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Attorneys enjoyed an evening shooting at Shoot Point Blank in Carmel

February 21, 2019

Woodard Emhardt attorneys enjoyed an evening shooting at the Shoot Point Blank gun range in Carmel, Indiana.  After a safety training, our attorneys shot a range of rifles and handguns–some manufactured by clients of the firm.


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 Amazon.com.  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, Henry, Reeves & Wagner, LLP Attorneys Selected for Inclusion on 2019 Indiana Super Lawyers® & Rising Stars Lists

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.


USPTO Gives New Guidance on Software Inventions

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:

  1. Mathematical Concepts: Mathematical relationships, mathematical formulas or equations, mathematical calculations
  2. 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)
  3. 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.


Woodard, Emhardt, Henry, Reeves & Wagner, LLP Announces Name Change and Promotes Three to Partnership

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.


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.


Is a Taco a Sandwich? This IP Question Isn’t Patently Absurd By Chris Brown

December 12, 2018

We are all aware that sometimes things just don’t fall neatly into categories. Is it “nature” or “nurture”? Is my legal issue more in tort or in property, common law, statutory or Constitutional areas?

We all know that intellectual property law is commonly divided into several easily definable “buckets.” Patents concern inventions, whether machines, compositions of matter, methods or designs. Copyrights protect original works fixed in a tangible medium of expression. Trademarks are words, logos or other “devices” that serve to identify the source of a product or service. Each of these property concepts have particular rules governing what subject matter they apply to, when they come into existence, and what activities by others with respect to them are actionable.

I was reminded recently of a client who came to see me with drawings of a chair he had designed, and he wanted to protect it. Since he was an architect, he immediately thought of copyright — he considered the chair to be essentially an article of sculpture, with his particular design of the arms, legs and back the expression that was fixed in the tangible wood of the chair. As we looked at the design and mulled over the possible ways others might find value in it, it became clear that the chair might fit into multiple IP buckets — or perhaps none at all.

The copyright law broadly defines the subject matter it protects, as noted above: any original expression (e.g. art, words, music) that is fixed (e.g. in canvas, on a page, in a disc or other recording medium). But it also carves out a large exception for features of a “useful article,” such as a chair. Those features may have copyright protection if they “can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.” 17 U.S.C. §101 (quoted in Star Athletica, LLC v. Varsity Brands, Inc., 137 S.Ct. 1002, 1005 (2017)). Separate identification means that one “need only … spot some two- or three-dimensional element that appears to have pictorial, graphic, or sculptural qualities.” Id. at 1010. Independent existence requires a determination that the particular feature can “exist apart from the utilitarian aspects of the article.” Id. In context, the question is whether the feature could be removed from the first medium and applied to another medium, without replicating the first medium itself. Id. at 1012.

In the case of the chair, it may be easy to see a particular decorative groove pattern, a clawed foot or a stained or painted decoration as a part of the chair. Separate identification of these features, as sculpture, graphics or pictures apart from the chair, is straightforward. But in the case of the groove pattern or the clawed foot, the much harder question is whether duplicating that pattern requires the utilitarian element of the chair — the foot, arm or back rest — in order to exist. In my experience, the Copyright Office generally takes a narrow view of the independent existence question, requiring not only a specific identification of the features the claimant considers worthy of protection, but a full explanation of how those features can exist without the underlying article.

Turning to the Lanham Act, the design of a product can itself qualify for trademark protection (commonly referred to as protectable “trade dress”) so long as it has “a distinctiveness which serves to identify the product with its manufacturer or source.” Traffix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 28 (2001). That distinctiveness must be proven by the claimant through evidence such as long and exclusive use, advertising that directs consumers to the product design, and surveys of consumers tending to demonstrate that they recognize the design as coming from a single source. Even if that burden is met, however, “trade dress protection may not be claimed for product features that are functional … [and we have] noted that product design almost invariably serves purposes other than source identification.” Id. at 29 (internal quotation marks and citations omitted). Lanham Act protection for a chair design or some of its features is thus possible, but requires substantial time, commitment and expense. The characteristic shape of the Coca-Cola bottle is protected, and has been registered with the U.S. Patent and Trademark Office, but only with proof acquired over time of the distinctiveness and non-functionality of the design.

Of course, for many, patents are the first protection that comes to mind for a product. A utility patent can protect the structure of the device or methods of making or using it. However, just because the client has not found the product on the shelf or online, does not mean that a patent is available. The product (or particular features of it) are compared to prior knowledge in that field of endeavor to see if the “new” product represents a true invention, a move forward in the relevant technology. For a chair, one might imagine the extreme range and depth of available information, over hundreds of years, pertinent to chairs and other furniture. Early in my career, a client proposed a therapeutic candle impregnated with her selection of substances, which would be released as the candle burned. No such item was available, as far as we could find — but there was a wealth of relevant, and patentability-destroying, information in 19th-century patents and products.

Design patents can provide an answer to a new product that is not a sufficient technological advance for a utility patent, does not have the distinctiveness of protectable trade dress, and does not meet the copyright law’s independent existence test. Only the ornamentation or artistic design of the product is assessed for patentability, and only that ornamentation is protected. Thus, competitors may offer a product that looks sufficiently different but performs the same task. Nevertheless, assuming the design is inventive, a client can obtain a patent and market its product as “patented” over the 14-year life of the design patent. Further, the design patent may provide the opportunity for the client to begin asserting the design in marketing and developing evidence of the distinctiveness that might be used later to obtain trademark rights or a registration of the product design.

The exemplary chair could have aspects that fit into any of the intellectual property categories. It could also be protectable by none of them, and only strong competitive effort will make and keep it successful in the marketplace. Exploring all avenues gives the client the best opportunity for protection suitable to his or her needs and goals.


Attorneys and Families Take a Trip Down Sugar Creek

August 13, 2018

Woodard Emhardt attorneys enjoy canoeing with family on Sugar Creek in Montgomery County. Weather cooperated by providing enough water in advance to move the canoes along the creek. Perfect conditions for the day were dry and a bit overcast and a great time was had by all. A picnic lunch rounded out the excursion.

Trip Down Sugar Creek


FlightAware and Aireon’s GlobalBeacon Product To Test Real-Time Global Aircraft Tracking

June 19, 2018

Beginning in November 2018, Woodard, Emhardt, Moriarty, McNett & Henry (WEMMH) client FlightAware, along with Aireon, will utilize their revolutionary GlobalBeacon product to test real-time tracking of global aircraft. Airlines and aircraft operators will be expected to track their fleet globally at a frequency of one position every 15 minutes during normal operations. By 2021, they will be required to automatically receive positions once every minute for aircraft in distress.

GlobalBeacon provides the most simple and cost-effective solution for the International Civil Aviation Organization (ICAO) Global Aeronautical Distress Safety System (GADSS). By combining FlightAware’s data processing platform and web-interface with Aireon’s space-based ADS-B network, GlobalBeacon transcends borders and Flight Information Regions (FIRS) and provides 100% global coverage, including over deserts, polar airspace and oceanic regions. Therefore, airlines and aircraft operators are able to exceed GADSS standards and recommended practices for flight tracking.

Aircraft equipped with ADS-B Out transponders are tracked automatically with their position broadcast in real-time. Since ADS-B Out 1090MHz is mandated throughout the world, most aircraft do not require additional equipment to take advantage of GlobalBeacon.

FlightAware is the world’s largest flight tracking data company and provides over 10,000 aircraft operators and service companies, as well as over 12,000,000 passengers with global flight tracking solutions. FlightAware leverages data from air traffic control systems in over 55 countries, from its network of ADS-B ground stations in over 175 countries, from Aireon space-based global ADS-B, and using global datalink (satellite/VHF) via every major provider, including ARINC, SITA, Satcom Direct, Garmin, Honeywell GDC, and UVdatalink.

The FlightAware HyperFeed™ engine’s seamless integration of thousands of real-time, worldwide data sources combined with its powerful, intuitive, responsive and reliable web-based interfaces and data feeds yield the most capable and useful flight tracking application and service. FlightAware is the first company to offer free flight tracking services for both private and commercial air traffic and quickly rose to become the most popular flight tracking service.

WEMMH patent attorneys John McNett (a licensed pilot) and Bill McKenna worked with three tech-savvy pilots, led by Daniel Baker to obtain 12 U.S. patents, addressing numerous features of their rapidly growing business when FlightAware was created in 2005. WEMMH has also secured trademark registrations in over 50 jurisdictions throughout the world to protect the FlightAware brand. See their website at www.flightaware.com or download their app on your smartphone.


Partners Dan Lueders and Chuck Schmal Named Members of the Global IP Star Rankings

June 8, 2018

Partners Dan Lueders and Chuck Schmal were officially announced as members of the Global IP Star rankings in the May edition of Managing Intellectual Property IP Stars 2018/19. IP Stars is the leading specialist guide to IP firms and practitioners worldwide. Managing IP has been researching and ranking firms since 1996. This research has expanded over the years, with more than 80 jurisdictions now covered, making it the most comprehensive and authoritative analysis of the industry. The guide is viewed each month by over 25,900 users from 142 jurisdictions online, and the print versions are sent to over 10,000 IP Practitioners globally each year.

Congratulations, Dan and Chuck!

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