Litigation
Untitled case
Not Instituted - MeritsIPR2025-01185
Patents at issue (1)
Case overview & background
Plain-language overview of the case: parties, accused product, patents at issue, and why the suit matters.
This case, IPR2025-01185, involves an inter partes review (IPR) before the Patent Trial and Appeal Board (PTAB) concerning U.S. Patent No. 10,221,780. The Patent Owner is Champion Power Equipment, Inc., an operating company that manufactures power equipment. The Petitioners challenging the patent are MWE Equipment Sales, LLC, Harbor Freight Tools USA, Inc., and Generac Power Systems, Inc., all of whom appear to be operating companies, likely competitors or distributors in the power equipment sector. The challenged patent, U.S. Patent No. 10,221,780, generally relates to a portable generator system, designed to provide a ready power source and potentially featuring a removable power pack or integrated battery charging.
The procedural posture of IPR2025-01185 is at the Patent Trial and Appeal Board, where the petition for inter partes review was ultimately denied institution on the merits. The PTAB, on January 16, 2026, determined that the Petitioners "failed to show a reasonable likelihood of prevailing with respect to at least one of the claims challenged in the petition". This "Not Instituted - Merits" decision indicates that the PTAB reviewed the substance of the invalidity arguments presented and found them unconvincing, rather than denying institution on discretionary grounds. This IPR is one of several related IPRs and district court litigations involving Champion Power Equipment, Inc. and various parties, including cases against Firman Power Equipment Inc., Generac Power Systems Inc., and Westinghouse Electric Corp., suggesting a broader patent enforcement strategy by Champion Power Equipment.
This case is notable given the recent landscape of PTAB practice, particularly concerning institution decisions. In late 2025, the USPTO Director, John Squires, assumed personal responsibility for all IPR and post-grant review (PGR) institution determinations, issuing summary notices for routine decisions and reserving detailed opinions for novel or important factual or legal issues. The denial of institution on the merits in IPR2025-01185 means that Champion Power Equipment's U.S. Patent No. 10,221,780 has successfully withstood a challenge at the PTAB, thereby preserving its presumed validity against the asserted prior art grounds. This outcome is significant for the patent owner, as it strengthens their position in any ongoing or future patent infringement litigation related to portable generator systems, which are at the core of this industry dispute.
Key legal developments & outcome
Major rulings, motions, claim construction, settlements, and the present posture or final disposition.
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The user is asking for key legal developments and outcomes of the patent infringement litigation related to IPR2025-01185 and U.S. Patent No. 10,221,780. The previous section stated that IPR2025-01185 was "Not Instituted - Merits" on January 16, 2026. It also mentioned that this IPR is "one of several related IPRs and district court litigations involving Champion Power Equipment, Inc. and various parties, including cases against Firman Power Equipment Inc., Generac Power Systems Inc., and Westinghouse Electric Corp."
My task is to find the district court litigation specifically tied to this patent and these parties, and then detail its chronological legal developments. Since the IPR petition was filed by MWE Equipment Sales, LLC, Harbor Freight Tools USA, Inc., and Generac Power Systems, Inc., it's highly probable that a district court case involving Champion Power Equipment as plaintiff and these entities as defendants (or some subset thereof) is the litigation in question.
I need to search for district court cases where Champion Power Equipment, Inc. asserted U.S. Patent No. 10,221,780 against Generac Power Systems, Inc., MWE Equipment Sales, LLC, and/or Harbor Freight Tools USA, Inc. I will then chronologically outline the key legal developments, including filings, motions, claim construction, discovery, trial (if any), and final disposition, also incorporating the PTAB IPR's effect.Here are the key legal developments and outcomes for the patent infringement litigation related to U.S. Patent No. 10,221,780, presented in chronological order, integrating the parallel PTAB IPR proceedings.
Key Legal Developments and Outcome for Related Patent Infringement Litigation
The inter partes review (IPR) IPR2025-01185, which was not instituted on the merits on January 16, 2026, is part of a broader patent enforcement effort by Champion Power Equipment, Inc. involving U.S. Patent No. 10,221,780 and other related patents. The petitioners in IPR2025-01185, MWE Equipment Sales, LLC, Harbor Freight Tools USA, Inc., and Generac Power Systems, Inc., were also involved in parallel district court litigations.
1. Related District Court Filings and Initial Pleadings:
- October 9, 2024: Champion Power Equipment, Inc. v. Generac Power Systems, Inc. (E.D. Wis. Case No. 24-cv-1281)
Champion Power Equipment filed a patent infringement lawsuit against Generac Power Systems in the United States District Court for the Eastern District of Wisconsin. Champion alleged that certain Generac and Powermate branded multi-fuel portable generators infringed upon eleven of Champion's patents, including U.S. Patent No. 10,221,780. - October 9, 2024: Harbor Freight Tools USA, Inc. v. Champion Power Equipment, Inc. (C.D. Cal. Case No. 24-cv-08722)
Harbor Freight Tools USA, Inc. filed a declaratory judgment action against Champion Power Equipment in the Central District of California. - October 14, 2024: Champion Power Equipment, Inc. v. Harbor Freight Tools USA, Inc. (E.D. Wis. Case No. 2:24-cv-01302)
Champion Power Equipment filed a patent infringement lawsuit against Harbor Freight Tools USA, Inc. in the Eastern District of Wisconsin, asserting infringement of thirteen utility patents covering portable generator and engine technologies, including U.S. Patent No. 10,221,780. - January 22, 2025: Generac's Motion to Dismiss Denied
The U.S. District Court for the Eastern District of Wisconsin denied Generac's motion to dismiss Champion's complaint for failure to state a claim or, in the alternative, for a more definite statement in Champion Power Equipment Inc. v. Generac Power Systems Inc. - February 2, 2025: Generac's Answer and Counterclaims
In the E.D. Wisconsin case against Generac, Generac filed its initial answer and asserted counterclaims of non-infringement and invalidity concerning Champion's eleven multi-fuel patents. - April 28, 2025: Champion v. Harbor Freight (E.D. Wis.) Dismissed
The Eastern District of Wisconsin dismissed Champion's infringement lawsuit against Harbor Freight Tools USA, Inc. in its entirety, citing the "first-to-file" rule. Harbor Freight's earlier declaratory judgment action in the Central District of California (filed on October 9, 2024) secured jurisdiction, meaning the substantive patent dispute would proceed in California. - May 14, 2025: Champion Power Equipment, Inc. v. MWE Investments, LLC, et al. (D. Nev. Case No. 3:25-cv-00239)
Champion Power Equipment, Inc. filed a patent infringement lawsuit in the District of Nevada against MWE Investments, LLC, Midwest Equipment Sales, LLC, Westinghouse Electric Corporation, and Westinghouse Electric and Manufacturing Company, LLC. - May 15, 2025: Generac's Amended Answer and Counterclaims
Generac filed an amended answer in the E.D. Wisconsin case, adding two counterclaims of infringement by Champion of two patents held by Generac relating to carbon monoxide detection.
2. Pre-trial Motions of Substance and Discovery Milestones:
- June 26, 2025: Joint Motion for ESI Discovery (Champion v. Generac)
Champion and Generac filed a joint motion for entry of an order regarding discovery of electronically stored information, which the court granted. - September 17, 2025: Omnibus Decision on Motions (Champion v. Generac)
The U.S. District Court for the Eastern District of Wisconsin issued an "Omnibus Decision and Order" addressing seven motions in the Champion Power Equipment Inc. v. Generac Power Systems Inc. case. This included motions for protective orders, where Generac sought to impose a "patent prosecution bar." The court denied counsel-by-counsel exemptions for Champion's attorneys, Timothy J. Ziolkowski and Jacob M. Fritz, from the patent prosecution bar. The decision also addressed Champion's motion to sever counterclaims, which had been filed on February 5, 2025.
3. Parallel PTAB IPR Proceedings and Their Effect:
- January 5 & 9, 2026: MWE and Harbor Freight Authorized to Withdraw from IPRs
The Patent Trial and Appeal Board (PTAB) authorized petitioners Harbor Freight Tools USA, Inc. and MWE Investments, LLC to file motions to withdraw from several inter partes review petitions, including IPR2025-01185 (U.S. Patent No. 10,221,780). This authorization stemmed from a settlement agreement reached between MWE and Champion Power Equipment, Inc. However, Generac Power Systems, Inc. stated its intention to remain as a petitioner in these IPRs. - January 16, 2026: IPR2025-01185 Not Instituted on the Merits
The Patent Trial and Appeal Board (PTAB) issued a "Not Instituted - Merits" decision for IPR2025-01185 concerning U.S. Patent No. 10,221,780. The PTAB found that the petitioners, including Generac (which remained a party), failed to demonstrate a reasonable likelihood of prevailing on at least one challenged claim. This decision preserves the presumed validity of U.S. Patent No. 10,221,780 against the asserted prior art grounds.
4. Settlement and Final Disposition:
- December 30, 2025: Champion v. MWE/Westinghouse (D. Nev.) Dismissed with Prejudice
In the litigation between Champion Power Equipment, Inc. and MWE Investments, LLC (the "MWE Litigation") in the District of Nevada, the court granted a dismissal with prejudice of Champion's complaint, which asserted, among others, the patents challenged in the related IPRs. This dismissal was a result of a settlement agreement between Champion and MWE.
Plaintiff representatives
Counsel of record for the plaintiff(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).
- Merchant & Gould
- Thomas J. Leach · Lead Counsel
- Taylor R. Stemler · Back-Up Counsel
- Joseph Dubis · Counsel (in related district court case)
- Michael A. Erbele · Counsel (in related district court case)
- Elisabeth S. Muirhead · Counsel (in related district court case)
- Paige S. Stradley · Counsel (in related district court case)
- Gabrielle Kiefer · Counsel (in related district court case)
- Ice Miller
- Thomas A. Walsh · Counsel (requested withdrawal)
- Thomas A. Rammer · Counsel (requested withdrawal)
- Alexas D. Siliunas · Counsel (requested withdrawal)
- Foley & Lardner
- Michael R. Houston · Lead Counsel (sought to withdraw)
- Jeffrey S. Gundersen · Back-Up Counsel (sought to withdraw)
- Kimberly K. Dodd · Back-Up Counsel (sought to withdraw)
The counsel of record representing the Petitioners (referred to as "plaintiff(s)" in the prompt context) in IPR2025-01185, initially included attorneys for MWE Equipment Sales, LLC, Harbor Freight Tools USA, Inc., and Generac Power Systems, Inc. While MWE and Harbor Freight subsequently withdrew from the IPR due to settlements with the Patent Owner, Generac Power Systems, Inc. remained a petitioner.
Here is the identified counsel:
For Generac Power Systems, Inc. (Remaining Petitioner)
- Thomas J. Leach
- Role: Lead Counsel
- Firm: Merchant & Gould P.C., Minneapolis, MN
- Experience Note: Thomas Leach is noted as counsel for Generac in related district court litigation, indicating experience in patent infringement defense.
- Taylor R. Stemler
- Role: Back-Up Counsel
- Firm: Merchant & Gould P.C., Minneapolis, MN
- Experience Note: Taylor Stemler is listed as back-up counsel in IPR proceedings.
- Joseph Dubis
- Role: Counsel (in related district court case)
- Firm: Merchant & Gould P.C., Minneapolis, MN
- Experience Note: Named counsel for Generac in a patent infringement suit brought by Champion Power Equipment.
- Michael A. Erbele
- Role: Counsel (in related district court case)
- Firm: Merchant & Gould P.C., Minneapolis, MN
- Experience Note: Named counsel for Generac in a patent infringement suit brought by Champion Power Equipment.
- Elisabeth S. Muirhead
- Role: Counsel (in related district court case)
- Firm: Merchant & Gould P.C., Minneapolis, MN
- Experience Note: Named counsel for Generac in a patent infringement suit brought by Champion Power Equipment.
- Paige S. Stradley
- Role: Counsel (in related district court case)
- Firm: Merchant & Gould P.C., Minneapolis, MN
- Experience Note: Named counsel for Generac in a patent infringement suit brought by Champion Power Equipment.
- Gabrielle Kiefer
- Role: Counsel (in related district court case)
- Firm: Merchant & Gould P.C., Minneapolis, MN
- Experience Note: Named counsel for Generac in a patent infringement suit brought by Champion Power Equipment.
For MWE Equipment Sales, LLC (Withdrew as Petitioner)
- Thomas A. Walsh
- Role: Counsel (requested withdrawal)
- Firm: Ice Miller LLP, Indianapolis, IN
- Experience Note: Requested withdrawal as counsel for MWE in multiple IPRs.
- Thomas A. Rammer
- Role: Counsel (requested withdrawal)
- Firm: Ice Miller LLP, Indianapolis, IN
- Experience Note: Requested withdrawal as counsel for MWE in multiple IPRs.
- Alexas D. Siliunas
- Role: Counsel (requested withdrawal)
- Firm: Ice Miller LLP, Indianapolis, IN
- Experience Note: Requested withdrawal as counsel for MWE in multiple IPRs.
For Harbor Freight Tools USA, Inc. (Withdrew as Petitioner)
- Michael R. Houston
- Role: Lead Counsel (sought to withdraw)
- Firm: Foley & Lardner LLP
- Experience Note: Sought to withdraw as lead counsel for Harbor Freight in IPR proceedings due to settlement.
- Jeffrey S. Gundersen
- Role: Back-Up Counsel (sought to withdraw)
- Firm: Foley & Lardner LLP
- Experience Note: Sought to withdraw as back-up counsel for Harbor Freight in IPR proceedings.
- Kimberly K. Dodd
- Role: Back-Up Counsel (sought to withdraw)
- Firm: Foley & Lardner LLP
- Experience Note: Sought to withdraw as back-up counsel for Harbor Freight in IPR proceedings.
Defendant representatives
Counsel of record for the defendant(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).
- Ziolkowski Patent Solutions Group
- Timothy J. Ziolkowski · Lead Counsel
- Jacob M. Fritz · Counsel
- Perilla Knox & Hildebrandt
- Joseph W. Staley · Counsel
- Scott P. Amy · Counsel
- Thomas Finch · Counsel
- Husch Blackwell
- Thomas P. Heneghan · Counsel
- Jennifer Elizabeth Hoekel · Counsel
- Sharif Ahmed · Counsel
- Kimberly Gutierrez · Counsel
- Avery Hitchcock · Counsel
- Snell & Wilmer
- David G. Barker · Counsel
- Zachary G. Schroeder · Counsel
- In-house counsel
- Daniel M. Staren · Pro Hac Vice Counsel
- R. Scott Weide · Local Counsel
In IPR2025-01185, Champion Power Equipment, Inc. ("Patent Owner") successfully defended its patent, U.S. Patent No. 10,221,780, with the PTAB denying institution on the merits. The Patent Owner has been represented by a combination of intellectual property boutique firms and larger general practice firms in this and related litigation.
Here is the identified counsel for Champion Power Equipment, Inc.:
For Champion Power Equipment, Inc. (Patent Owner)
- Timothy J. Ziolkowski
- Role: Lead Counsel
- Firm: Ziolkowski Patent Solutions Group SC, Port Washington, WI
- Experience Note: Mr. Ziolkowski is a principal at ZPSG, a firm specializing in patent prosecution and litigation for Champion Power Equipment. He was involved in inspecting competitor products and drafting complaints in related district court cases. He has been identified as a competitive decision-maker for Champion in other district court cases.
- Jacob M. Fritz
- Role: Counsel
- Firm: Ziolkowski Patent Solutions Group SC, Port Washington, WI
- Experience Note: Mr. Fritz, like Mr. Ziolkowski, is involved in both patent prosecution and litigation for Champion and has been identified as a competitive decision-maker.
- Joseph W. Staley
- Role: Counsel
- Firm: Perilla Knox & Hildebrandt LLP (PKH)
- Experience Note: Mr. Staley is a litigator at PKH, a firm that has secured multiple victories for Champion in IPR challenges, including those where USPTO Director John Squires overturned initial institution decisions.
- Scott P. Amy
- Role: Counsel
- Firm: Perilla Knox & Hildebrandt LLP (PKH)
- Experience Note: Mr. Amy is a litigator at PKH, actively involved in defending Champion in IPR proceedings.
- Thomas Finch
- Role: Counsel
- Firm: Perilla Knox & Hildebrandt LLP (PKH)
- Experience Note: Mr. Finch is a litigator at PKH, part of the team successfully representing Champion in IPR challenges.
- Thomas P. Heneghan
- Role: Counsel
- Firm: Husch Blackwell LLP, Madison, WI
- Experience Note: Mr. Heneghan is listed as counsel for Champion in related district court patent infringement litigation against Generac Power Systems Inc. and Harbor Freight Tools USA Inc. Husch Blackwell is a larger firm that handles litigation for Champion.
- Jennifer Elizabeth Hoekel
- Role: Counsel
- Firm: Husch Blackwell LLP, St. Louis, MO
- Experience Note: Ms. Hoekel is listed as counsel for Champion in related district court patent infringement litigation against Generac Power Systems Inc. and Harbor Freight Tools USA Inc.
- Sharif Ahmed
- Role: Counsel
- Firm: Husch Blackwell LLP, Phoenix, AZ
- Experience Note: Mr. Ahmed is listed as counsel for Champion in related district court patent infringement litigation against Generac Power Systems Inc.
- Kimberly Gutierrez
- Role: Counsel
- Firm: Husch Blackwell LLP
- Experience Note: Ms. Gutierrez is listed as counsel for Champion in related district court patent infringement litigation against Generac Power Systems Inc. and Harbor Freight Tools USA Inc.
- Avery Hitchcock
- Role: Counsel
- Firm: Husch Blackwell LLP, Milwaukee, WI
- Experience Note: Mr. Hitchcock is listed as counsel for Champion in related district court patent infringement litigation against Generac Power Systems Inc.
- David G. Barker
- Role: Counsel
- Firm: Snell & Wilmer LLP
- Experience Note: Mr. Barker is listed as counsel for Champion in a patent infringement action against Firman Power Equipment Inc.
- Zachary G. Schroeder
- Role: Counsel
- Firm: Snell & Wilmer LLP
- Experience Note: Mr. Schroeder is listed as counsel for Champion in a patent infringement action against Firman Power Equipment Inc.
- Daniel M. Staren
- Role: Pro Hac Vice Counsel
- Firm: (Not explicitly stated in the provided snippets, but typically from an out-of-state firm)
- Experience Note: Mr. Staren was granted permission to practice pro hac vice for Champion Power Equipment, Inc. in a district court case against Westinghouse Electric Corporation et al.
- R. Scott Weide
- Role: Local Counsel
- Firm: (Not explicitly stated in the provided snippets, but generally a Nevada firm based on the case location)
- Experience Note: Mr. Weide was designated as local counsel for Champion Power Equipment, Inc. in a district court case in Nevada.