William A. McKenna

In this year’s FIRST Robotics Crossroads Regional, robots designed and constructed by students of 50 high schools across seven Midwest states competed against one another in front of a crowd of more than 2,200 people. Armed with robots designed to shoot discs into goal slots at the ends of a 54 foot playing field, both autonomously and under human control, teams from Carmel, Connersville, Indianapolis, and Lafayette, Indiana qualified to compete at the national level and at the FIRST Robotics World Championships.

Woodard, Emhardt, Moriarty, McNett, and Henry LLP, a proud sponsor of this year’s event, congratulates the winning teams and applauds all the students for their ingenuity and hard work. William McKenna, a partner at the firm, helped judge the three-day competition held April 4th -6th at Rose-Hulman Institute of Technology in Terre Haute, Indiana. This competition, and the success of all the teams from Indiana, shows the positive impact from the State’s and industries’ efforts to improve interest and education in math and science.

More details of the event can be found here.

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.

Woodard, Emhardt, Moriarty, McNett, and Henry LLP is proud to sponsor the FIRST Robotics Crossroads Regional, an annual tournament held at Rose-Hulman Institute of Technology.  William McKenna, a partner at the firm, will also be a judge in the competition.  The event will be held April 4^th through 5^th at the Rose Hulman Sports and Recreations Center.

The event features teams of high school students who work alongside engineers and other industry professionals to design, build, and program a robot to compete against robots from other teams in a sports-like game.  Teams can win awards for creating business plans, developing cohesive team “brands,” cooperating with other teams, forging suitable initiatives, and enhancing civic awareness and passion for science, technology, engineering, and math.

The director of the United States Patent and Trademark Office (USPTO) announced earlier this week he will leave the position in January 2013 after holding the position for more than three years. During his tenure, Kappos oversaw the implementation of broad changes to the country’s patent system, including those required by the America Invents Act. Also during this time, the USPTO cut the backlog of unexamined patents from over 750,000 to approximately 605,000, despite an average increase of 5 percent in applications each year. It also reduced the amount of time that it takes to receive a first action on a patent application from 27 months to about 16 months.

Director Kappos made the following statement through the patent office communications staff:

“I believe we have made great progress in reducing the patent backlog, increasing operational efficiency, and exerting leadership in IP policy domestically and internationally … Thanks to the entire USPTO staff for their dedication and hard work. I wish them the very best as they continue their efforts to support the U.S. economy by promoting and protecting innovation.”

The White House has not named a replacement for Kappos.

You’ve probably heard this story before.  A little known patent holder begins a licensing campaign sending letters to hundreds of companies letting them know that they need a license to its patent.  The letters continue and offer discounts for early licensees and say that they hope to avoid the need for litigation.  The companies who receive the letters are confused as the product which supports the alleged infringement was purchased from another company.

It’s a common strategy employed by some patent holders, and often those referred to as non-practicing entities (NPEs) or patent trolls.  The goal is to impose uncertainty and the threat of large legal costs upon a large number of established companies and hopefully obtain many small settlements in lieu of litigation as opposed to going after the vendor who provides the product.

Cisco, and more specifically its customers, were recently the target of such an effort by Innovatio IP Ventures, LLC, a company which acquired several wireless networking patents.  However, rather than deal with its own indemnification obligations on a case by case basis, Cisco has chosen to taken an aggressive stance in filing a lawsuit claiming that Innovatio is guilty of racketeering based upon its sending of over 8,000 letters to coffee chains, hotels, and other retailers who use Cisco’s equipment or comparable Wi-Fi equipment.  Cisco claims the letters are nothing more than extortion as Innovatio based many of its claims for infringement upon patents which had already expired as well as upon patents to which Cisco’s products were already licensed.

In order to prevail, Cisco will be forced to prove its allegations and Innovatio’s knowledge of them.  While many commentators believe this will difficult, the fact that Cisco has turned the tide on Innovatio, forcing it to now defend its actions, just as it sought to do to Cisco’s customers, is an interesting development and will no doubt be interesting to observe going forward.

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.

Woodard, Emhardt associate William McKenna was a member of the most recent graduating class of the Indianapolis Bar Association’s Bar Leader Series. Twenty five attorneys from Indianapolis area firms were selected to participate in the Bar Leader Series based on their dedication to the Indianapolis community and to the legal profession. Various activities and events offered the distinguished participants the opportunity to sharpen their leadership, teamwork, and communication skills through interactive sessions with marquee professionals from a broad spectrum of backgrounds besides the legal profession. Class members also developed their leadership skills by working together to complete public service projects.

Congratulations Bill!

Woodard, Emhardt is hosting “E-Day” (Evaluation Day) for Ball State University’s Entrepreneurship Program on May 1, 2012.

Ball State’s Entrepreneurship Program has been nationally ranked in the top ten for about a decade. During “E-Day,” seniors majoring in entrepreneurship present their business plans to a panel of three judges who decide whether a student passes or fails out of the program. The pool of judges includes business people, attorneys, and members of Indiana’s venture capital and entrepreneurship communities. Woodard, Emhardt wishes good luck to all of the participating students!

Woodard Emhardt congratulates Common Sense Dental whose patented EndoPoint product was recently recognized by Dentistry Today’s Readers’ Choice Top 25 Endodontic Products of 2012.

 The EndoPoint product is covered by U.S. Patent 6,520,773, which Woodard Emhardt obtained for Common Sense Dental in 2003.  For more information on the EndoPoint product and Common Sense Dental’s other products, please visit their website located at http://commonsensedental.com/.