News & Updates

Securing intellectual property for ROTOSHOVELTM and its quest to reinvent the shovel

September 11, 2019

Inventor and entrepreneur, Rick Goren, went outside to install a subwoofer in the ground and looked in his garage for the perfect tool. He found all types of shovels and posthole diggers, but nothing that would save him time and make the work less strenuous. Hanging on his garage wall was a drill with a mortal bit which inspired his idea for the ROTOSHOVELTM brand automatic handheld shovel blade which uses a rotating auger bit that makes digging easier and faster saving time, energy, and costs on gardening and landscape projects.

Rick worked with Woodard attorney, Chuck Schmal to obtain U.S. Patent No. 10,309,160 for his unique shovel design as well as to obtain allowance of a trademark application for the ROTOSHOVELTM brand. The firm congratulates Rick on his patent and, on behalf of all gardeners, thanks Rick for reinventing the shovel.

ROTOSHOVELTM brand automatic handheld shovel TV ads will begin September 23, 2019 on AMC networks and NewsWatch. ROTOSHOVELTM brand automatic handheld shovels will also be available at the Green Industry & Equipment Expo in Louisville, KY October 16-18, 2019.

For more information on the ROTOSHOVELTM brand automatic handheld shovels please visit: ROTOSHOVELTM and view the ROTOSHOVELTMVideo.

 


Amazon patent enforcement system is ‘useful for simple matters’

July 22, 2019

On July 16, 2019, Bill McKenna was quoted in a Patent Strategy article,  “Amazon patent enforcement system is useful for simple matters,”  regarding the Utility Patent Neutral Evaluation (UPNE) program developed by Amazon to offer patent owners a faster and cheaper means of getting patent-infringing products taken down from its platform.


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 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.


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.


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.


Client Mr. Canary Co. Showcases Breakthrough Bird Feeding Product on Home Shopping Network (HSN)

May 9, 2018

Are you a bird lover? This one is for you!

On Tuesday, Carmel-based Mr. Canary Co. released a revolutionary product on the Home Shopping Network (HSN). Mr. Canary has been selling their bird feeders through major retailers since 1995.

Mr. Canary touts the invention as merely TV dinners for birds, which is a maintenance-free avenue to enjoy backyard birds. Basically, premium bird seed is sealed in single-use and eco-friendly trays, which slide into a permanent bird feeder. Bonus being: users don’t have to worry about hauling bird seed bags to the backyard and the cleanup is simple. The system ranges from $34.99 to $39.99.

Bird Feeder

Sisters Jan Long and Chris Mowery bought the Mr. Canary brand in 1995. By 2013, Mr. Canary products were being sold in Kmart, WalMart and Kroger stores across the nation. Ace Hardware signed on in 2014, as well.

Chuck Schmal of Woodard, Emhardt, Moriarty, Mc Nett & Henry LLP, along with Long worked together to secure a patent on the Bird Buffet System (US 9,686,968).

For more information, please refer to: https://www.ibj.com/articles/68556-carmel-based-mr-canary-to-debut-on-home-shopping-network?utm_source=ibj-daily&utm_medium=newsletter&utm_campaign=2018-04-26


Inventor Michael Duff Featured in STRINGS Magazine

April 3, 2018

Michael Duff is a world class craftsman behind some of the world’s greatest violinists and stringed musicians. Duff was recently awarded a U.S. Patent for innovating a new bow, including a novel frog part of the bow.

Stringed musical instruments such as the violin, viola, cello and stringed bass use bows to create classic and timeless music. Duff is the proprietor of Berg Bows® International in Bloomington, Indiana in 1985. https://www.bergbows.com/ As a former faculty member of Indiana University’s Department of Microbiology, he utilizes his scientifically trained mind and prides himself in being involved in the handcrafting of each and every bow.

Innovating New Bow

Michael enlisted the assistance of Dan Lueders of Woodard Emhardt Moriarty McNett & Henry. In November 2017, Berg Bows International received a patent (U.S. 9,830,892 B1) for all violin, viola and cello bows with Berg “Sound Stick” Technology. His inventive bow was featured in Strings magazine.

For more information, please refer to http://stringsmagazine.com/bow-maker-michael-duffs-new-line-includes-hybrid-materials/


Fiberglass and Friendship—A Winning Team

November 30, 2017

A team from two Indianapolis law firms recently won a two-week jury trial in a trade secret lawsuit tried in U.S. District Court of Colorado, securing a defense verdict for a mutual client facing a claim of over $200 million in damages.

The team of lawyers from Woodard, Emhardt, Moriarty, McNett & Henry LLP (Woodard) and Bingham Greenebaum Doll LLP (BGD) capitalized on the respective strengths of the two firms to create an efficient, highly-focused and diverse team that took the case through massive ESI, other discovery and to trial. The lead defense attorneys were Spiro Bereveskos and Dan Lueders from Woodard and Rusty Denton and Bri Clark from BGD.

The team represented Knauf Insulation, Inc. (Knauf), a fiberglass insulation manufacturer headquartered in Shelbyville, Indiana. The lawsuit was filed by a Knauf competitor, Denver-based Johns Manville Corporation (JM). The lawsuit centered on technology relative to super-alloy spinner discs used to make insulation and began primarily as a patent case. JM claimed infringement of its “unique, novel and nonobvious spinner disc alloy.” JM also claimed misappropriation of alleged spinner disc trade secret information. The District Court dismissed JM’s patent claim with prejudice before trial. At trial in Denver, only three of JM’s alleged trade secret claims were presented to the jury over nine days of trial ending on November 9.
After less than three hours of deliberations, the jury returned a verdict that, in view of Knauf’s defense, JM failed to prove its claims of misappropriation. The verdict represented a complete exoneration of Knauf. Bereveskos said, “I am proud of the talented team we assembled and grateful the jury was able to see that Knauf was correct.”

The firms credit their unique collaboration to the personal relationship between two of the lead attorneys, Rusty Denton and Dan Lueders. Denton said, “I have known and worked with Dan for almost twenty years. I have the highest respect for him and his firm, and I knew that together, we could tap into the unique skills of our two firms.” The team combined Woodard’s specialized technical resources, BGD’s deep litigation support and the trial skills and experience of both firms to create a winning team. “It was classic team play. Everyone contributed and subordinated themselves to the good of the client and the cause,” said Lueders.


August 2017 Patent Prosecution Update

August 28, 2017

The August 2017 patent prosecution lunch featured a discussion of the recent United States Patent and Trademark Office (USPTO) report concerning patentable subject matter. In addition, the availability of Computer Based Training (CBT) for e-Petitions was highlighted. A summary of a recent case concerning the broadest reasonable interpretation standard for means-plus-function limitations (IPCom v. HTC) was presented. Recent updates for Brazil’s proposed extraordinary solution for its patent application backlog problem and Canada’s promise doctrine were provided. To view the presentation, visit: 2017 08-patent prosecution lunch from Woodard, Emhardt, Moriarty, McNett and Henry LLP

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