Hellmuth & Johnson Receives Winning Final Written Decision In Patent Dispute

The Patent Trial & Appeal Board issued a winning final written decision in an inter partes review (IPR) challenge to Hellmuth & Johnson on behalf of client Rotochopper, Inc. in the matter of ­­Bandit Industries, Inc. and Smoracy, LLC v. St. Martin Investments, Inc. on February 5, 2019.

In this matter, Hellmuth & Johnson attorneys Alexander J. Farrell and Jonathan D. Jay represented Delaware-based Rotochopper against invalidity claims brought by a competitor in Michigan on their patent for technology used in horizontal wood grinders. The original patent entitled Concurrent Fragmentation and Impregnation Machine and Processing was filed in April of 1999 and issued in March of 2001.

Prior to the invalidity claims, Rotochopper sued Bandit and Smoracy in Michigan in May of 2017 alleging infringement of Rotochopper’s proprietary horizontal wood grinder technology. Bandit and Smoracy countered with an IPR challenging Rotochopper’s patent in the United States Patent and Trademark Office in July of 2017 which stayed the district court case in Michigan.

In November of 2017, Rotochopper filed its preliminary response to the IPR. The final hearing was held before the Patent Trial & Appeal Board in Washington, DC in October 2018 and the Board issued its final decision declaring validity on all claims on February 5, 2019. Pending any appeal, the infringement case is now free to proceed with Rotochopper in a strong position.

“As an innovator in our field, we respect the intellectual property rights of all market participants. We view this decision as a solid affirmation from the Patent Office that our patented and proprietary technology is one of a kind, and that the great work started by Rotochopper all those years ago was based on a valid new invention” said Jamey Brick, Senior Vice President of Rotochopper, Inc.

Hellmuth & Johnson

Hellmuth & Johnson, a Top 20 Minnesota law firm, represents clients ranging from individuals and emerging start-ups to multinational Fortune 500 companies. Focusing on transactional law, litigation and appeals, Hellmuth & Johnson attorneys are leaders in their fields. Founded in 1994, Hellmuth & Johnson has become one of Minnesota’s fastest growing law firms. Learn more at www.hjlawfirm.com.

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