The opinion of the court was delivered by: William M. Skretny United States District Judge
Presently before this Court is Plaintiff Keystone Manufacturing Co., Inc.'s Motion to Construe Defendant Jaccard Corp.'s expired U.S. utility Pat. No. 4,463,476 ("the '476 patent").*fn1 Also before this Court is Jaccard's request to construe its expired U.S. design Pat. No. D-276,685 ("the '685 patent").*fn2 At issue is the evidentiary value of these two patents as it relates to Jaccard's trade dress infringement counterclaim. These motions are precipitated by this Court's previous decision on the parties' cross-motions for summary judgment. See Keystone Mfg. Co., Inc. v. Jaccard Corp., 394 F.Supp.2d 543 (W.D.N.Y. 2005). Familiarity with that decision is presumed.
Among other rulings in its prior decision, this Court denied Jaccard's request for summary judgment on its counterclaim for trade dress infringement under § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a). See id. at 552-562. In doing so, this Court found that summary judgment was precluded because of the existence of disputed issues of material fact, and because Markman*fn3 claim construction proceedings were necessary to determine the proper evidentiary value, if any, of the '476 patent under the framework set forth in TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 121 S.Ct. 1255, 149 L.Ed.2d 164 (2001). See Keystone, 394 F.Supp.2d at 562.
In TrafFix, the United States Supreme Court held that the existence of a prior utility patent claiming the features alleged to be protected trade dress constitutes strong evidence of functionality. TrafFix, 532 U.S. at 29.
A prior patent, we conclude has vital significance in resolving the trade dress claim. A utility patent is strong evidence that the features therein claimed are functional. If trade dress protection is sought for those features the strong evidence of functionality based on the previous patent adds great weight to the statutory presumption that features are deemed functional until proven otherwise by the party seeking trade dress protection. Where the expired patent claimed the features in question, one who seeks to establish trade dress protection must carry the heavy burden of showing that the feature is not functional, for instance by showing that it is merely an ornamental, incidental, or arbitrary aspect of the device.
Jaccard maintains that the design of its JACCARD(r) meat tenderizer is protected trade dress, and that Keystone has violated its intellectual property rights by selling the Deni(r) tenderizer. To succeed on this claim, Jaccard must establish that (1) its trade dress is distinctive as to the source of the product, (2) Keystone's product dress creates a likelihood of customer confusion, and (3) its trade dress is not functional. See Landscape Forms, Inc. v. Columbia Cascade Co., 113 F.3d 373, 377 (2d Cir. 1997); Fibermark, Inc. v. Brownville Specialty Paper Prods., Inc., No. 7:02-CV-0517, 2005 WL 1173562, at *3 (N.D.N.Y. May 11, 2005); 15 U.S.C. § 1125(a).
This Court resolved the first two elements in its prior decision. As to distinctiveness, which is a question of fact, this Court found that based on the evidence presented, particularly the expert witness reports, genuine issues of material fact exist concerning whether Jaccard's trade dress has developed "secondary meaning." See Keystone, 394 F.Supp.2d at 554-557; Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 211, 120 S.Ct. 1339, 1342, 146 L.Ed.2d 182 (2000) (trade dress is distinctive if it acquires "secondary meaning").
Similarly, on the second element, which also involves a question of fact, this Court canvassed the relevant Polaroid factors*fn4 and determined that the record contained conflicting evidence on the ultimate issue of whether there is a likelihood of confusion between the JACCARD(r) and Deni(r) meat tenderizers. See Keystone, 394 F.Supp.2d at 557-560.
The third element -- whether the JACCARD(r) meat tenderizer's trade dress is nonfunctional -- is the element that requires the instant claim construction proceedings. This Court previously recognized that functionality is a question of fact, and found that the competing expert opinions in the record raise disputed issues that must be resolved by the jury. Id. at 562. However, this Court further recognized that claim construction is an issue of law, and found that because of the possible evidentiary nature of Jaccard's '476 patent under TrafFix, further Markman proceedings would be required in advance of trial. Id.
As a result, Keystone filed a Motion to Construe the '476 utility patent, which it asserts claims the very features that Jaccard now maintains are protected as trade dress. Jaccard opposes this motion, and also requests that this Court construe its expired '685 design patent, which it argues raises a presumption of non-functionality. An examination of both patents is therefore necessary to determine their evidentiary value, if any. This Court turns to that task now.
A. Keystone's Motion to Construe the '476 Utility Patent
Before engaging in claim construction relative to the '476 utility patent, a threshold issue must be addressed. In TrafFix, the Court stated that "[w]here the expired patent claimed the features in question, one who seeks to establish trade dress protection must carry the heavy burden of showing that the feature is not functional." 532 U.S. at 30 (emphasis added). Implicit in this statement is the notion that the relevant prior patent (or patents) is the one covering the product for which trade dress protection is asserted. Here, there appears to be disagreement between the parties as to which prior utility patent covers the meat tenderizers at issue.
To this point, the parties and this Court have labored under the assumption that the relevant prior patent is the '476 patent. See, e.g. Keystone, 394 F.Supp.2d at 560-62 (noting that "[b]oth sides have focused on whether Jaccard's trade dress is claimed in Claim 15 of the '476 patent"). In fact, the thrust of Keystone's argument has consistently been that all elements of Jaccard's alleged trade dress are disclosed in the '476 utility patent, and are incorporated into Claim 15 of that patent by use of the "blade cover means" and "handle means" terms. Jaccard, however, now persuasively demonstrates that the meat tenderizers at issue are not of the variety disclosed in the '476 patent. Rather, they practice the '841 patent, which does not include the "means" terms present in Claim 15 of the '476 patent.
Patent construction principles are well settled, and were recently summarized by the Federal Circuit as follows:
Ascertaining the meaning of the claims requires that they be viewed in the context of "those sources available to the public that show what a person of skill in the art would have understood disputed claim language to mean." Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed.Cir. 2005) (en banc) (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111 (Fed.Cir. 2004)). Phillips teaches that different weights are to be placed on these sources. The most relevant source is the patent's specification, which is "the single best guide to the meaning of a disputed term." Id. at 1315 (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.Cir. 1996)). Next in importance is the prosecution history, which is also part of the "intrinsic evidence" that directly reflects how the patentee has characterized the invention. Id. at 1317. Extrinsic evidence-testimony, dictionaries, learned treatises, or other material not part of the public record associated with the patent-may be helpful but is "less significant than the intrinsic record in determining the legally operative meaning of claim language." Id. (quoting C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858, 862 (Fed.Cir. 2004)). The words of patent claims have the meaning and scope with which they are used in the specification and the prosecution history. Multiform Desiccants, Inc. v. Medzam, 133 F.3d 1473, 1478 (Fed.Cir. 1998).
MBO Labs., Inc. v. Becton, Dickinson & Co., No. 2006-1062, 2007 WL 163068, at *4 (Fed. Cir. Jan. 24, 2007).
In relevant part, the '476 patent discloses an improvement of the '841 patent through the addition of channels and holes in the handle to facilitate lubrication and drainage when being washed.(Sommer Aff., Exhibit C, Column 3: 10-12 ("This invention therefore provides an improved construction for the tenderizer of [the '841 patent] that enhances its cleanability and operability.").) For example, the '476 patent includes a lengthy discussion of the disadvantages of existing hand-held mechanical meat tenderizers, particularly as they relate to the inability to thoroughly clean the device after use. (Sommer Aff., Exhibit C, Column 1: 40-68.) The stated objective of the '476 patent is to eliminate these disadvantages and provide a more sanitary meat tenderizer. (Sommer Aff., Exhibit C, Column 2: 3-12.)
Moreover, in the "Summary of the Invention" portion of the '476 patent, the improvement is partially described as follows:
Extending from the interior of said housing or housings and the exterior of the handle is an aperture or apertures that will permit draining out of the water or liquid containing debris. The tenderizer can then after cleaning and draining be rinsed and thoroughly cleaned both in its exterior and interior portions. It is preferred that the apertures extend through both the upper and lower portions of the handle ...