News & Updates

Obtaining and Enforcing Patents and Trademarks for Flavor Burst

October 15, 2020

Flavor Burst is a leading manufacturer of flavor and candy delivery equipment for frozen confections. The company designs and manufactures self-serve dispensing systems that increase a restaurant and retail establishments’ menu flavor offerings for soft service ice cream, shakes, slushies, frozen coffee, smoothies, frozen carbonated beverages, and frozen cocktails. Since Flavor Burst released its first product in 1992, it has expanded to more than 40 countries worldwide.

Flavor Burst executives have worked with the Woodard firm for decades to obtain and enforce patents and trademarks for its unique flavor blending and dispensing systems, syrups, mixes, and candies. Recently, Woodard attorneys Mike Morris and Andrew Nevill helped Flavor Burst prepare and file new patent applications on the next generation of flavor blending and dispensing systems that will increase efficiency for restaurants and retail establishments and provide patrons with even more enjoyable products.

For more information on Flavor Burst Company, please visit: https://www.flavorburst.com/


Protecting the Patented Slipstream Bracket® by ThatGrin LLC and Removing Counterfeit Products From the Market

September 1, 2020

Electric vehicles are becoming more mainstream, and none are more beloved than Tesla. However, many states require a front license plate, and Tesla owners are left with the difficult decision to drill into the bumper of their new Tesla or install some other adhesive or flimsy aftermarket license plate mount.

Faced with this problem themselves, Chad and Cristi Nowakowski chose to make their own, giving birth to the Slipstream Bracket. The Slipstream Bracket is a NO-drill, NO-holes, NO-adhesives front license plate mounting solution for the Tesla Model 3, Tesla Model X, and the all-new Tesla Model Y. The Patented design of the Slipstream Bracket is aerodynamically invisible to the cold air intake and does not interfere with any of Tesla’s autopilot sensors. The secure, quick-release system (using the provided L-key) is ideal for car washes, Tesla events, detailing, and for anyone who wants the ability to “pop-on” or “pop-off” their front license plate without the risk of damaging their vehicle.

Many months went into testing, developing, and producing the Slipstream Bracket. Precise dimensions, OEM placement, and specific high-quality construction materials ensure 100% compatibility with the onboard safety systems. Additionally, the unique product design protects the body parts and finish of Tesla models. Many of the painstakingly designed components used in making the Slipstream Bracket ensure maximum protection of the body parts and the painted finish of Tesla vehicles. Furthermore, the proprietary to ThatGrin LLC makes it very difficult to duplicate the product safely.

Given the precise dimensions and sensitivity of the Tesla Autopilot and safety systems, ThatGrin LLC owners were very concerned when counterfeit brackets began showing up online. These counterfeit brackets did not meet the tight tolerances required and thus risked interfering with the vehicle’s function. To protect their product and the consuming public, ThatGrin LLC began working with Firm attorney, William A. McKenna, to protect the patented design and remove counterfeit products from the market. So far, the results have been successful, and the Slipstream Bracket remains an overwhelming success with a five-star rating on Amazon with several thousand sold.

For more information about ThatGrin LLC and to order the Slipstream Bracket, visit: ThatGrin.com.


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

August 18, 2020

A lot has happened since we shared Rick Goren’s story in 2019. Rick and his product were recently featured on WTHR Channel 13. ROTOSHOVELTM is now available on Amazon  and may soon be on the shelves at Costco stores nationwide. Congratulations, Rick and team.

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.

 


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.


Entrepreneur and inventor, Bart Waclawik, featured in Indianapolis Business Journal

October 30, 2019

Bart Waclawik, founder and owner of Innovative Neurological Devices, is working with Woodard attorney, Christopher A. Brown, to protect his innovative medical device, the CERVELLATM Cranial Electrotherapy Stimulator.

CERVELLATM is an FDA-cleared medical device for treatment of anxiety, depression, and insomnia and is the world’s first and only Cranial Electrotherapy Stimulator with patent-pending proprietary conductive treatment electrodes that are integrated into a stereo headset allowing patients to receive treatment during study, work, or play. CERVELLATM is also the first and only CES device that is managed through an App on a smart device.

After witnessing a close family member struggle with existing products, Mr. Waclawik was inspired to create a product that would fit seamlessly into a patient’s lifestyle. The patent-pending CERVELLATM headphones allow patients to inconspicuously receive treatment from any location.

For more information on the CERVELLATM Cranial Electrotherapy Stimulator, please visit: CERVELLATM

To read the article published in the Indianapolis Business Journal, visit: IBJ 


The Firm congratulates Biologics Modular, LLC on the issuance of US Patent No. 10,371,294

September 24, 2019

 

 

Clark Byrum, Jr. President and CEO of Biologics Modular worked with Woodard attorney, Tim Thomas, on obtaining the patent covering preassembled cleanroom modules with air filtration systems.

Biologics Modular, LLC designs and manufactures modular cleanroom facilities to serve as bio-manufacturing suites, self-contained bio-repositories, and analytical labs for health science service providers, educational facilities and pharmaceutical manufacturers. Biologics’ innovative pre-constructed, pretested cleanroom modules, with air filtration systems in place, minimize capital costs and decrease production times for its clients.

A live example of the connectivity feature of Biologics Modular’s intellectual property

To read Biologics Modular’s patent announcement, visit: https://www.biologicsmodular.com/post/press-release-biologics-modular-announces-issuance-of-us-patent-for-modular-cleanroom-facility

For more information on Biologics Modular, please visit: Biologics Modular


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.

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