Just one day after oral argument on February 7, 2018, the United States Court of Appeals for the Federal Circuit issued a Judgment in favor of Neustel’s client Inline Packaging involving Graphic Packaging’s appeal of the PTAB’s IPR Decision (IPR2015‐01609) finding all 53 claims of U.S. Patent No. 8,872,078 unpatentable. Chad Ziegler and Michael Neustel represented Inline Packaging on the appeal with Chad Ziegler presenting oral argument to the Federal Circuit.
U.S. Patent No. 8,872,078 is owned by Graphic Packaging International, Inc. and relates to technology used for microwave susceptor sleeves. Graphic Packaging had sued Inline Packaging for infringement of the ‘078 patent in U.S. Federal District Court over its alleged sale of microwave susceptor materials to Nestlé for use with certain HOT POCKETS® and/or LEAN CUISINE® branded food products. Neustel Law Offices represented the IPR Petitioner, Inline Packaging, LLC, a small microwave susceptor packaging business with approximately 50 employees in Princeton, Minnesota in the successful IPR campaign and defending the IPR decision on appeal to the Federal Circuit.
UPDATE: There is a good Law360 Article on the appeal decision on February 9, 2018.
On January 18, 2018, Neustel filed a patent infringement lawsuit on behalf of PRx Performance, LLC (www.PRxPerformance.com) against Axom Acquisition Co., LLC (d/b/a Axom Performance) and Jason Howard in the U.S. District Court for the Western District of Arkansas. The patent infringement lawsuit covers folding weight lifting racks that have been manufactured, sold or offered for sale by Axom Performance, that PRx Performance alleges infringes upon three patents for a “Retractable Wall Mounted Exercise Rack System”: U.S. Patent Nos. 9,409,048, 9,498,670, and 9,649,525.
In the Complaint, PRx Performance has requested the Court to order Axom Performance to stop manufacturing, importing, selling, or offering for sale the allegedly infringing products, and to compensate PRx Performance for all infringing sales. PRx Performance has also requested the Court find that Axom Performance’s infringement has been willful and deliberate, and that the case is “exceptional”.
PRx Performance has devoted a great deal of resources to developing, marketing and patenting its products, and the company has applied for and been granted patents on its technology while continuing to monitor for patent infringement as the market for its products evolve. The founders of PRx Performance have appeared on the ABC television reality show Shark Tank® to pitch the PRx Profile Rack which is protected by the patents in the Axom Performance lawsuit. PRx Performance, LLC is a Fargo, North Dakota-based company that designs, manufactures, distributes and sells cross-functional fitness (e.g. CROSSFIT®) and weight training systems, equipment, and storage solutions designed for residential and commercial applications.
On October 5, 2017, Neustel client Barco, Inc. was granted a stay in the Northern District of Illinois, on the basis of three petitions for Inter Partes review challenging all the asserted patents in the case. The case is T-Rex AB v. Barco, Inc., No. 1:16-cv-6938 (N.D. IL.). The IPR’s have not yet been instituted, but the stay follows the practice in the Northern District of Illinois liberally granting such stays when discovery and other matters in litigation have not progressed significantly toward trial. The challenged U.S. patents are RE39,470, 7,382,334, and 6,430,603, and relate to systems and methods for remotely displaying digital information, particularly for digital signage and advertising. Barco, Inc. is represented by Edward Runyan of Neustel Law Offices, LTD.
On August 3 & 4, 2017, on behalf of Barco, Inc., Neustel filed petitions for inter partes review on three patents owned and asserted in district court by T-Rex Property AB. The challenged patents are U.S. Patents RE39,470; 7,382,334; & 6,430,603. The patents all relate to systems for remotely controlling displays, with particular application to digital signage and advertising.
Law360, New York (May 2, 2017, 1:46 PM EDT) — Neustel Law Offices Ltd. has added an intellectual property litigator previously with Baker & McKenzie LLP as a partner who will work on IP matters for the firm, it has announced.
Edward K. Runyan will focus his practice on counseling clients on a broad range of matters related to patents and technology, according to the firm’s April 26 announcement.
Runyan has more than 16 years of experience working in intellectual property matters such as drafting and prosecuting patent applications in the U.S. and abroad and in representing clients in infringement litigation in federal courts and before the U.S. International Trade Commission, ….
READ FULL STORY ON LAW360
Neustel Law Offices, LTD is pleased to announce that Edward K. Runyan has joined our firm as a Partner. Edward holds a B.S. from Purdue University, is a member of the IEEE, and received his J.D. from DePaul University School of Law. Edward is an experienced patent litigator, both in Federal Courts and before the PTAB. Prior to joining our firm, Edward was employed at Kirkland & Ellis and Baker & McKenzie LLP in Chicago, where he provided general counseling for patents and technology, drafting and prosecuting U.S. and international patent applications, and patent litigation (infringement & invalidity) in U.S. Federal Courts, the PTAB, and the ITC. Edward was previously employed as a Master Systems Engineer at United Technologies Aerospace Systems (formerly Hamilton Sundstrand) in Rockford, IL, where he was responsible for the design, development and support of electrical power generating systems for commercial and military aircraft. We are thrilled to welcome Edward to the Neustel Team!
Law360 did an article on our recent lawsuit on behalf of Lagree to enforce its patents, trademarks and copyrights. Below is the initial portion of the article and a link to the full Law360 article:
Fitness Celeb Claims Gym Infringed Exercise Machine, IP
Law360, Los Angeles (February 17, 2017, 7:57 PM EST) — Fitness guru and celebrity trainer Sebastien Lagree and his Lagree Fitness sued the BodyRok franchise in California federal court on Friday alleging infringement of his patents, copyright and trademarks with a fitness machine nearly identical to his “Megaformer.” Lagree’s Pilates-style fitness program is practiced in more than 300 licensed studios around the world, the complaint said. He also has patents for exercise machines in the program, including the “Megaformer,” which is designed to work core muscles in various ways and only sold to Lagree-licensed studios. In a detailed 52-page complaint, Lagree accused BodyRok and its founders, who once had licensed Lagree programs, of debuting a fitness machine that infringes his patents for the Megaformer, as well as copying other aspects of Lagree’s program. Read Entire Article
Law360 did a nice article regarding our successful IPR challenge invalidating all 53 claims of U.S. Patent No. 8,872,078
which is a patent on microwave susceptor sleeves used with HOT POCKETS® food products. Below is the initial portion of the article and a link to the full Law360 article:
PTAB Zaps Patent Covering Hot Pockets Sleeves
Law360, New York (February 10, 2017, 7:04 PM EST) —
The Patent Trial and Appeal Board invalidated as obvious a food packager’s patent covering cardboard sleeves that encase Hot Pockets and Lean Pockets freezer items, according to a recently unsealed decision. … Read Entire Article
On January 10, 2017, the PTAB issued a Final Written Decision
in an Inter Partes Review (IPR2015‐01609) finding all 53 claims of U.S. Patent No. 8,872,078
unpatentable. The ‘078 patent is owned by Graphic Packaging International, Inc. and relates to technology used for microwave susceptor sleeves. Graphic Packaging had sued Inline Packaging for infringement of the ‘078 patent in U.S. Federal District Court over its alleged sale of microwave susceptor materials to Nestlé for use with certain HOT POCKETS® and/or LEAN CUISINE®
branded food products. Neustel Law Offices represented the IPR Petitioner, Inline Packaging, LLC
, a small microwave susceptor packaging business with approximately 50 employees in Princeton, Minnesota in the successful IPR campaign.