Court Refuses "Back Door" Attempt at Claim Construction

Posted on September 14, 2011 by R. David Donoghue

Minemyer v. B-Roc Reps., Inc., No. 07 C 1763, Slip Op. (N.D. Ill. Mar. 22, 2011) (Cole, Mag. J.).

Judge Cole denied defendants' summary judgment of noninfringement. The motion was premised upon an effort to amend the construction of "approximately perpendicular" which the parties previously agrees was "approximately ninety degrees" to no more than five degrees away from a ninety-degree angle. Defendants' accused couplers had threads at an eighty degree angle - ten degrees away from ninety degrees. But the parties had already cancelled their claim construction process because they agreed upon all constructions, including that approximately perpendicular meant approximately ninety degrees." Even if the arguments were timely, and not a "back door" attempt to avoid the Court's schedule, defendants' evidence did not support their construction:

  • The inventor's testimony suggested ten degrees did not meet the "approximate" modifier. But the inventor's testimony is heavily discounted if not disregarded, in claim construction.
     
  • The parties experts also opined that ten percent was outside "approximate." But that was evidence for the trier of fact to weight in considering infringement.
     
  • The examiner's use of "perpendicular" without the "approximately" modifier was irrelevant because the allowed claim contains the modifier.
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No Protection for Wholly Functional Trade Dress

Posted on December 21, 2009 by R. David Donoghue

Minemyer v. B-Roc Reps., Inc., No. 07 C 1763, Slip Op. (N.D. Ill. Oct. 27, 2009), (Cole, Mag. J.). 

Judge Cole granted defendants' motion for summary judgment regarding plaintiff's Lanham Act trade dress and related state law claims. Plaintiff alleged that defendants infringed his trade dress in certain plastic pipe couplers. The trade dress consisted of the coupler's length, diameter, internal lead-in taper, flutes, arrows, the solid reinforced area between the flutes and end taper, and the base coloring of the material. But the Court held that plaintiff admitted that each element of his alleged trade dress was functional. Of particular note, the coupler's color was dictated by the parties' customers. And the flutes were the subject of a utility patent held by plaintiff. The fact that the flutes could have been designed using another shape did not matter. The Court held that once an element is functional, you need not consider whether there are other ways to obtain the function. 

Although the case was resolved on functionality grounds, the Court also considered plaintiff's secondary meaning arguments. But plaintiff provided no direct evidence of secondary meaning. Instead of survey evidence or consumer testimony, plaintiff relied upon direct copying. But event assuming defendants copied plaintiff's coupler, that alone did not create secondary meaning. Plaintiff also needed to show that defendants intended to steal plaintiff's goodwill. No such evidence was offered.

The Court also held that there was not a likelihood of confusion. Defendants printed their names on their products. And the parties' customers were very sophisticated purchasers and were unlikely to be confused. The customers competitively bid its purchases of the couplers, so purchasing decisions were made directly with the parties, not by looking at the products in bins side-by-side at a hardware store.

Finally, the Court held that plaintiff's state law Consumer Fraud and Deceptive Trade Practices Act claim were coterminous with the Lanham Act claim. The Court, therefore also granted summary judgment as to the state law claims.

* Click here fore more on this case in the Blog's archives.

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