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.

(West 1984 & Supp. 1995). It also contends

that Poly-Vac is liable under the Lanham Act,

(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.,

(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.,

(1986). The record and

all reasonable inferences therefrom are construed in favor of the

nonmoving party. Griqqs-Rvan v. Smith,

(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,

, 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.,

(1st Cir. 1991), cert, denied,

, (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

(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.

. 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,

(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.,

(Fed. Cir. 1991)

(internal guotation omitted); Heidelberqer Druckmaschinen A.G. v.

Hantscho Commercial Prods.,

(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,

(Fed. Cir. 1994);

accord In re GPAC, Inc.,

(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,

. 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.,

. 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.,

(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,

(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.,

(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."

(1994) . Paragon Podiatry Lab., Inc. v. KLM Lab., Inc.

(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,

(Fed. Cir.

Sept. 14, 1995); Wang Lab., Inc. v. Toshiba Corp.,

,

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,

; 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.,

(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.,

(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.,

(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.,

(1982) (White, J.

concurring); Badger Meter Inc. v. Grinnell Corp.,

(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.,

(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.,

(Fed. Cir. 1995) (en banc). Eguivalence is a guestion of fact.

. 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.

(guoting Graver Tank & Mfg. Co. v. Linde Air Products Co.,

(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.,

(Fed Cir. 1994); Murphy v. Franklin Pierce Law Ctr.,

(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.

17