News & Updates

Federal Circuit affirms judgment that CleanTech’s patents are unenforceable due to inequitable conduct.

March 2, 2020

GS CleanTech Corp. v. Adkins Energy LLC, No. 16-2231 (Fed. Cir. 2020)

Woodard Emhardt attorney, Spiro Bereveskos, was on the trial team and cross examined the Cantor Colburn, LLP attorney who admitted “it sent a chill up his spine” to learn the inventors had sent the offer letter more than a year before the filing of the patent application. The original suit alleged that the defendants infringed plaintiff’s family of patents relating to ethanol production processes. The ensuing litigation culminated in the Court finding that the patents were invalid and not infringed by any defendant. Those findings were further bolstered at a trial in which the Court then found the patents unenforceable due to inequitable conduct by the attorneys. Woodard Emhardt attorney Spiro Bereveskos, Dan Lueders, and Lisa Hiday represent Defendant Iroquois Bio-Energy Company, LLC.

Bill McKenna quoted in The Information, “Amazon Tests Program to Combat Patent Infringement”

April 25, 2019

Bill McKenna quoted in The Information, “Amazon Tests Program to Combat Patent Infringement.”

Amazon is testing a new program that allows merchants on its marketplace who are victimized by cheap, patent-violating knockoffs to get them removed in a few months for just a few thousand dollars or less—much faster and cheaper than a typical legal process.

“When you’re looking at counterfeits, it’s easy to tell that a Louis Vuitton purse is covered by a Louis Vuitton trademark,” said William McKenna, an intellectual property lawyer at the firm Woodard, Emhardt, Henry, Reeves & Wagner in Indianapolis. “When you’re talking about patent infringement, it’s not so simple.”

Mr. McKenna said Amazon’s new utility patent program means sellers with the patents don’t have to file lawsuits against many individual companies or wait as long as a year for an order to handle them all together, which he described as subjecting sellers to “death by a thousand cuts.”

Click here to read the full article.

Amazon Debuts New Pilot Program to Combat Utility Patent Infringement

February 12, 2019

It has become more and more routine in the past few years for a client to call Woodard, Emhardt, Henry, Reeves & Wagner, LLP regarding an infringing item being sold on Amazon.  Often the seller is new and/or located overseas.  Sending a letter to Amazon would typically trigger a standard response in which the seller’s identifying information is provided and you were asked to work it out with them.  Filing a lawsuit is extremely expensive, particularly when the seller doesn’t reside in the United States.  Moreover, filing a new lawsuit with each new Amazon listing could be cost prohibitive.  As such, there really wasn’t any quick and efficient way for deal with this type of infringement.

In the past, the most effective solution was to seek and obtain an exclusion order from the International Trade Commission, which Amazon and other online marketplaces would recognize and promptly remove infringing listings.  However, Amazon has recently launched a pilot program which is intended to resolve this situation, while giving both patent owners and sellers a fair opportunity to be heard.

The program is currently by invitation only, but we have successfully utilized it to remove dozens of infringing listings on behalf of a number of our clients.  The program allows the owner of a utility patent to submit a takedown notification against a product listed on  The takedown notification is limited to a single claim of a utility patent.  Upon receiving the complaint, Amazon notifies the seller, who has twenty-one days to contest the infringement allegation.  In order to contest, the seller must agree to a quasi-arbitration which focuses solely on the question of infringement.  In addition, the seller must submit $4,000 to a patent practitioner selected by Amazon as the neutral evaluator.  If the seller does not contest the claim of infringement, the listing is promptly removed.

Assuming the seller does contest, the patent owner must also submit $4,000 with the neutral evaluator.  The neutral evaluator then receives compact briefing over a roughly two-month period and issues a decision soon thereafter.  Amazon will either maintain or remove the listing based on the neutral evaluator’s decision.  Moreover, in the event the neutral evaluator finds infringement, that decision will control all future complaints of physically identical products.  The “winner” of the evaluation receives their $4,000 back, with the losers’ $4,000 being retained by the neutral evaluator as his/her fee.

In essence, Amazon has created a path for utility patent holders to have infringing listings removed relatively quickly without Amazon itself being forced to make the often difficult judgment calls that patent infringement sometimes requires.  The program is well suited for many of the infringing issues we deal with.  However, its simplicity will likely cause some problems when patent owners, whose infringement claims involve more complex questions, seek to enter the program.

If you have infringing items listed on Amazon and would like to learn how Woodard Emhardt can assist you in promptly and efficiently removing those items, please feel free to contact Bill McKenna.

Woodard Emhardt Obtains Order Finding Exceptional Case and Awarding Fees in Litigation of Patent for Processing Ethanol Byproducts

December 18, 2018

In a multi-district case involving 26 defendants, Judge Miller of the U.S. District Court for the Southern District of Indiana, granted the defendants’ motion for an order declaring the case exceptional and awarded attorneys’ fees. The original suit alleged that the defendants infringed plaintiff’s family of patents relating to ethanol production processes. The ensuing litigation culminated in the Court finding that the patents were invalid and not infringed by any defendant. Those findings were further bolstered at a trial in which the Court then found the patents unenforceable due to inequitable conduct by the attorneys. In consideration of the Court’s previous holdings, Judge Miller reasoned that the defendants had shown that this case was exceptional and appropriate for fees. Woodard Emhardt attorneys Spiro Bereveskos , Dan Lueders, and Lisa Hiday represent Defendant Iroquois Bio-Energy Company, LLC.

Woodard Emhardt Obtains Dismissal of Trademark Infringement Complaint

May 19, 2016

Judge Stivers of the U.S. District Court for the Western District of Kentucky recently ordered that a trademark infringement lawsuit filed against operators of historical horse racing games by numerous prominent race tracks should be dismissed. The suit alleged that the defendants infringed upon the Plaintiffs’ trademarks by using the racetracks’ names to identify the location where historic horse races had taken place. The Court reasoned that the defendants were “fully within their rights to describe where an event took place in their wagering system without implying the owners of the racetrack are sponsoring the game…” Moreover, the court found that the defendants were protected by the fair use defense when describing where an event took place, even when the location described is most commonly conveyed using a registered trademark. Woodard Emhardt attorneys Spiro Bereveskos and Bill McKenna are representing the Defendants.

Woodard Emhardt Obtains Dismissal of Patent Infringement Complaint Under Section 101

May 12, 2016

Judge Stivers of the U.S. District Court for the Western District of Kentucky recently ordered that a patent infringement lawsuit filed against operators of historical horse racing games should be dismissed as the three patents asserted failed to claim patent eligible subject matter under 35 U.S.C. 101. In dismissing all three infringement claims, the Court wrote “[Plaintiff]’s patents encompass subject matter facially unpatentable under Section 101. The only plausible reading of the ‘150, ‘887, and ‘737 patents reflects that they are ineligible for patent protection. The Asserted Patents are abstract ideas, and [plaintiff] has failed to demonstrate an inventive concept required to transform these claims into patentable subject matter within the meaning of Section 101. Thus, the claims asserted in the Amended Complaint must be dismissed.” The opportunity for companies facing the threat of infringement from patent holders to obtain either invalidate those patents or obtain prompt and efficient dismissal such as this in litigation has significantly increased following the Supreme Court’s decision in Alice. Woodard Emhardt attorneys Spiro Bereveskos and Bill McKenna are representing the Defendants.

Woodard Emhardt Obtains Order Transferring Patent Case out of the ED of Texas

September 28, 2012

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.

Seventh Circuit Court of Appeals Proposes New Standards For Awarding Attorneys’ Fees in Trademark Infringement Suits

May 4, 2011

15 U.S.C. §1117(a) allows attorneys’ fees to be awarded to prevailing parties in federal Lanham Act suits (brought primarily for trademark infringement) — but only in “exceptional cases.”  So what constitutes an exceptional case?  Are the various Circuit courts in agreement?  Richard Posner, writing on behalf of the Seventh Circuit Court of Appeals, attempted to answer these questions in Nightingale Home Health Care, Inc. v. Anodyne Therapy LLC, No. 10-2327 (7th Cir. Nov. 23, 2010).

As background, Nightingale, a provider of home healthcare services, had purchased several infrared lamps from Anodyne.  The lamps were FDA-approved for relieving minor muscle and joint pain and improving superficial circulation, but not for treating peripheral neuropathy.  In the lawsuit, Nightingale claimed that an Anodyne sales representative falsely represented that the lamps had been approved by the FDA for treating peripheral neuropathy.  Later, Nightingale replaced Anodyne’s lamps with virtually identical lamps from another supplier, apparently for price-related reasons unrelated to the scope of the FDA’s approval.  The district court found that Nightingale had made the Lanham Act claim in an attempt to coerce a price reduction from Anodyne.  After Anodyne successfully defended against Nightingale’s suit, the district judge granted Anodyne’s request for attorneys’ fees in the amount of $72,747.  On appeal, Nightingale argued that the case was not “exceptional.”

Judge Posner reviewed the standards for exceptionality in the various Federal Circuits and noted:

• The Fourth, Sixth, Tenth and D.C. Circuits apply different tests depending on whether it was the plaintiff or the defendant who prevailed.  In the Fourth and D.C. Circuits, a prevailing plaintiff is entitled to attorneys’ fees if the defendant’s infringement was in bad faith.  A prevailing defendant can qualify for attorneys’ fees for “something less than bad faith” by the plaintiff.  Examples are economic coercion, groundless arguments, and failure to cite controlling law.  In the Tenth Circuit, a prevailing plaintiff has to prove the defendant acted in bad faith, while a prevailing defendant need only show (i) lack of any foundation for the lawsuit; (ii) the plaintiff’s bad faith in bringing suit; (iii) the unusually vexatious and oppressive manner in which it was prosecuted; or (iv) “perhaps other reasons as well.”  In the Sixth Circuit, a prevailing plaintiff must prove the defendant’s infringement was “malicious, fraudulent, willful or deliberate.”  A prevailing defendant must prove the plaintiff’s suit was “oppressive” (quoting the Tenth Circuit factors).

• In the Second, Fifth and Eleventh Circuits, prevailing defendants and prevailing plaintiffs must prove that their opponent litigated in bad faith or — when the defendant is the prevailing party — that the suit was a fraud.  The Fifth Circuit adds that a court should “consider the merits and substance of the civil action when examining the plaintiff’s good or bad faith.”

• The First, Third, Eighth and Ninth Circuits (like the Second and Eleventh Circuits) make no distinction between prevailing plaintiffs and prevailing defendants.  However, a showing of bad faith is not necessarily required.  Willfulness short of bad faith or fraud will suffice.

Prior to Nightingale, the Seventh Circuit was starting to show its own incongruity.  Initially, in Door Systems, Inc. v. Pro-Line Door Systems, Inc., 126 F.3d 1028 (7th Cir. 1997), another Posner-written opinion, the Court asked whether the conduct of the party from which attorneys’ fees was sought had been “oppressive”.  Regarding a plaintiff’s suit, the answer would turn on whether the suit “was something that might be described not just as a losing suit but as a suit that had elements of an abuse of process, whether or not it had all the elements of the tort.”  A different test was set forth for “oppressive” conduct by a defendant.  In that instance, the question turned on “whether the defendant had lacked a solid justification for the defense or had put the plaintiff to an unreasonable expense in suing.”

Subsequently to Door Systems, in S Industries, Inc. v. Centra 2000, Inc., 249 F.3d 625 (7th Cir. 2001), a non-Posner-written opinion, the Court said that oppressive conduct by plaintiffs would be conduct that “lacked merit, had elements of an abuse of process claim, and plaintiff’s conduct in the litigation unreasonably increased the cost of defending against the suit.”  Also, it said a finding that a suit was oppressive could be “based solely on the weakness” of the plaintiff’s claims (e.g., malicious prosecution).

Subsequently to S Industries, in TE-TAMA Truth Foundation-Family of URI, Inc. v. World Church of the Creator, 392 F.3d 248 (7th Cir. 2004), a non-Posner-written opinion, the Court said that oppressive conduct by defendants includes not only willful infringement of the plaintiff’s trademark, but also “vexatious litigation conduct” and that oppressive conduct by plaintiffs also includes “vexatious litigation conduct.”

In Nightingale — which can only be described as a righting of the ship with Posner at the helm — the Seventh Circuit essentially returned to Door Systems and concluded that “a case under the Lanham Act is ‘exceptional,’ in the sense of warranting an award of reasonable attorneys’ fees to the winning party, if the losing party was the plaintiff and was guilty of abuse of process in suing, or if the losing party was the defendant and had no defense yet persisted in the TM infringement or false advertising for which he was being sued, in order to impose costs on his opponent.”

In order to avoid an elaborate inquiry into the state of the mind of the party from which reimbursement is sought, Judge Posner added that it should be enough to justify the award “if the party seeking it can show that his opponents claim of defense was objectively unreasonable — was a claim or defense that a rational litigant would pursue only because it would impose disproportionate costs on his opponent — in other words only because it was extortionate in character, if not necessary in provable intention.”

For context, Posner reviewed the legislative history of the Lanham Act yet offered a “more practical concern” which is essentially protecting and enhancing competition in the marketplace.  In this case, Nightingale was said to impair competition in the marketplace by filing a Lanham Act claim with no possible merit.  It misused the legal process primarily to accomplish a purpose for which it was not designed — to compel the victim to yield on some matter not involved in the suit.  Specifically, it made the claim in an attempt to coerce a price reduction from Anodyne.

In addition to affirming the judgment in District Court, the Seventh Circuit also granted Anodyne’s motion for fees and costs for the appeal.

Even adhering to the various tests set forth by the Circuit courts, it is generally considered quite difficult to obtain an award of attorneys’ fees in trademark infringement lawsuits.  Therefore, it is important to have an experienced trademark litigator review your case and devise an appropriate strategy before initiating a lawsuit.      

Please contact us if you would like to learn more about the Nightingale case or discuss any aspect of trademark litigation.

Irreparable Harm in Preliminary Injunctions and Inevitable Disclosure

December 3, 2010

This presentation includes a discussion of the state of the law regarding preliminary injunctions in trademark infringement cases.  It also examines similar issues with respect to trade secret infringement, particularly as they relate to the doctrine of inevitable disclosure.  Click here to download a copy of this presentation.


Case Law Update: Inequitable Conduct Law Continues to Evolve

June 30, 2010

In a recent decision, the Federal Circuit ruled a company’s patent unenforceable due to the inequitable conduct committed by the company’s non-inventor president. As background, Avid’s founder and president, Dr. Hannis Stoddard, hired three engineers to develop a product based on his idea of identifying and processing recovered animals. Dr. Stoddard was not an inventor on the patent that ultimately issued, but he did demonstrate an early version of the technology at a trade show more than a year prior to the filing date of the issued patent. This demonstration was not disclosed to the United States Patent and Trademark Office (“USPTO”) during prosecution of the patent, and Dr. Stoddard did not dispute that this information was withheld with specific intent to deceive the USPTO for the purposes of obtaining a patent. He argued that he was neither an inventor nor an attorney and therefore owed no duty of candor to the USPTO; however, the district court disagreed and found Avid’s patent unenforceable for inequitable conduct committed by Dr. Stoddard.

The regulations governing inequitable conduct are provided by 37 C.F.R. §1.56 (“Rule 56”), which imposes a duty to disclose information to the USPTO when an individual is (1) associated with the filing and prosecution of a patent application, and (2) knows that the information in question is material. For purposes of identifying who owes a duty of candor to the USPTO, Rule 56 defines “individual(s) associated with the filing or prosecution of a patent application” as (1) each named inventor, (2) each attorney or agent that prepares or prosecutes the application, and (3) every other person who is substantively involved in the preparation or prosecution of the application and who is associated with the inventor or assignee. 37 C.F.R §1.56(c).

Dr. Stoddard is neither an inventor nor an attorney or agent involved in the preparation or prosecution of the patent, so the issue of whether or not he owed a duty to candor to the USPTO involved an analysis of whether or not he was “substantially involved” in the preparation or prosecution of the patent, and whether or not the prior demonstration was material to patentability.

With respect to “substantially involved,” the Federal Circuit identified a number of factors in affirming the ruling of the district court that Dr. Stoddard met this requirement. Some of these factors included his position and responsibilities in the company, his involvement in hiring the engineers/inventors to develop the product, and his communication with the inventors during prosecution of the patent in Europe.

With respect to materiality, the Federal Circuit dismissed Avid’s argument that the demonstration was not material to the patentability of the claims even though it would not have lead to a proper §102(b) rejection by the USPTO. Indeed, the demonstration involved a preliminary product that failed to contain all of the elements of the issued patent claims. Moreover, an infringement jury was given information regarding the demonstration and still found the patent valid. However, the court reasoned that the demonstration, while not invalidating, was the closest prior art and was thus material. By doing so, the court relied on the “reasonable examiner” standard, which was written out of the old Rule 56 (i.e., prior to the 1992 amendments). The current Rule 56 is much more objective and likely would have found this demonstration non-material to patentability.

The Federal Circuit thus affirmed the lower court’s ruling that Avid’s patent was unenforceable for inequitable conduct committed by Dr. Stoddard. This case seems to be a close call, and it certainly didn’t help that Dr. Stoddard purposefully withheld the information knowing that it would likely have some impact during prosecution. If anything, this case serves as a reminder to submit any relevant information to the USPTO even if the person aware of this information is only remotely involved in the preparation and prosecution of a patent application.

See Avid Identification Sys. v. Crystal Import Corp., No. 09-1216 (Fed. Cir. April 27, 2010).

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