William A. McKenna

Intellectual Property Concerns for In-House Counsel

September 16, 2021

On September 30th, Bill McKenna will lead the discussion, Intellectual Property Concerns for In-House Counsel, for ICLEF’s Advanced Corporate Counsel program at the West Baden Resort on September 30 – October 1, 2021. For more information and to register, please visit ICLEF.

 


Lueders Recognized by Best Lawyers as Indianapolis “Lawyer of the Year” 2022; Firm Partners Included in The Best Lawyers in America© 2022

August 19, 2021

Woodard, Emhardt, Henry, Reeves & Wagner LLP congratulates Daniel J. Lueders who was named Indianapolis “Lawyer of the Year” in Litigation – Intellectual Property by The Best Lawyers in America© 2022.

Congratulations to all of our attorneys who were selected by their peers for inclusion in Best Lawyers in their respective fields:

• Spiro Bereveskos – Litigation – Intellectual Property, Litigation – Patent, and Patent Law
• Kenneth A. Gandy – Litigation – Intellectual Property, Litigation – Patent, Patent Law, and Trademark Law
• Daniel J. Lueders – Litigation – Intellectual Property, Litigation – Patent, and Patent Law
• William A. McKenna – Litigation – Intellectual Property, Litigation – Patent, and Patent Law
• Charles J. Meyer – Litigation – Intellectual Property
• Charles P. Schmal – Patent Law

Lawyers on The Best Lawyers in America list are reviewed by their peers on the basis of professional expertise, and undergo an authentication process to make sure they are in current practice and in good standing.


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.


Seven Firm Partners Included in The Best Lawyers in America© 2021

August 20, 2020

Woodard, Emhardt, Henry, Reeves & Wagner LLP is pleased to announce that seven partners have been included in the 2021 Edition of The Best Lawyers in America© 2021.

The Firm would like to congratulate the following lawyers named to 2021 The Best Lawyers in America© list:

  • Spiro Bereveskos – Litigation – Intellectual Property, Litigation – Patent, and Patent Law
  • Kenneth A. Gandy – Litigation – Intellectual Property, Litigation – Patent, Patent Law, and Trademark Law
  • Thomas Q. Henry – Copyright Law, Litigation – Intellectual Property, Litigation – Patent, Patent Law, and Trademark Law
  • Daniel J. Lueders – Litigation – Intellectual Property, Litigation – Patent, and Patent Law
  • William A. McKenna – Litigation – Intellectual Property, Litigation – Patent, and Patent Law
  • Charles J. Meyer – Litigation – Intellectual Property
  • Charles P. Schmal – Patent Law

 

Lawyers on The Best Lawyers in America list are reviewed by their peers on the basis of professional expertise, and undergo an authentication process to make sure they are in current practice and in good standing.


Woodard, Emhardt, Henry, Reeves & Wagner, LLP Attorneys Named to the 2020 Indiana Super Lawyers® & Rising Stars Lists

February 18, 2020

The Firm is pleased to announce the names of our attorneys who have been selected for inclusion in the 2020 Indiana Super Lawyers® and Rising Stars lists. Congratulations to the following attorneys who have consistently been listed as Super Lawyers in these primary practice areas:

  • Spiro Bereveskos – Intellectual Property Litigation
    Selected to Super Lawyers 2006 – 2020
  • Thomas Q. Henry – Intellectual Property
    Selected to Super Lawyers 2004 – 2020
  • Daniel J. Lueders – Intellectual Property Litigation
    Selected to Super Lawyers 2004 – 2020

In addition, William A. McKenna has been named to the Rising Stars list in the areas of Intellectual Property Litigation 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.


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.


Attorneys Celebrate May in Indy

June 3, 2019

On Thursday, May 30, 2019, Firm attorneys celebrate May in Indy racing at Speedway Indoor Karting.


Firm attorneys show their support of the USO of Indiana

May 21, 2019

Firm attorneys, Andrew Nevill, Blake Hartz, Chuck Reeves and Bill McKenna, participate in the Third Annual USO of Indiana Golf Outing on May 17th, 2019 at The Legends Golf Club in Franklin, Indiana. The annual event helps the USO of Indiana provide programs at no cost to military service men and women.

 


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.

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