William A. McKenna

USPTO Releases New Guidelines on Patent Subject Matter Eligibility Following Alice Corp.

December 19, 2014

On December 16, 2014, the USPTO released its interim guidance (2014 Interim Guidance on Patent Subject Matter Eligibility) for use by USPTO personnel in determining subject matter eligibility under 35 U.S.C. 101. The new guidance was prepared in view of recent decisions by the U.S. Supreme Court, including the decision regarding the patentability of computer implemented inventions in Alice Corp. In referencing Alice Corp., the guidance states that something more is required “beyond generally linking the use of the judicial exception to a particular technological environment” to warrant a patent. However, the guidance does not make clear when that link transitions to “an improvement to another technology or technical field” which warrants patent protection.

The USPTO is seeking comments on the guidance and its application is still yet to be seen, however, this is yet another step in applying the Supreme Court’s recent analyses.

For more information, the full text of the guidance may be reviewed here.

Continued Success for Firm Sponsored FIRST Robotics Crossroads Regional at Rose-Hulman

March 13, 2014

Rose-Hulman Institute of Technology hosted the FIRST Robotics Crossroads Regional for the second time March 6th-8th. Woodard, Emhardt, Moriarty, McNett and Henry LLP, a proud sponsor of this event since its inception, congratulates the winning teams and applauds all the students for their ingenuity and hard work. Bill McKenna, a partner at the firm, helped judge the three-day competition.

The FIRST® Robotics Competition (FRC) is a union of sport and mind, introducing high school aged innovators to real-world robotics challenges while promoting the value of education in STEM fields. FRC teams comprised of high school students and a handful of engineer-mentors design and build the robots in six weeks from a common set of parts, with the hopes of winning at various regional competitions.

This year’s Crossroads Regional included robots designed and constructed by teams from 45 high schools from nine states across the Midwest. The team’s robots were designed to play Aerial Assist, a game which requires that the robots cooperate in moving color coded exercise balls across a 25 by 54 foot playing field and into ground level and elevated scoring goals. The teams competed against one another in front of a crowd of more than 2,200 people.

Also attending this year’s event was Eighth District U.S. Rep. Larry Bucshon (R-Indiana), who visited with teams, observed the competition, and spoke at the FIRST® Robotics supporter’s luncheon.
More details of the event can be found here.



Woodard Emhardt Attorneys Recognized in Indiana Super Lawyers 2014 Edition

February 27, 2014

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.

Patent Litigation Reform Again a Hot Topic in Congress

September 25, 2013

Right before the August recess, both chairmen of the House and Senate Judiciary committees committed to introducing omnibus patent reform bills addressing patent troll abuses when Congress returns in September. House Judiciary Chairman Bob Goodlatte recently released a second draft of his proposed legislation, which he states will attempt to target “abusive” patent litigation. While the bill has not been formally introduced, it is expected soon.

For example, the Goodlatte bill would create a presumption that the prevailing party is entitled to its attorney fees and costs in a patent lawsuit. Further, to prevent patent holding companies from avoiding this provisions by being thinly capitalized, a new provision (§299(d)) would allow such a recovery from “interested parties.” However, this provision is not clear as to who would qualify, as it excludes contingent fee attorneys and any equity owner(s) of the patent. Ultimately, while providing defendants with strong ammunition against patent trolls, such a provision would also likely have a severe chilling effect on justifiable litigation by smaller businesses.

Other proposed changes include (1) raising the pleading standard in patent cases to include an identification of the asserted claims and the allegedly infringing activity, (2) severely limiting pre-claim construction discovery , and (3) automatically staying suits against a party’s customers when the manufacturer is actively involved in litigation with the patent holder.

With apparent bipartisan support, including the expected support of President Obama who last month issued a set of executive actions including stopping patent trolls, we may see some additional form of patent litigation reform in this session, provided that all of the bills being considered can be harmonized.

State Attorney General Stops Patent Troll in Minnesota

September 12, 2013

In what is likely a first of its kind settlement, MPHJ Technology Investments, LLC, who is commonly referred to as a patent troll, has reportedly agreed to “cease its patent enforcement campaign” in Minnesota. The agreement also reportedly restricts future assertion of MPHJ’s patents by any future entity as MPHJ agreed that it would not assign the asserted patents to any third-party unless the acquiring party agrees to be bound by terms of the settlement.

The settlement was allegedly initiated following an investigation into a large number of similar letters from MPHJ which were sent to businesses in Minnesota threatening patent infringement. The letters allegedly were not based on any investigation of the businesses’ activities and lacked specifics regarding the infringement claim. Not surprisingly, the letters did offer to resolve the asserted claims in exchange for modest monetary payments. You may have even received on of these letters yourself, or know of someone who did, as the letters claimed that the MPHJ patents covered the use of a scanner or copier for scanning a document for attachment to an e-mail and sought a fee of around $1,000 per employee.

The recent acts by the Minnesota Attorney General may reflect a new and growing trend in combating patent trolls, whereby the states, in their role of protecting consumers, steps in to fight off patent trolls who are over-asserting their patent rights, rather than attack the patent on the merits. This of course would be bad news for patent trolls, who often seek to leverage the prospects of being forced to defend a lawsuit in order to obtain a quick and modest settlement without reaching the merits of the case. Recently, in a similar attempt to combat patent trolls, New Hampshire launched similar investigations into the activities of MPHJ and Vermont passed the first law seeking to provide defendants who are sued by alleged patent trolls with stronger remedies.

President Obama Overturns ITC Ban on Certain iPhone and iPads

August 7, 2013

As part of the ongoing patent battles between Apple and Samsung, Samsung recently won a ruling by the International Trade Commission (ITC) that the importation of Apple’s iPhone 4, 3GS, and 3 as well as iPads and iPad 2s infringed one of Samsung’s patents on wireless communications. As a result, the ITC ordered that the future importation of the infringing Apple products be banned. Notably, Samsung had asserted four patents, but lost on three of them.

However, before the ban could take effect, the President’s Administration stepped in and overturned the impending ban. In a letter outlining the decision, Ambassador Michael Froman, the U.S. trade representative, cited “substantial concerns” about “patent hold-up,” in which companies use a patent to gain “undue leverage” over use of technologies. He also noted that wireless communications technology standards, some of which are covered by patents, “have come to play an increasingly important role in the U.S. economy.”

While perhaps shifting leverage in negotiations, the President’s action will not stop the dispute between Apple and Samsung from continuing to play out in Court and behind the scenes.

Huge Success for Firm Sponsored FIRST Robotics Crossroads Regional

April 8, 2013

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.

Woodard Emhardt Attorneys Recognized in Indiana Super Lawyers 2013 Edition

February 14, 2013

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.

Firm to Sponsor First Robotics Crossroads Regional

January 14, 2013

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 4th through 5th 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.

David J. Kappos to Step Down as Director of the USPTO in January 2013

November 28, 2012

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.

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