David Hannon

TTAB Requires Cross-Examination By Oral Deposition in CAPTAIN CANNABIS Battle

In a precedential decision in a cancellation proceeding, the Trademark Trial and Appeal Board has ruled that Petitioner Laverne J. Andrusiek must cross-examine, by oral deposition, Respondent Cosmic Crusaders LLC’s witnesses who provided direct testimony via written declaration.  Laverne Andrusiek v. Cosmic Crusaders LLC   Andrusiek contends that he created a comic book character named “Captain Cannabis” in the 1970s, and operates a website identifying various books and other works related to that character since that time. Cosmic Crusaders appears to be associated with a cannabis activist under the moniker of “Captain Cannabis,” and related media, including a “Cosmic Crusaders” comic featuring a “Captain Cannabis” character. Cosmic Crusaders obtained the registration at issue for CAPTAIN CANNABIS , for comic books in Class 16, in 2015.   Andrusiek sought leave to cross-examine Cosmic Crusader’s witnesses by written questions, citing, as factual background, to the inconvenience and expense of conducting oral cross-examinations. Andrusiek was identified as being in Washington state, while Cosmic Crusader’s witnesses were identified as being in Tampa, Florida. Andrusiek cited 37 CFR 2.124(b)(3) as basis for the request:   A party desiring to take cross-examination, by written questions, of a witness who has provided testimony by affidavit or declaration… Read More »TTAB Requires Cross-Examination By Oral Deposition in CAPTAIN CANNABIS Battle

Webpage Tutorial Software Patent Invalidated

Pendo.io, Inc. obtained a dismissal of Walkme Ltd.’s patent infringement suit in the Southern District of New York (Case No. 18cv7654), in a ruling that invalidated Walkme’s US Patent No. 9,922,008 under 35 U.S.C. § 101.  Walkme’s patent describes and claims a method of creating tutorial software to walk users through a webpage, where the software dynamically adapts to edits in the page or different formatting of the page.  The Court ruled that the patent was directed to a patent-ineligible abstract idea under the Alice test, because it claimed no more than the goal of the software (dynamic adaptation) with general computing components. Claim 1  of the ‘008 Patent was the focus of the Court’s analysis.  It recites: A method of creating a dynamically adaptable tutorial, comprising:  selecting a website comprising at least one web document having a plurality of separate graphical user interface (GUI) elements each adapted for receiving an input from a browsing user;  instructing a browser to present said at least one web document in parallel to a user interface for defining a tutorial session of a multistep process related to said website and receiving from said user interface a plurality of descriptive elements which define said tutorial session, each… Read More »Webpage Tutorial Software Patent Invalidated

PTAB Invalidates Construction “Price Schedule” Patents

Autodesk, Inc. petitioned for covered business method review of two “Automated pricing system” patents of Uniloc USA, Inc. and Uniloc Luxembourg, S.A. CBM 2016-00042 re USPN 7783523; CBM 2016-00043 re USPN 8515820.  In parallel September 2017 decisions, the PTAB invalidated the patents for claiming patent-ineligible subject matter. The patents (the ‘820 Patent is a continuation of the ‘523 Patent) are directed to “add-on computer software code” for generating a price schedule from an electronic construction plan file.  Generally, the patents aim to provide increased efficiency and accuracy in the construction cost estimation process, towards avoiding cost overruns and issues with obtaining construction loans.  The PTAB ruled that the patents are ineligible for being directed to the abstract idea of generating prices for construction — a task that can be accomplished without automation.  The PTAB further found that no additional inventive concepts were covered in the claims to render them patent-eligible.  Specifically, the PTAB cited to evidence offered by the petitioner (Autodesk) showing that pricing software add-ons for electronic construction plan files were known prior to the effective dates of the patents.  The PTAB, citing the Supreme Court’s Alice decision, further found that the patents claimed merely “linkage of existing materials… Read More »PTAB Invalidates Construction “Price Schedule” Patents

Court Finds Evonik Entitled to Permanent Injunction

In August 2009, Evonik Degussa GmbH filed a complaint for infringement of its U.S. Patent No. 7,378,528 directed to olefin metathesis catalysts containing NHC (N-heterocyclic carbene) ligands against Materia Inc.  After nearly eight years of lengthy litigation, and following findings of validity, infringement, and damages before a jury, the Court has now ruled that Evonik is entitled to a permanent injunction.  Evonik Degussa GmbH v. Materia Inc., 1-09-cv-00636, (D. Del. Aug. 9, 2017). While the Court directed the parties to confer on the specific terms, the Court analyzed Evonik’s entitlement to a permanent injunction per the traditional factors as interpreted in the Supreme Court’s eBay decision:  (1) irreparable harm, (2) adequacy of monetary damages, (3) balance of hardships, and (4) public interest.  eBay, Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006). For irreparable harm, the Court cited the trial record regarding the parties’ competition and Evonik’s unwillingness to license competitors under the patent-in-suit. For adequacy of monetary damages, the Court relied on the same “irreparability” factors – competition and unwillingness to license, coupled with Evonik’s maintenance of its unwillingness to license through the lengthy litigation.  The Court rejected Evonik’s argument that Materia’s ability to pay a further judgment was in… Read More »Court Finds Evonik Entitled to Permanent Injunction

Copyrightability Clarified for Designs of “Useful” Articles

On March 22, 2017, the U.S. Supreme Court decided Star Athletica, L.L.C. v. Varsity Brands, Inc., ruling that decorative designs of cheerleading uniforms may be eligible for copyright protection.[1]  In so deciding, the Court clarified the application of the copyright laws to designs of “useful” articles. Previously, as has been my experience in the registration and enforcement of designs of “useful” articles, the “useful” nature of an item has been broadly cited as excluding, or severely limiting, the protection of copyright laws to the design/ornamentation of such an item.  However, the Supreme Court has now clarified that the shadow of utility does not limit the otherwise available statutory scope of protectable expression. By the example of the Star Athletica case, while the overall “cut” of a uniform is utilitarian (useful as clothing) and not protectable expression, protection is available to decorative works on that uniform, even if bounded by that utilitarian shape, to the extent those works could be perceived separately therefrom and fixed in to decorate another tangible medium. Background – “Useful” Nature as a Tool to Exclude Protections Prior to this decision, a claim of copyright protection in a “useful” item was often subject to attack being overridden,… Read More »Copyrightability Clarified for Designs of “Useful” Articles

Patent Infringement Claims Requiring a Combination of the Covered Product and Other Components Excluded From Indemnification

A recent decision from the U.S. Court of Appeals for the Eleventh Circuit, Am. Family Life Assur. Co. v. Intervoice, Inc., No. 12-13210, 2014 U.S. App. LEXIS 5585 (11th Cir., March 27, 2014), illustrates the need for careful consideration of intellectual property infringement indemnification clauses, and exclusions thereto, especially for products that do not work or operate independently. American Family Life Assurance Company (“Aflac”) sought indemnity from Intervoice, Inc. (“Intervoice”) for a third party’s patent infringement claims associated with, in part, an interactive voice response system purchased from Intervoice.  The U.S. District Court for the Middle District of Georgia granted summary judgment in favor of Intervoice, finding that Aflac had no right to indemnity for the third party’s claims from Intervoice under the purchase agreement for the system.  On appeal, the 11th Circuit affirmed the District Court’s decision in favor of Intervoice, finding that the indemnity provision of the purchase agreement unambiguously excluded third party’s claims from coverage. Aflac had sought indemnity from Intervoice for patent infringement claims by Ronald A. Katz Technology Licensing LP (“RAKTLP”).  As noted by the 11th Circuit, the parties acknowledged that RAKTLP’s claims against Aflac only covered Intervoice’s system in combination with one or more… Read More »Patent Infringement Claims Requiring a Combination of the Covered Product and Other Components Excluded From Indemnification