Champion Power Equipment Inc. v. Harbor Freight Tools USA Inc.

This patent infringement litigation involves two prominent operating companies in the power equipment industry: Plaintiff Champion Power Equipment Inc. and Defendant Harbor Freight Tools USA Inc. Champion Power Equipment, an American company founded in 2003, designs and manufactures a wide range of power generation equipment, including portable generators, and holds a substantial patent portfolio in generator engine technology. Harbor Freight Tools, established in 1977, is a large privately held American retailer specializing in discount tools and equipment, operating over 1,600 stores nationwide and selling its own branded power equipment, including generators, which are the allegedly infringing products. Champion asserted thirteen utility patents, including US Patent 11,840,970, which generally covers "Generator engine systems." Specifically, this patent describes a dual fuel generator system where the gaseous fuel pressure regulation is handled by a two-stage system located entirely off-board the main generator housing, thus keeping the generator itself free of such high-pressure regulators.

The case, Champion Power Equipment Inc. v. Harbor Freight Tools USA Inc., was filed in the U.S. District Court for the Eastern District of Wisconsin (Case No. 2:24-cv-01302) on October 14, 2024, and assigned to Chief Judge Pamela Pepper. However, the Wisconsin court dismissed Champion's thirteen-count infringement lawsuit in its entirety on April 28, 2025, citing the "first-to-file" rule. This procedural outcome dictated that the substantive patent dispute would instead proceed in the U.S. District Court for the Central District of California (Case No. 2:24-cv-08722), where Harbor Freight had filed a declaratory judgment action five days prior on October 9, 2024. The Central District of California case is assigned to Judge Stephen V. Wilson, with Judge Alka Sagar referred.

This litigation is particularly notable as a real-world application of the "first-to-file" rule, where a mere five-day difference in filing dates between the two districts determined the venue for this significant patent dispute between two competing operating companies. This highlights the critical strategic importance of preemptive filings in patent litigation to secure a desired forum. Beyond the district court actions, related Inter Partes Review (IPR) proceedings have also been initiated, such as IPR2025-01121, filed by Harbor Freight against Champion, though institution was denied for at least one challenged claim in that specific IPR. This multi-front legal battle underscores the intensity of the competition in the power equipment market.

This analysis details the key legal developments and outcome of the patent infringement litigation, Champion Power Equipment Inc. v. Harbor Freight Tools USA Inc., Case number: 2:24-cv-01302, in the U.S. District Court for the Eastern District of Wisconsin. The case was ultimately dismissed on "first-to-file" grounds, with the substantive dispute proceeding in a parallel action in the Central District of California.

Key Legal Developments and Outcome:

• 2024-03-27: Pre-litigation Notification. Champion Power Equipment Inc. first contacted Harbor Freight Tools USA Inc. by letter, notifying them of a series of Champion's patents and its intention to protect its intellectual property.
• 2024-10-09: California Declaratory Judgment Action Filed. Harbor Freight Tools USA Inc. filed a declaratory judgment action against Champion Power Equipment Inc. in the U.S. District Court for the Central District of California, case number 2:24-cv-08722. This filing occurred five days before Champion's infringement suit in Wisconsin.
• 2024-10-14: Wisconsin Infringement Complaint Filed. Champion Power Equipment Inc. filed a patent infringement lawsuit against Harbor Freight Tools USA Inc. in the U.S. District Court for the Eastern District of Wisconsin, case number 2:24-cv-01302. The patent at issue was 11840970.
• 2024-10-18: Summons Executed. The summons for the Wisconsin case was returned executed, indicating service on Harbor Freight Tools USA Inc.
• 2024-11-05: Motion to Dismiss or Transfer Filed by Harbor Freight. Harbor Freight Tools USA Inc. filed a motion to dismiss the Wisconsin case or, in the alternative, to transfer it, likely citing the "first-to-file" rule given the prior California action.
• 2024-11-08: Motion to Stay Filed by Champion. Champion Power Equipment Inc. filed a motion to stay the Wisconsin proceedings.
• 2025-04-28: Eastern District of Wisconsin Case Dismissed. Chief Judge Pamela Pepper issued an order dismissing the case in its entirety on "first-to-file" grounds. Harbor Freight's motion to dismiss was granted, and Champion's motion to stay was denied as moot. This dismissal concluded the litigation in the Eastern District of Wisconsin.
• 2025-04-28: IPR2025-00805 Filed (Patent 10,393,034). Harbor Freight Tools USA, Inc. filed an inter partes review (IPR) petition, IPR2025-00805, against Champion Power Equipment, Inc. challenging U.S. Patent No. 10,393,034. This IPR challenges a related patent but not specifically 11840970, which was at issue in the district court cases.
• 2025-12-01: IPR2025-01121 Denied. An inter partes review petition, IPR2025-01121, filed by Harbor Freight Tools USA, Inc. against Champion Power Equipment, Inc. was discretionarily denied by the Patent Trial and Appeal Board (PTAB). The specific patent challenged in this IPR is not detailed in the available information.

Outcome:

The patent infringement litigation in the Eastern District of Wisconsin was dismissed on April 28, 2025, due to the application of the "first-to-file" rule. The court determined that the dispute should proceed in the Central District of California, where Harbor Freight Tools USA Inc. had initiated a declaratory judgment action five days prior to Champion's Wisconsin filing. Consequently, there were no claim construction proceedings, discovery milestones, or trial events in the Wisconsin case. The underlying patent dispute concerning Champion's patents, including 11840970, is now being litigated in the Central District of California (2:24-cv-08722). Parallel PTAB proceedings, including IPR2025-00805 (challenging patent 10,393,034) and IPR2025-01121 (discretionarily denied), have been initiated by Harbor Freight against Champion.

The following attorneys represented Champion Power Equipment Inc. in Champion Power Equipment Inc. v. Harbor Freight Tools USA Inc. in the Eastern District of Wisconsin:

• Thomas P. Heneghan

  • Role: Counsel
  • Firm: Husch Blackwell LLP, Milwaukee, Wisconsin
  • Experience Note: Heneghan is listed on the docket as counsel for Champion Power Equipment Inc. and has filed documents in the case, including a Declaration and a Brief in Opposition to a motion to dismiss or transfer. His firm, Husch Blackwell, has a significant intellectual property practice.

• Jennifer Elizabeth Hoekel

  • Role: Counsel
  • Firm: Husch Blackwell LLP, Milwaukee, Wisconsin
  • Experience Note: Hoekel is listed on the docket as counsel for Champion Power Equipment Inc. Her firm, Husch Blackwell, is known for its intellectual property litigation work.

• Timothy J. Ziolkowski

  • Role: Counsel
  • Firm: Ziolkowski Patent Solutions Group SC, Milwaukee, Wisconsin
  • Experience Note: Ziolkowski is listed on the docket as counsel for Champion Power Equipment Inc. He was referenced in a letter dated March 27, 2024, on behalf of Champion to Eric Smidt of Harbor Freight. His firm specializes in patent matters.

• Jacob M. Fritz

  • Role: Counsel
  • Firm: Ziolkowski Patent Solutions Group SC, Milwaukee, Wisconsin
  • Experience Note: Fritz is listed on the docket as counsel for Champion Power Equipment Inc. His firm focuses on patent prosecution and litigation.

Harbor Freight Tools USA Inc. was represented by counsel from at least two firms in this case, Husch Blackwell LLP and Jeffrey E. Crane Law.

Here is a breakdown of the identified counsel:

From Husch Blackwell LLP:

• Jennifer Elizabeth Hoekel (Counsel) - Husch Blackwell LLP (Milwaukee, WI office).
  • No specific patent litigation experience or notable cases were readily available for Jennifer Elizabeth Hoekel in the search results.
• Thomas P. Heneghan (Counsel) - Husch Blackwell LLP.
  • Thomas P. Heneghan filed multiple briefs and declarations in this case on behalf of Harbor Freight Tools USA Inc. His experience appears to be in commercial litigation and class action defense, rather than patent litigation specifically.

From Jeffrey E. Crane Law:

• Jeffrey E. Crane (Counsel) - Jeffrey E. Crane Law (Northbrook, IL and Chicago, IL offices).
  • Jeffrey E. Crane has experience in intellectual property disputes, including trademarks and tradenames, and has successfully defended national multi-district litigation and class actions. While the firm's website mentions intellectual property, it does not specifically detail patent litigation experience for Jeffrey E. Crane.

It's important to note that the case was dismissed on "first-to-file" grounds, with the substantive patent dispute proceeding in the Central District of California. Therefore, the active counsel for Harbor Freight in the ongoing Central District of California case (24-cv-08722) may differ or include additional attorneys specializing in patent litigation. In a related IPR proceeding (IPR2025-00805) involving Harbor Freight and Champion, Foley & Lardner LLP attorneys Michael R. Houston, Jeffrey S. Gundersen, and Kimberly K. Dodd initially represented Harbor Freight but later withdrew due to a settlement, with Merchant & Gould P.C. attorneys Thomas J. Leach and Taylor R. Stemler being substituted as new lead and back-up counsel. This suggests that Harbor Freight utilizes a variety of firms for its intellectual property matters.