January 31, 2019
The Firm is proud to recognize our attorneys who have been selected for inclusion in the 2019 Indiana Super Lawyers® and Rising Stars lists.
The Woodard Emhardt attorneys have consistently been listed as Super Lawyers® in these primary practice areas:
- Spiro Bereveskos – Intellectual Property Litigation, Intellectual Property
- Selected to Super Lawyers® 2006 – 2019
- Thomas Q. Henry – Intellectual Property, Intellectual Property Litigation
- Selected to Super Lawyers® 2004 – 2019
- Daniel J. Lueders – Intellectual Property Litigation, Intellectual Property
- Selected to Super Lawyers® 2004 – 2019
In addition, William A. McKenna has been named to the Rising Stars list in the areas of Intellectual Property Litigation and Intellectual Property since 2012.
The Super Lawyers® list recognizes outstanding attorneys who are selected using a patented, multi-phase process that considers factors such as peer recognition, professional achievement and high ethical standards. No more than 5% of the attorneys in Indiana receive this honor each year.
Attorneys named to the Rising Stars list are selected using the same process, with the exception that only those who are 40 years old or younger or who have been in practice for 10 years or less are eligible. No more than 2.5% of the attorneys in the state are named to the Rising Stars list.
January 25, 2019
Earlier this month, the United State Patent and Trademark Office released new guidance for its Examiners to help them better determine when an invention is too abstract to be patentable. This latest effort by the Patent Office brings more clarity and predictability to the examination process for inventors seeking patent protection for software and business methods.
To be patentable, an invention must be new, useful, and unobvious. The courts have also recognized that abstract ideas and laws of nature are also not eligible for patent protection. Predicting which inventions are too abstract for patent protection has been a challenge in the past, and has become more difficult since the Supreme Court’s ruling in Alice Corp. v. CLS Bank (March, 2014). The Court of Appeals for the Federal Circuit has so far attempted to follow the Supreme Court’s guidelines on a case by case basis giving us clues as to the kinds of inventions that are too abstract to be patented. This effort has created some clarity in specific cases, but it has also created additional confusion where the Federal Circuit has given differing opinions for similar inventions. This raises the possibility that different Examiners in the same technology area may pick and choose how to handle similar inventions thus arriving at different conclusions for similar subject matter.
The Patent Office has responded with this latest guidance for the Examiner corps that attempts to synthesize the case law into a more practical legal framework that may be applied in a more predictable manner. Although they do not have the force of law, the guidelines offer valuable insights into how Examiners will determine whether the subject matter in a given application is unpatentably abstract.
Looking briefly at the substance of the latest guidance, the USPTO is revising its examination procedure by: (1) Providing groupings of subject matter that it considers to be an abstract idea; and (2) clarifying that a claim is not ‘‘directed to’’ a judicial exception if the judicial exception is integrated into a practical application of that exception.
On the first point, the Patent Office sees three separate categories of material that are unpatentably abstract:
- Mathematical Concepts: Mathematical relationships, mathematical formulas or equations, mathematical calculations
- Methods of Organizing Human Activity: Fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions)
- Mental Processes: Mental processes—concepts performed in the human mind (including an observation, evaluation, judgment, opinion).
According to the guidelines, concepts that do not fit one of these categories are probably not abstract ideas. The Patent Office does leave open the possibility that exceptional cases could arise where the concept is too abstract to be patented, but also does not fit into one of these categories.
On the second point, the Patent Office explains that even if the claims do fall within one of the three groupings above, they may still be eligible for patent protection if the abstract concept is integrated into a practical application of that concept. A “practical application” is one that applies, relies on, or uses the concept “in a manner that imposes a meaningful limit on the abstract concept.”
The new guidance represents a noteworthy change in the way applications will be handled by Examiners, and it marks the latest attempt by the Patent Office to bring clarity and predictability to the process. It is also important to note that this is not a change in the statute approved by Congress, nor is it a change to the legal framework that has been endorsed by the Federal Circuit or the Supreme Court. It remains to be seen then, what the long-term effect of this change will be on applications currently under examination, and what affect, if any, it will have on patent litigation going forward.
January 7, 2019
The Firm is pleased to announce that Charles Reeves and Vincent Wagner have been recognized as named partners of the firm, which has changed its name to Woodard, Emhardt, Henry, Reeves & Wagner, LLP. Woodard Emhardt also congratulates Matthew Gardlik, Ph.D., Joshua Astin and Blake Hartz who have been elected to the firm’s partnership and is pleased to share that John McNett will continue with the firm as Senior Counsel.
The firm name change recognizes Mr. Reeves’ and Mr. Wagner’s significant contributions to the firm and outstanding service and results they have achieved for our clients over the years. Their leadership will help ensure the continued success of the firm which celebrates its 140thAnniversary this year.
Mr. Reeves joined the firm in 1976 and has represented a broad range of clients from individuals and start-up businesses to national and international corporations. His experience includes litigation, domestic and international prosecution, strategic planning and managing IP portfolios, and evaluating validity, coverage and right-to-use issues in connection with opinion, transactional and other business-related work.
Mr. Wagner joined the firm in 1978 and has represented clients in a wide range of matters, including patent, trademark, copyright, and trade secret litigation, patent interference and trademark oppositions, foreign and domestic patent and trademark prosecution, counseling and opinions, mediations and settlement negotiations, and licensing.
Dr. Gardlik is extensively involved in all aspects of patent prosecution and litigation. He has successfully prepared and prosecuted inventions in a wide variety of technologies including chemical, pharmaceutical, medical device, and diagnostic technologies. His litigation experience includes the successful defense of a retaliatory trade secret misappropriation claim and he continues to represent the plaintiff in the earlier-filed patent infringement suit including in the successful defense of thirteen associated Inter Partes Review proceedings at the USPTO.
Mr. Astin specializes in U.S. and foreign patent preparation and prosecution for a variety of technologies including: tissue engineering, stem cells, implantable medical devices, and genetic sequence listings. His patent experience includes patentability analysis, freedom to operate analysis, as well as licensing and agreement work.
Mr. Hartz focuses his practice on intellectual property litigation in both federal court and administrative proceedings at the USPTO, having represented clients in patent, trademark, and trade secret cases in courts across the country, various trademark opposition/cancellation actions, and more than a dozen patent Inter Partes Review proceedings. He has worked on all stages of disputes, from pre-filing investigations through appeal, and also maintains active patent and trademark prosecution dockets, including serving as U.S. counsel for overseas companies and attorneys.
The firm congratulates our new named partners and our newest partners and looks forward to building on Woodard Emhardt’s 140 years of protecting and defending client’s creative and intellectual assets.
