Spiro Bereveskos

We are pleased to announce that Woodard, Emhardt partners Tom Henry, Spiro Bereveskos, and Dan Lueders have been named Super Lawyers in the 2014 edition of Indiana Super Lawyers. Woodard, Emhardt partner Bill McKenna and associate Jim Blaufuss have been named Rising Stars for 2014. Congratulations! Super Lawyers recognizes outstanding lawyers through a rigorous ratings and selection process.

Woodard Emhardt Moriarty McNett & Henry LLP is pleased to announce that it has distinguished itself by earning an honored placement in Indiana as a Highly Recommended Intellectual Property Law Firm in the Managing Intellectual Property IP Handbook.  In addition, partners Spiro Bereveskos, Daniel J. Lueders, and Charles P. Schmal are ranked as IP Stars in Indiana.  The rankings are based on comprehensive surveys conducted during 2012 by a team of researches who sought responses from thousands of practitioners by phone, fax, email, and in face-to-face meetings.

We are pleased to announce that Woodard, Emhardt partners Thomas Henry, Spiro Bereveskos, and Daniel Lueders have been named Super Lawyers in the 2013 edition of Indiana Super Lawyers. Woodard, Emhardt partner Bill McKenna has been named a Rising Star for 2013. Congratulations! Super Lawyers recognizes outstanding lawyers through a rigorous ratings and selection process.

Matthews International Corp. manufactures and sells a Bio Cremation™ product that uses a hydrolysis process to accelerate the natural decomposition of the body to cremate human remains.  In 2011, Matthews filed suit against our client, Biosafe Engineering, LLC, seeking a declaratory judgment of non-infringement, invalidity and unenforceability of five method patents related to using alkaline hydrolysis to dispose of hazardous organic materials.  Matthews also asserted state law claims of trade libel, defamation, and tortuous interference with contractual relations alleging that Biosafe had wrongly accused Matthews of patent infringement to Matthew’s customers, potential customers and employees. 

Biosafe moved to dismiss all counts for lack of declaratory judgment jurisdiction and failure to adequately plead state law claims. The United States District Court of Western Pennsylvania granted Biosafe’s motion to dismiss all counts for lack of declaratory judgment jurisdiction and failure to adequately plead state law claims.  Matthews appealed.

 On appeal, the Federal Circuit upheld the district court’s holding that Matthews’ dispute with Biosafe lacked the requisite immediacy and reality to support the existence of declaratory judgment jurisdiction.  The Federal Circuit noted that there was no evidence as to when the Bio Cremation™ equipment might be used in a manner that could infringe Biosafe’s method patents and that the Bio Cremation™ equipment could be operated outside of the parameters specified in Biosafe’s method patents.  In addition, while Matthews sold the cremation equipment, it did not practice any of the claimed methods and could not be liable for direct infringement. 

 Immediacy

“A party may not obtain a declaratory judgment merely because it would like an advisory opinion on whether it would be liable for patent infringement if it were to initiate some merely contemplated activity.”  The Federal Circuit held that it would be premature to determine infringement of Biosafe’s patents at least until there was specific and concrete evidence regarding how Matthews’ customers planned to use the Bio Cremation™ equipment.

The Federal Circuit noted that a showing of actual infringement is not required to support declaratory judgment jurisdiction but the absence of any arguable infringing activity showed the dispute lacked the immediacy necessary to support declaratory judgment jurisdiction.

Reality

“In the context of patent litigation, the reality requirement is often related to the extent to which the technology in question is ‘substantially fixed’ as opposed to ‘fluid and indeterminate’ at the time declaratory relief is sought.” Because the Bio Cremation™ equipment could be operated using process parameters that would not infringe the method patents and because Matthews did not specify any operating parameters, the Court considered it impossible to determine whether the operation of the Bio Cremation™ equipment infringed the method patents. The Federal Circuit affirmed the district court’s characterization of Matthews’ Bio Cremation™ equipment as “fluid and indeterminate.” A party has no right to obtain declaratory relief when it provides insufficient information for a court to assess whether its future activities would be infringing.

Finally, the Federal Circuit affirmed the district court holding that Matthews failed to plead the bad faith element of the state law trade libel, defamation, and tortuous interference claims. The court stated that the state law claims would not be ripe for review even if Matthews had pled the required bad faith element. Until some specific evidence regarding the operating parameters for the Bio Cremation™ equipment is produced, any determination of whether Biosafe acted unreasonably in asserting that Matthews infringed the patents would be premature.

The full decision is hyperlinked Matthews International Corporation v. Biosafe Engineering, LLC, September 25, 2012, Mayer, H.

We congratulate Spiro Bereveskos for his successful argument at the Federal Circuit. We also congratulate Steve Zlatos and William McKenna for writing the successful appeal brief.

Judge Leonard Davis of the Eastern District of Texas recently ordered that a patent infringement lawsuit filed against an Indianapolis based company be transferred to the Southern District of Indiana.  The lawsuit was filed following the effective date of the new joinder provisions of the America Invents Act which prevent Plaintiffs from filing large multi-defendant lawsuits.  The case involved a New York based Plaintiff and Judge Davis found that the Southern District of Indiana was clearly a more appropriate forum.  Woodard Emhardt attorneys Spiro Bereveskos and Bill McKenna are representing the Defendant.

We are pleased to announce that Woodard, Emhardt partners Thomas Henry, Spiro Bereveskos and Daniel Lueders have been named Super Lawyers for 2012. Additionally, Woodard, Emhardt associates Bill McKenna and Jim Blaufuss have been named Rising Stars for 2012. Congratulations to all!

The 2011 Midwest Intellectual Property Summit, organized by Woodard, Emhardt attorney, Holiday W. Banta, will be held November 17th and will showcase presentations on the latest research and topics of concern in the field of intellectual property.  Woodard, Emhardt attorneys presenting at the Summit include T.J. Cole, Michael Morris and Spiro Bereveskos. 

The morning session will offer an overview of the key federal court decisions from the past 12 months and an in-depth report on Indiana’s trade secret laws. Occasional copyright filers will benefit from an update and recommendations concerning the Copyright Office’s online filing procedures and new forms. Litigators and prosecutors of trademarks alike will find the presentation concerning survey best practices useful for advising clients and winning cases.

The afternoon session will include a discussion of drafting advice specific to the rapidly expanding field of agriculture and biotech patenting in the U.S. and foreign countries. Of particular interest to litigators, the Summit’s afternoon session will also feature practical tips and strategies to provide litigators with an edge in preparing for trial, including winning strategies for presenting to a jury based on the latest jury research in patent cases.

Following these presentations, panelists with experience litigating in the much-maligned, yet perennially popular, federal district court in the Eastern District of Texas will share their perspectives on how to navigate the procedures unique to this jurisdiction. The panelists will also share their insights on those litigation and settlement arrangements best suited to this court and its juries. If you ever wondered how you would respond if you got the call “we’ve been sued in the Eastern District of Texas, now what?”, then this is your chance to collect an arsenal of options and invaluable insights.

Register online today to take advantage of this exciting opportunity. Alternate locations via group webcasts are available as well. (6.25 Total CLE Units, 1.0 of which may be applied toward Ethics).

Congratulations to Woodard, Emhardt partners Tom Henry, Spiro Bereveskos, and Dan Lueders for being named Super Lawyers in The Indiana Super Lawyers, 2011 Edition.

We are pleased to announce that Woodard, Emhardt partners Thomas Henry, Spiro Bereveskos and Daniel Lueders have been named Super Lawyers for 2010. Additionally, Woodard, Emhardt associate Marta Paul has been named a Rising Star for 2010. Congratulations to all!

Congratulations to Woodard, Emhardt partners Spiro Bereveskos, Thomas Henry, Daniel Lueders and John McNett for being named Super Lawyers in The Super Lawyers Corporate Counsel Edition, August 2008.