnati section.


October 2013 Prosecution Practice Group Luncheon

October 21, 2013

This month, our Prosecution Practice Group Luncheon discussed recent announcements at the United States Patent and Trademark Office, recent developments in the prosecution of patents and trademarks, specifically, marks containing “super”, disparaging and geographically descriptive marks, the re-launch of the After Final Pilot Program, priority claims in designed patents Pre- and Post AIA, as well as 102(b) bar dates as it applies to the sale of an invention by a foreign supplier. You can download the PowerPoint presentation from here.


Federal Government Shutdown Affects the District Court for the Southern District of Indiana

October 9, 2013

This week, the shutdown of the federal government has affected civil cases in the Southern District of Indiana. The Court has issued a rare stay of all pending litigation where the United States, its agencies, officers, or employees are parties. The Court believes that the shutdown “has resulted in the excepted employees in the United States Attorney’s Office to be unable to fully represent the interests of the United States in all of civil litigation pending before this Court.”

This Order does not affect habeus corpus proceedings at the Court.

The Court’s order can be found at the link here.


United States Patent and Trademark Office To Remain Open During Government Shutdown

October 2, 2013

The United States Patent and Trademark office will remain open during the government shutdown that began October 1, 2013. The Office will remain open, using prior year reserve fee collections to operate as usual for approximately four weeks. If the federal government shutdown should continue long enough for the reserve fee collections to be exhausted, the Office will shutdown, although IT infrastructure and other functions would continue to work to accept new applications.

Additionally, the 18th annual Independent Inventor Conference at the USPTO that was scheduled for October 11-12 has been cancelled.


Prosecution Luncheon November 2012

December 3, 2012

This month our Patent Prosecution Group Luncheon discussed the increasing problem of Non-USPTO solicitations, the new versioning scheme for the TMEP, prior illegal use in the context of registering a trademark, assignment of trademark rights, a new case on objective indicia of nonobviousness, and when a “lease” is a “sale” under section 271(a) of the patent statute. To download a copy of the presentation click here.