Poly-Vac v. Plastic Sterilizing CV-94-635-B 10/03/95 UNITED STATES DISTRICT COURT FOR THE DISTRICT OF NEW HAMPSHIRE
Poly-Vac, Inc.
v. Civil No. 94-635-B
Plastic Sterilizing Trav Corp.
MEMORANDUM AND ORDER
Poly-Vac brings this action alleging patent and trade dress
infringement in violation of federal and state law. Defendant
Plastic Sterilizing Tray Corporation ("PST") moves for summary
judgment on all of Poly-Vac's claims. In response, Poly-Vac
moves for summary judgment on its claim of patent infringement
and opposes summary judgment on the other claims. For the
reasons that follow, I deny both motions.
BACKGROUND
The parties' dispute concerns a plastic tray that is used to
sterilize, transport, and store medical instruments. Poly-Vac
owns a patent for a three-part sterilizing tray assembly. United
States Patent Number 5,098,676 ("'676 patent").1 The '676 patent
covers a product with two locking tray halves that enclose a
silicone rubber mat with upwardly tapering "fingers" on its upper
surface and raised projections on its bottom surface. The raised
1 The patent, issued to John A. Brooks, was assigned to Poly-Vac in December 1994.
1 projections suspend the mat above the tray bottom and thereby
prevent condensation from building up between the mat and the
surface of the lower tray. The patent also provides that both
tray halves and the silicone mat will have aligned apertures to
facilitate drainage. PST makes a similar three-part sterilizing
tray. However, PST's tray suspends the mat above the bottom tray
by using projections rising from the surface of the bottom tray
rather than projections descending from the mat.
Poly-Vac alleges that PST's trays infringe the '676 patent.
35 U.S.C.A. § 271 (West 1984 & Supp. 1995). It also contends
that Poly-Vac is liable under the Lanham Act, 15 U.S.C.A. §
1125(a) (West. Supp. 1995), the common law of unfair competition
and New Hampshire's Unfair Trade Practices Act, N.H. Rev. Stat.
Ann. ch. 358-A (Supp. 1994), because the size, shape and color of
PST's trays are so similar to Poly-Vac's trays that the public is
likely to be confused as to the trays' origin. PST moves for
summary judgment on all of Poly-Vac's claims, arguing that (1)
the '67 6 patent is invalid because "the device it describes would
have been obvious to a person having ordinary skill in the prior
art"; (2) the patent is unenforceable because Poly-Vac
intentionally failed to disclose pertinent prior art when it applied for the '676 patent; (3) the doctrine of prosecution
history estoppel prevents Poly-Vac from claiming patent
infringement; and (4) Poly-Vac's remaining claims cannot succeed
because the features common to both trays are not eligible for
trade dress protection. Poly-Vac opposes these claims and seeks
partial summary judgment on its infringement claim.
DISCUSSION
Summary judgment is appropriate in patent and trade dress
infringement suits, as in other actions, only when the materials
on file show that no genuine issue exists as to any material
facts, and the moving party is entitled to judgment as a matter
of law. Fed. R. Civ. P. 56(c); Tone Bros., Inc. v. Sysco Corp.,
28 F.3d 1192, 1196 (Fed. Cir. 1994), cert, denied, 115 S. C t .
1356 (1995). A "material fact" is one "that might affect the
outcome of the suit under the governing law," and a genuine
factual issue exists if "the evidence is such that a reasonable
jury could return a verdict for the nonmoving party." Anderson
v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). The record and
all reasonable inferences therefrom are construed in favor of the
nonmoving party. Griqqs-Rvan v. Smith, 904 F.2d 112, 115 (1st
Cir. 1990).
3 If the party moving for summary judgment has the burden of
proof at trial, the court will grant the motion only if: (1) the
moving party initially produces enough supportive evidence to
entitle the movant to judgment as a matter of law (i.e., no
reasonable jury could find otherwise even when construing the
evidence in the light most favorable to the nonmovant), and (2)
the nonmovant fails to produce sufficient responsive evidence to
raise a genuine dispute as to any material fact. Fitzpatrick v.
Atlanta, 2 F.3d 1112, 1115-17 (11th Cir. 1993). In contrast, if
the nonmovant bears the burden of proof, the court will grant the
motion if: (1) the movant alleges that the nonmovant lacks
sufficient proof to support one or more elements of her case, and
(2) the nonmovant is unable to produce sufficient responsive
evidence to withstand a motion for judgment as a matter of law.
Id.; see also, Mesnick v. General Elec. Co., 950 F.2d 816, 822
(1st Cir. 1991), cert, denied, 504 U.S. 985, (1992). Thus, the
amount and guality of the responsive evidence that the nonmovant
must produce to successfully resist a motion for summary judgment
will depend upon whether the nonmovant bears the burden of proof
at trial. Fitzpatrick, 2 F.3d at 1115-17.
With these standards in mind, I turn to the merits of the
cross motions.
4 A. Validity of the '676 Patent
PST argues that the '67 6 patent2 is invalid because the
device it describes would have been obvious to a person having
ordinary skill in the pertinent art.3 A patent will be deemed to
2The '676 patent consists of the following claim: A sterilization tray assembly for sterilizing, transporting, and storing instruments, comprising: a tray, having; an upper tray section including a plurality of upper tray ports spaced in a predetermined pattern; a lower tray section including a plurality of lower tray ports spaced in a predetermined pattern; locking means for engaging said upper tray section and said lower tray section to form a sealing contact between said tray sections; and a mat made of silicone rubber and sized to fit said tray, said mat being positioned between said tray sections and having an upper surface and a lower surface, said mat including; a plurality of mat ports in said mat spaced in a predetermined pattern wherein said mat ports and said lower tray ports are in vertical alignment; a plurality of upwardly tapered, vertical projections spaced in a predetermined pattern on said upper surface, said vertical projections having tips at their free ends to provide support for instruments above said upper surface; a plurality of downwardly projecting support feet depending from said lower surface spaced in a predetermined pattern for spacing said lower surface above said lower tray section.
3 PST has not counterclaimed for a declaratory judgment on the validity of the '676 patent. Instead, it invokes invalidity as an affirmative defense to Poly-Vac's patent infringement claim. See 35 U.S.C.A. § 282 (West 1984 & Supp. 1995) (recognizing that invalidity is an affirmative defense to an
5 be obvious
if the differences between the subject matter sought to be protected and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.
35 U.S.C.A. § 103. Although the obviousness of an invention is
determined as a matter of law, this legal determination must be
based on subsidiary factual determinations. Electro Medical
Svs., S.A. v. Cooper Life Sciences, 34 F.3d 1048, 1052 (Fed. Cir.
1994). Specifically, the court must determine (1) the "scope and
content" of the prior art, (2) "the differences between the prior
art and the claims at issue," (3) "the level of ordinary skill in
the pertinent art," and (4) the effect, if any, of "[s]uch
secondary considerations as commercial success, long felt but
unsolved needs [and] failure of others [to invent]." Ryko Mfg.
Co. v. Nu-Star, Inc., 950 F.2d 714, 716 (Fed. Cir. 1991)
(internal guotation omitted); Heidelberqer Druckmaschinen A.G. v.
Hantscho Commercial Prods., 21 F.3d 1068, 1071 (Fed. Cir. 1994).
In cases such as this, where the patent at issue combines
references in the prior art, "the claimed invention must be
infringement claim)
6 considered as a whole, multiple cited prior art references must
suggest the desirability of being combined, and the references
must be viewed without the benefit of hindsight afforded by the
disclosure." In re Paulson, 30 F.3d 1475, 1482 (Fed. Cir. 1994);
accord In re GPAC, Inc., 57 F.3d 1573, 1581 (Fed. Cir. 1995) .
All facts that are essential to an obviousness claim must be
proved by the proponent of the claim by clear and convincing
evidence. Ryko, 950 F.2d at 716. Accordingly, in reviewing
PST's summary judgment motion, I must determine whether PST has
produced sufficient evidence to reguire a finding of obviousness
when the evidence is construed in Poly-Vac's favor.
The parties do not dispute that the prior sterilizing trays
manufactured by Poly-Vac and a competitor ("Riley") represent
pertinent prior art showing all of the limitations in the '676
patent except the use of downwardly projecting support feet to
suspend the mat above the lower tray surface. The parties also
agree that another patent ("Spence patent") is relevant as prior
art teaching the use of support feet in a sterilizing system.
The Spence patent discloses a sterilization system using a
removable interior basket supported by a base having "a plurality
of support feet 109 spaced about the inner periphery of inner
wall 82 which support basket 106 clear of the bottom base 60.
7 This is to prevent basket 60 from trapping condensation within
the sterilization system 10 when steam is utilized as the
sterilizing media."
The parties' primary areas of disagreement over the
obviousness of the '676 patent concern (1) the degree of
difference between the support feet specified in the Spence
patent and the support feet specified in the '676 patent, and (2)
the extent to which the earlier Poly-Vac and Riley trays and the
Spence patent suggest the combination of prior art represented by
the '67 6 patent. Such guestions must be resolved from the
standpoint of a person of ordinary skill in the pertinent art.
In re GPAC, Inc., 57 F.3d at 1581. Since PST has failed to offer
any evidence that would permit me to determine the appropriate
skill level to be used in resolving these disputes, I must deny
its summary judgment motion.
B. Enforceability of the '676 Patent
PST next argues that the '67 6 patent is unenforceable due to
Poly-Vac's allegedly ineguitable conduct in failing to disclose
certain prior art.4 The defense of ineguitable conduct reguires
4 "Each individual associated with the filing and prosecution of a patent application has a duty of candor and good faith in dealing with the Office, which includes a duty to PST to "offer clear and convincing proof of the materiality of
the prior art, knowledge chargeable to the applicant of that
prior art and of its materiality, and the applicant's failure to
disclose the prior art, coupled with an intent to mislead the
[Patent Office]." Molins PLC v. Textron, Inc., 48 F.3d 1172,
1178 (Fed. Cir. 1995). To win summary judgment on the
unenforceability of the '676 patent, PST first must demonstrate
both the materiality of the allegedly omitted prior art and the
intent of the applicant to mislead the examiner. Therma-Tru
Corp. v. Peachtree Doors, 44 F.3d 988, 996 (Fed. Cir. 1995).
PST urges that intent is clearly shown by the parties'
actions in the prosecution history of the '676 patent. Culpable
intent may be inferred from a "showing of acts the natural
conseguences of which were presumably intended by the actor."
KangaROOS U.S.A., Inc. v. Caldor, Inc., 778 F.2d 1571, 1577 (Fed.
Cir. 1985). Nevertheless, at the summary judgment stage, PST
must show that the evidence implying culpable intent taken in
light of all of the circumstances is "so one-sided that the
factual issue of intent may be decided as a matter of law."
disclose to the Office all information known to that individual to be material to patentability as defined in this section." 37 C.F.R. § 1.56 (1994) . Paragon Podiatry Lab., Inc. v. KLM Lab., Inc. 984 F.2d 1182, 1190
(Fed. Cir. 1993). In view of the countervailing evidence
produced by Poly-Vac in support of its objection to PST's summary
judgment motion, this case does not fall into that limited class
of cases where the issue of intent can be determined as a matter
of law.
C. Patent Infringement
PST next invokes the affirmative defense of prosecution
history estoppel in claiming that Poly-Vac cannot prevail on its
infringement claim.
Prosecution history estoppel "precludes a patentee from
obtaining in an infringement suit patent protection for subject
matter which it relinguished during prosecution in order to
obtain allowance of the claims." Mark I Marketing Corp. v. R.R.
Donnelly & Sons, No. 95-1101, 1995 WL 544678, at *5 (Fed. Cir.
Sept. 14, 1995); Wang Lab., Inc. v. Toshiba Corp., 993 F.2d 858,
866 (Fed. Cir. 1993). The test for determining whether something
was relinguished is objective and the analysis must be undertaken
from the vantage point of "what a competitor reasonably would
conclude from the patent's prosecution history." Mark I, 1995 WL
544678 at *4; Wang Lab., 993 F.2d at 866. Moreover, in making
this determination, it is important to consider both what was
10 surrendered and the reasons for surrender. Southwall
Technologies v. Cardinal IG Co., 54 F.3d 1570, 1599 (Fed. Cir.
1995), petition for cert, filed, (Sept. 19, 1995). "Whether
estoppel applies is a question of law." Wang Lab., 993 F.2d at
866.
PST concedes for purposes of its estoppel claim that its
product meets all of the limitations set forth in the '676 patent
except for those that concern the location of the tray's mat
support feet. The PST tray holds the mat above the lower tray
surface through the use of projections extending upwards from the
surface of the lower tray whereas the '67 6 patent claims the
right to accomplish the same function through the use of
downwardly projecting support feet extending from the mat itself.
PST argues that Poly-Vac is estopped from claiming that the two
methods are equivalent because it limited its claim to the use of
downwardly projecting support feet in order to obtain the patent.
I reject this contention because it is based upon an incorrect
interpretation of the patent's prosecution history.
The original patent application had six claims. The Patent
Office rejected all six claims as obvious and the applicant
subsequently cancelled the original claims and substituted a
single new claim that resulted in the '676 patent. In
11 distinguishing this new claim from the prior art, the applicant
explained that, unlike the prior art, the claim's combination of
features, including a means to suspend the mat above the lower
tray surface, served to reduce retained condensation that could
promote the growth of bacteria. In suggesting this distinction,
however, the applicant did not narrow its initial application
based on the structure and location of the device's support feet.
Since the applicant never surrendered any portion of the original
claim that concerned the structure and location of the support
feet, Poly-Vac is not estopped from claiming that a similar
sterilization tray using support feet projecting upwards from the
lower tray surface infringes the '676 patent.
D. Trade Dress Infringement
At the June 20, 1995, hearing, the parties agreed that the
remainder of Poly-Vac's claims, violation of the Lanham Act,
common law unfair competition, and unfair and deceptive trade
practices, depend on whether PST's use of the same colors in its
tray constitute trade dress infringement. Trade dress is a
product's total image based on its features including its color.
Merriam-Webster, Inc. v. Random House, Inc., 35 F.3d 65, 70 (2d
Cir. 1994), cert, denied, 115 S. C t . 1252 (1995). To prove trade
dress infringement, Poly-Vac must show that its trade dress is
12 distinctive either inherently or because of an acquired secondary
meaning and that a likelihood of confusion exists between its
trays and PST's trays. Two Pesos, Inc. v. Taco Cabana, Inc., 112
S. C t . 2753, 2758 (1992); Jeffrey Milstein, Inc. v. Greger,
Lawlor, Roth, Inc., 58 F.3d 27, 31 (2d Cir. 1995). Color alone
may constitute a protectable trade dress if it meets the
criteria. See Oualitex Co. v. Jacobson Prods. Co., 115 S. C t .
1300, 1303 (1995) .
PST invokes the affirmative defense of functionality in
support of its summary judgment motion. See id.; Inwood Lab.,
Inc. v. Ives Lab., Inc., 456 U.S. 844, 862-63 (1982) (White, J.
concurring); Badger Meter Inc. v. Grinnell Corp., 13 F.3d 1145,
1151 (7th Cir. 1994). A product feature is functional "'if it is
essential to the use or purpose of the article or if it affects
the cost or quality of the article,' that is, if exclusive use of
the feature would put competitors at a significant non-
reputation-related disadvantage." Oualitex C o ., 115 S. C t . at
1304 (quoting Inwood Lab., Inc., 465 U.S. at 850, n.10). Color
may or may not be functional depending on the product. Oualitex
Co., 115 S. Ct. at 1304.
PST argues that the amber color of the tray lid is
functional because the pigment is due to a necessary ingredient
13 in the lid "to allow it to function satisfactorily at the
autoclave temperatures." Poly-Vac agrees that an ingredient of
the tray lids is amber but counters that Poly-Vac is able to tint
its lids, which are made with the same ingredient, to other
colors. As to the tray bottoms, PST states that the only colors
available are blue, grey, black, and white and that PST chose
blue, which is the same as Poly-Vac's trays. Poly-Vac states
that it uses different colors for tray bases that it produces for
private customers so that blue is not essential to making the
product. Both parties support their arguments with affidavits of
their corporate officers who are presumably knowledgeable about
the components of their products. Based on the evidence
presented, a genuine dispute of material fact exists as to the
functionality of the colors of the trays. Accordingly, summary
judgment is denied.
E. Poly-Vac's motion for suramary judgment
Poly-Vac bases its summary judgment motion in part on PST's
admission, limited to its own motion for summary judgment, that
PST's trays meet all the limitations of the '67 6 patent except
for its specification of "downwardly projecting support feet."
PST responds by arguing that its admissions were made for a
limited purpose and that they cannot be used to support Poly-
14 V a c 's motion.
Cross motions for summary judgment do not necessarily
establish undisputed facts. Wiley v. American Greetings Corp.,
762 F.2d 139, 140 (1st Cir. 1985). Also, concessions made by one
party for the limited purpose of supporting its own motion for
summary judgment do not carry over to an opponent's cross motion.
6 James W. Moore, Moore's Federal Practice 5 56.13 at 56-176-77
(2d ed. 1995). Here, PST specifically limited its concession to
its own motion for summary judgment, and, therefore, PST's
concessions are not available to support Poly-Vac's cross motion.
Poly-Vac bears the burden of proving its infringement claim
at trial.5 Therefore, as the moving party with the burden of
5 Poly-Vac relies on the doctrine of eguivalents to support its infringement claim. An accused product will infringe a patent under the doctrine of eguivalents if the differences between the patented product and the accused product are insubstantial when viewed from the perspective of a person of ordinary skill in the relevant art. Hilton Davis Chemical Co. v. Warner-Jenkinson Co., 62 F.3d 1512, 1519 (Fed. Cir. 1995) (en banc). Eguivalence is a guestion of fact. Id. at 1520. Among the factors that will bear on an eguivalence determination are: (1) the extent to which the two products include substantially the same function, way, and result; (2) "whether persons reasonably skilled in the art would have known of the interchangeability of an ingredient not contained in the patent with one which was"; (3) whether the alleged infringer engaged in copying; and (4) whether the alleged infringer designed around the patent. Id. at 1519 (guoting Graver Tank & Mfg. Co. v. Linde Air Products Co., 339 U.S. 605, 609 (1950)), 1521-22.
15 proof, Poly-Vac initially must provide enough credible evidence
that every limitation set forth in the '676 patent is found in
PST's trays so that no reasonable juror could find in PST's
favor. Wolverine World Wide, Inc. v. Nike, Inc., 38 F.3d 1192,
1196 (Fed Cir. 1994); Murphy v. Franklin Pierce Law Ctr., 882 F.
Supp. 1176, 1180 (D.N.H. 1994). The examples of the parties'
trays, offered by Poly-Vac, show that the products are indeed
similar but do not establish that PST's trays meet every
limitation in the '676 patent claim. For example, Poly-Vac has
not demonstrated that the different location of the support feet
in the two products is functionally equivalent or that the cover
on the PST trays includes a "locking means for engaging said
upper tray section and said lower tray section to form a sealing
contact between said tray sections" as described in the '676
patent claim. Therefore, Poly-Vac has failed to carry its burden
and summary judgment is denied.
____________________________ CONCLUSION
For the foregoing reasons the parties' motions for summary
judgment (document nos. 7 and 11) are denied.
16 SO ORDERED.
Paul Barbadoro United States District Judge October 3, 1995
cc: Bernard Sweeney, Esq. Martin Gross, Esq. Norman Soloway, Esq. Arnold Rosenblatt, Esq.