Tactical Medical Solutions, Inc v. Karl et al
Filing
168
MEMORANDUM Opinion and Order Signed by the Honorable John J. Tharp, Jr on 6/11/2019: For the reasons stated in the accompanying Memorandum Opinion and Order, TMS's partial motion for summary judgment, ECF No. 135, is granted in part. EMI's Second Affirmative Defense survives summary judgment only to the extent that it asserts 35 U.S.C. § 171 (functionality) as a basis for invalidity of the '642 design patent and 35 U.S.C. § 103 (obviousness) as a basis for invalidity of the '064 and '620 utility patents. Summary judgment in favor of TMS is granted as to EMI's Third and Eleventh Affirmative Defenses, and EMI's First Affirmative Defense is stricken. TMS's motion for summary judgment is otherwise denied. This case is set for a status hearing on June 25, 2019 at 9:00 a.m. Mailed notice(air, )
IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION
TACTICAL MEDICAL SOLUTIONS,
INC.,
Plaintiff,
v.
DR. RONALD KARL and EMI
EMERGENCY MEDICAL
INTERNATIONAL a/k/a
EMERGENCY MEDICAL
INSTRUMENTS,
Defendants.
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No. 14 C 06035
Judge John J. Tharp, Jr.
MEMORANDUM OPINION AND ORDER
Plaintiff Tactical Medical Solutions, Inc. (“TMS”), a business that designs and sells
emergency medical products, asserts an array of claims against defendants Dr. Ronald Karl and
his sole proprietorship, Emergency Medical International a/k/a Emergency Medical Instruments
(“EMI”). TMS alleges that EMI infringed on TMS’s design and utility patents by selling a
“knockoff” version of TMS’s SOF tourniquet, and that EMI falsely advertised the knockoff by
using images of the SOF tourniquet on its website and in its product catalogs. EMI, in turn, asserts
counterclaims alleging that TMS infringed on EMI’s TACMED trademark, and that TMS
interfered with EMI’s business relationships with its distributors by sending them threatening
cease-and-desist letters. TMS moves for summary judgment on the bulk of the claims and
counterclaims remaining in this case and certain of EMI’s affirmative defenses. A genuine dispute
of material fact exists as to the validity of TMS’s patents, but only on one of the grounds EMI
asserts in its affirmative defense as to the design patent (functionality under 35 U.S.C. § 171(a))
and one as to the utility patents (obviousness under 35 U.S.C. § 103). EMI has offered no support
for two of its other affirmative defenses, but TMS has not established that no material fact dispute
exists as to the other claims and counterclaims. TMS’s motion for partial summary judgment, ECF
No. 135, is therefore granted in part and denied in part.
I.
Background
Defendant Karl has done business through EMI1 and has sold emergency medical products
under the TACMED mark since at least as early as 2002. Plaintiff TMS was co-founded in 2003
by Ross Johnson, who continues to serve as its president and CEO. TMS began selling similar
emergency medical products under the TACMED mark around 2008. A few years later, EMI
began selling its Tactical Application Tourniquet (the “T.A.T. tourniquet”), which TMS alleges is
an inferior knockoff version of TMS’s SOF tourniquet and infringes on TMS’s design and utility
patents. Shortly after filing this suit, but before serving the complaint on EMI, TMS sent letters to
EMI’s distributors informing them that TMS had filed a lawsuit alleging intellectual property
violations against EMI and another distributor, and demanding that the distributors stop selling
EMI’s TACMED products and the T.A.T. tourniquet. TMS now moves for partial summary
judgment regarding the validity and infringement of all three of its patents at issue in this case
(Counts I–III; Counterclaims VIII, X, and XII2; and First and Second Affirmative Defenses); its
1
Throughout the remainder of this opinion, the Court uses “EMI” to refer collectively to
EMI and Karl. As discussed in the Court’s prior ruling denying TMS’s motion to dismiss various
EMI counterclaims on standing grounds, the evidence of record establishes, if barely, that EMI is
an unincorporated sole proprietorship owned and operated by Karl. See Order dated Sept. 26, 2017
at 2–5, ECF No. 125.
2
TMS’s brief appears to contain a typo requesting summary judgment on Counterclaim IX
(seeking declaratory judgment of invalidity of ‘064 utility patent) instead of Counterclaim XII
(seeking declaratory judgment of non-infringement of ‘620 utility patent). See Mem. 22, ECF No.
141. Counterclaim IX has already been dismissed. See Order dated Sept. 21, 2015, ECF No. 62
(granting motion to dismiss invalidity counterclaims). No amended counterclaims were filed.
2
false representation claim (Counts VIII, X, and XI3); EMI’s trademark infringement counterclaims
(Counterclaims I–IV and VII); and EMI’s tortious interference counterclaims (Counterclaims V
and VI). TMS also moves for summary judgment as to EMI’s Third and Eleventh Affirmative
Defenses asserting, respectively, that TMS is estopped from making certain arguments and that
TMS’s claims are barred by license. EMI does not oppose TMS’s motion for summary judgment
on EMI’s Eleventh Affirmative Defense, see Resp. 2 n.1, ECF No. 143, and EMI has not pointed
to evidence or made argument in support of its Third Affirmative Defense.4
A.
‘642 Design Patent
In 2011, TMS obtained United States Design Patent No. D649,642 (“the ‘642 design
patent”) for the shape of the SOF tourniquet handle’s beveled ends, as depicted by the unbroken
lines in figures one through five below.
3
Although TMS did not reference Counts X and XI (both alleging unfair competition based
on EMI’s use of the tourniquet photo) in its motion for summary judgment, TMS requests
summary judgment on those counts in its memorandum of law in support of its motion. See Mem.
20–21, ECF No. 141. The same is true as to EMI’s Third Affirmative Defense. See id. at 13–14.
4
A statement can be found in paragraph 33 of EMI’s statement of facts, ECF No. 144, and
paragraph 41 of Karl’s declaration, ECF No. 145, that could be read as support for the portions of
EMI’s Third Affirmative Defense relating to its utility patents, but the Court declines to draw that
connection in the absence of EMI having done so.
3
TMS alleges in Count III of its complaint that EMI’s T.A.T. tourniquet infringed on the
‘642 design patent. EMI asserts non-infringement5 and invalidity of the ‘642 design patent in its
First and Second Affirmative Defenses, respectively, and seeks a declaratory judgment through its
Counterclaim X that it has not infringed on the ‘642 design patent. The T.A.T. tourniquet is
depicted directly below, and the T.A.T. tourniquet handle removed from its base is depicted in the
second image below.
5
Although “non-infringement” is routinely treated as an affirmative defense to an
infringement claim, this practice appears to ignore the distinction between defenses, which do not
need to be affirmatively pleaded, and affirmative defenses, which do. See Fed. R. Civ. P. 8(c).
“[G]enerally, any defenses that ‘admit the allegations of the complaint but suggest some other
reason why there is no right of recovery [or] concern allegations outside of the plaintiff’s prima
facie case that the defendant therefore cannot raise by simple denial in the answer’ are considered
affirmative defenses.” Shell Oil Co. v. United States, 896 F.3d 1299, 1315 (Fed. Cir. 2018) (citing
5 WRIGHT & MILLER, FED. PRAC. & PROC. § 1271). EMI’s “non-infringement” affirmative
defenses are, in substance, no different than its counterclaims for declarations of non-infringement
of the three patents at issue and is therefore stricken.
4
EMI does not dispute that its “T.A.T. tourniquet handle has relatively identically sized,
spaced, and positioned opposed pyramidal/conical tapering endcaps corresponding to the design
claimed in the ‘642 patent.” EMI’s LR 56.1(b) Resp. to TMS’s LR 56.1(a) Statement of Material
Facts (“DSOF”) ¶ 22 Resp., ECF No. 144. EMI instead contends that TMS’s ‘642 design patent
is invalid because the truncated cone-shaped design of the handle ends is primarily functional
rather than ornamental, see 35 U.S.C. § 171(a), and because the design was anticipated by prior
art, see 35 U.S.C. § 102.
1.
Functionality
As to the functionality grounds for invalidity pursuant to 35 U.S.C. 171(a), EMI asserts
that the beveled ends of the SOF tourniquet are primarily functional because they “allow for easy
5
insertion of the handle ends in the locking rings to lock the handle in place when the tourniquet
has been deployed.” DSOF ¶ 35; Karl Decl. ¶ 44, ECF No. 145. Indeed, two of TMS’s utility
patents for the SOF tourniquet describe the functionality of the beveled handle ends. For example,
TMS’s U.S. Patent No. 7,776,064 (the ‘064 patent) states that “Handle G is beveled and notched
on the surface area at each end of handle G to facilitate the securing of handle G into the locking
rings,” ECF No. 1-1 at col. 3:34-36 (emphasis added), and TMS’s U.S. Patent No. 8,303,620
patent (the ‘620 patent) identically states that “Handle G includes bevels and notches mm on the
surface area at each end of handle G to facilitate the securing of handle G into the locking rings,”
ECF No. 1-3 at col. 3:49-52 (emphasis added).6 TMS co-founder and CEO Ross Johnson himself
said that, at the time the patent application was filed, he believed the truncated cones at the ends
of the handle “would make [the tourniquet] easier to use.” DSOF ¶ 37; Patras Decl., Ex. 10,
Johnson Dep. at 97:14–98:11 and 173:12–177:2, ECF No. 146-10. Patents issued for other
products have also generally described the utility of beveled ends to facilitate insertion. For
example, U.S. Patent No. 4,995,591, which describes fence slats designed to be inserted into a
channel, states that the “purpose of beveling the end is to facilitate insertion of the slat
perpendicularly into the channel,” Karl Decl., Ex. 3 at col. 2:7, ECF No. 145-3, and U.S. Patent
No. 5,979,276 states that special tools used to trim the inner surface of a hose end typically have
“a beveled end for easy insertion into the hose end,” Karl Decl., Ex. 4 at col. 2:42, ECF No. 1454.
TMS contends that it has not advertised any functional aspects of the handle ends, that
Johnson eventually realized that the shape of the handle-ends did not make the tourniquet easier
6
TMS asserts, without explanation, that neither of these patents describe any function for
the beveled handle ends. See TMS’s LR 56.1 Statement of Material Facts to Which There Is No
Genuine Dispute (“PSOF”) ¶¶ 31–32; Johnson Decl. ¶ 30, ECF No. 137.
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to use, and that other tourniquets have similar handles but different handle-end designs. EMI
responds that none of the other handle end designs TMS cites are to be used with the locking rings
that were disclosed in TMS’s patents-in-suit.
2.
Prior Art
EMI also argues that the ‘642 design patent is invalid pursuant to 35 U.S.C. § 102 because
it was anticipated by prior art: U.S. Patent No. 1,360,946 titled “Spark Plug” and U.S. Patent No.
1,855,482 titled “Knob for Drawers or the Like.” EMI argues that “[e]ach of these two patents
have an identical or at least substantially similar design to the ends of the handle of the tourniquet
claimed in the []‘642 patent.” DSOF ¶ 39; Karl Decl. ¶ 49. Representative figures of the spark plug
(left) and drawer knob (right) are reproduced below.
B.
‘064 and ‘620 Utility Patents
TMS also owns U.S. Patent Nos. 7,776,064 and 8,303,620 (“the ‘064 and ‘620 utility
patents”) for a tourniquet article. TMS alleges in Counts I and II of its complaint that EMI infringed
those patents. EMI asserts non-infringement and invalidity of the ‘064 and ‘620 utility patents in
its First and Second Affirmative Defenses and seeks declaratory judgment through its
Counterclaims VIII and XII that it did not infringe on those patents. EMI argues that the ‘064 and
‘620 utility patents are invalid because they were anticipated pursuant to 35 U.S.C. § 102 or
7
obvious pursuant to 35 U.S.C. § 103 based on prior art. It also asserts that even if the patents are
valid, its T.A.T. tourniquet does not infringe upon the “substantially rigid base” claim limitation
of those patents.
1.
Prior Art
EMI contends that the ‘064 and ‘620 utility patents are invalid because they were
anticipated pursuant to 35 U.S.C. § 102 or obvious pursuant to 35 U.S.C. § 103 based on prior art.
The prior art references EMI cites are both for tourniquets: One is the “Norman W. Brothers”
tourniquet, Karl Decl., Ex. 1, ECF No. 145-1, and the other is the “McMillan” tourniquet, Karl
Decl., Ex. 2, ECF No. 145-2. EMI asserts that “claims 1, 14, 15, and 17 of the ‘064 patent are
anticipated by Brothers under 35 U.S.C. § 102” and that “[a]ll of the asserted claims (1-5, 7-12
and 14-19 of the ‘064 patent and 1-4, 6-8, 10-11 and 13 of the ‘620 patent) are obvious over
Brothers alone or in combination with U.S. Patent No. 6,899,720 to McMillan issued May 31,
2005.” DSOF ¶ 34; Karl Decl. ¶ 43; Resp. 30, ECF No. 143. Karl’s declaration includes claim
charts explaining why Brothers, McMillan, or some combination of those prior art references
renders the claims anticipated or obvious. See Karl Decl., “The ‘064 Patent” and “The ‘620 Patent”
charts following ¶ 43 at 9–18, ECF No. 145 (stating that Brothers discloses much of what is
described in the ‘064 and ‘620 patent claims and stating, e.g., as to claim 9 of the ‘064 patent that
“McMillan discloses a tourniquet 10 with a handle lock (24 or 28) attached to a base 12 and
positioned to receive an end of a handle 20. It would have been obvious to one of ordinary skill in
the art at the time of the alleged invention to modify Brothers as taught by McMillan in order to
secure the handle to the base.”).
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2.
Substantially Rigid Base
EMI also contends that even if the ‘064 and ‘620 utility patents are valid, EMI did not
infringe on them because its T.A.T. tourniquet did not have a “substantially rigid base” as that
element of the relevant patent claims has been construed by this Court. This Court previously
construed “substantially rigid base” as “a base that provides sufficient rigidity to avoid binding
and crushing while being flexible enough for use on a limb and facilitating storage and carriage.”
Mem. Op. and Order dated Sept. 26, 2017 at 14, ECF No. 126. In support of TMS’s infringement
claim, TMS president and CEO Ross Johnson testified that “the base of the T.A.T. tourniquet is
flexible enough to apply to a limb but is rigid enough that it does not bind and crush when the
handle is twisted,” Johnson Decl. ¶ 58, ECF No. 137, and TMS Vice President Richard Hester
testified that “when the T.A.T. tourniquet is properly applied and the handle is twisted, the base
does not bind the skin and generally maintains its form, that is, it is not crushed.” Hester Decl.
¶ 13, ECF No. 139. TMS also submitted a video demonstration of Hester applying the T.A.T.
tourniquet to his own arm. Hester Decl. ¶¶ 12–13, Ex. 1/A, ECF No. 139.
EMI, however, contends that the base of its T.A.T. tourniquet is more flexible than the base
of the Brothers prior art reference and that it is “certain” that the Brothers prior art reference base
is more flexible than “substantially rigid.” DSOF ¶ 29; Karl Decl. ¶ 35; Resp. 29, ECF No. 143.
The base of the Brothers tourniquet is described in its patent as “preferably formed of relatively
thick leather and of such stiffness as to eliminate free bending.” DSOF ¶ 32; Karl Decl. ¶ 36, Ex.
1, Norman W. Brothers Tourniquet No. 2,387,428 at col. 2:11-12, ECF No. 145-1. Karl asserts
that “what TMS contends was the ‘base’ of the T.A.T. tourniquet is more flexible than a strap of
relatively thick leather of such stiffness as to eliminate free bending. For example, I can readily
bend what TMS contends was the ‘base’ of the T.A.T. tourniquet 180° with minimal effort.” Karl
9
Decl. ¶ 36. EMI contends, therefore, that the T.A.T. tourniquet base is more flexible than even the
Brothers base and hence does not have a “substantially rigid base” as would be required to infringe
on the ‘064 and ‘620 utility patents.
C.
EMI’s Use of Tourniquet Image
TMS contends that EMI used an image of the SOF tourniquet on its website and in its
product catalogs to market the T.A.T. tourniquet. TMS asserts in counts VIII, X, and XI that the
use of the images amounts to false advertising and unfair competition. The accused website image
is shown in the screenshot of EMI’s website below.
10
In addition to the website image, TMS alleges that EMI used images of the SOF tourniquet to
advertise the T.A.T. tourniquet in its product catalog. But TMS has not alleged that EMI used any
image of the SOF tourniquet that depicts a greater level of detail than that which can be seen in
the website screenshot above.
TMS alleges that the T.A.T. tourniquet is inferior to the SOF tourniquet in several ways,
including that it uses lower-grade stitching, is covered in a coating that chips more easily, has a
cap screw that rusts more easily, and lacks pin covers. But TMS has not argued that EMI
misrepresented any of these alleged inferiorities by using images of the SOF tourniquet in its
promotional materials. EMI argues that it innocently used the tourniquet photograph from its
supplier and if, as TMS alleges, the T.A.T. tourniquet is nearly identical to the SOF tourniquet,
then EMI could not have made any false representations simply by showing an image of a product
that, visually at least, is virtually indistinguishable from its own.
D.
TACMED Trademark
This Court previously denied EMI’s motion for summary judgment on the parties’
respective TACMED trademark infringement and related state law claims. See Order dated Sept.
26, 2017 at 5–10, ECF No. 125. The essential facts relevant to this issue are largely unchanged
from when the Court previously discussed them, and familiarity with those facts is assumed. See
id. at 5–7 (discussing facts relevant to TACMED counterclaims). In ruling on that motion, this
Court noted that “the facts that bear on this issue are in substantial dispute.” Id. at 8; see also id.
at 7 (“[T]here is a material fact dispute as to whether the TACMED mark is valid.”); id. at 10
(“[T]here is a material dispute of fact as to whether the TACMED mark is protectable.”).
E.
Cease and Desist Letters
EMI asserts in Counterclaims V and VI that TMS tortiously interfered with EMI’s
reasonable business expectancies and contracts with its distributors by sending them threatening
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cease-and-desist letters. About thirteen months before TMS sent the cease-and-desist letters, TMS
president and CEO Ross Johnson wrote in an email that if he “can get some more info on who
EMI is [he] might be able to make an example out of them.” DSOF ¶ 22; Defs’ Prior Statement of
Facts, Ex. 34, ECF No. 110-34. And about four months before TMS sent the letters, Johnson wrote
in another email that EMI “will hopefully be out of business in a few months.” DSOF ¶ 23; Defs.’
Prior Statement of Facts, Ex. 35, ECF No. 110-35. Less than a month before serving the complaint
on the defendants, TMS sent cease-and-desist letters to at least seven companies that TMS believed
were offering to sell the T.A.T. tourniquet or other EMI products bearing the TACMED mark. The
letters informed those companies that TMS had filed an infringement suit against EMI and
requested, among other things, that they “cease all sales and marketing of the T.a.t. [sic]
tourniquet” and “cease all sales and marketing of EMI products under the TACMED mark” within
21 days. PSOF ¶ 56. TMS enclosed with the letters a copy of its complaint against EMI and its
distributor, CopQuest.7 EMI had sold its products to many of the companies that received the
cease-and-desist letters for several years, and in some cases, decades.
The parties agree that EMI did not have distribution agreements with its distributors, and
that EMI’s customers had no forward-looking obligations to purchase EMI products. But EMI
asserts that it had contracts with its customers for each individual order. EMI sent price lists to its
distributors, received purchase orders from them, and issued invoices and received payment for
products it sold to its distributors. TMS contends that it was aware of the nature of EMI’s business
relationships with the distributors to whom TMS sent the cease-and-desist letters only to the extent
that those distributors were selling the allegedly infringing T.A.T. tourniquet or other EMI
7
All claims against CopQuest (set forth in Counts XII through XVI) were later dismissed.
See Stipulation of Dismissal with Prejudice Pursuant to Fed. R. Civ. P. 41(a)(1)(A)(ii), ECF No.
35.
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products under the TACMED mark. TMS insists that it sent the cease-and-desist letters in good
faith, intending to protect its intellectual property rights. After receiving TMS’s cease-and-desist
letter, several EMI distributors returned products previously delivered, did not purchase additional
EMI products, stopped purchasing EMI’s TACMED products, or stopped purchasing EMI
products altogether. Some distributors identified the TMS case-and-desist letter as the basis for
their changed business relationship with EMI.
II.
A.
Discussion
Standard of Review
Summary judgment is appropriate “if the movant shows that there is no genuine dispute as
to any material fact and the movant is entitled to judgment as a matter of law.” EEOC v. CVS
Pharmacy, Inc., 809 F.3d 335, 339 (7th Cir. 2015) (quoting Fed. R. Civ. P. 56(a)). A genuine
dispute as to a material fact exists “if the evidence is such that a reasonable jury could return a
verdict for the nonmoving party.” Kvapil v. Chippewa Cnty., 752 F.3d 708, 712 (7th Cir. 2014).
When considering a motion for summary judgment, the Court construes the facts and makes all
reasonable inferences in favor of the non-moving party. Jajeh v. Cnty. of Cook, 678 F.3d 560, 566
(7th Cir. 2012). “[D]istrict courts presiding over summary judgment proceedings may not weigh
conflicting evidence . . . or make credibility determinations.” Omnicare, Inc. v. UnitedHealth
Grp., Inc., 629 F.3d 697, 704 (7th Cir. 2011) (internal quotation marks and citation omitted).
Rather, the Court’s role is “to determine whether there is a genuine issue for trial.” Tolan v. Cotton,
134 S. Ct. 1861, 1866 (2014).
Design and utility patents are presumptively valid. 35 U.S.C. § 282; Ethicon Endo-Surgery,
Inc. v. Covidien, Inc., 796 F.3d 1312, 1328 (Fed. Cir. 2015). A challenger of the validity of a
design or utility patent must show that the patent is invalid by clear and convincing evidence.
Microsoft v. i4i Ltd. Partnership, 564 U.S. 91, 95 (2011). And, of course, “if a patent is shown to
13
be invalid, there is no patent to be infringed.” Commil USA, LLC v. Cisco Systems, Inc., 135 S.Ct.
1920, 1923 (2015).
B.
Validity of ‘642 Design Patent
EMI asserts in its Second Affirmative Defense that “[e]ach claim of the ‘064, ‘642 and
‘620 patents is invalid because it fails to satisfy the conditions for patentability specified in 35
U.S.C. § 100 et seq., including §§ 101, 102, 103, 112 and 171.” Answer at 35, ECF No. 17.
Material issues of fact exist as to whether the ‘642 design patent is invalid under 35 U.S.C. § 171(a)
as embodying a primarily functional rather than ornamental design. The only other of these
theories that EMI invokes in support of its invalidity affirmative defense as to the ‘642 design
patent is § 102 (anticipation), but EMI has not shown that a reasonable jury could find that the
‘642 design patent was anticipated by the prior art cited.
1.
Functionality
Design patents may be obtained for “any new, original and ornamental design for an article
of manufacture.” 35 U.S.C. § 171(a). A design patent is invalid if its design is dictated by the
function of its article. Ethicon, 796 F.3d at 1329. Courts consider several factors when determining
whether the design is dictated by function, including “whether the protected design represents the
best design; whether alternative designs would adversely affect the utility of the specified article;
whether there are concomitant utility patents; whether the advertising touts particular features of
the design as having specific utility; and whether there are any elements in the design or an overall
appearance clearly not dictated by function.” Id. at 1330. The existence of alternative designs is
an important but not dispositive factor. Id. at 1329–30 (“[W]hen there are several ways to achieve
the function of an article of manufacture, the design of the article is more likely to serve a primarily
ornamental purpose.” (citation omitted)). “Whether a patented design is functional or ornamental
is a question of fact.” PHG Techs., LLC v. St. John Cos., 469 F.3d 1361, 1365 (Fed. Cir. 2006).
14
Here, there is substantial evidence that the beveled design of the tourniquet handle serves
a functional purpose, namely, facilitating insertion of the handle end into the locking device. TMS
President and CEO Ross Johnson himself testified that he believed that having truncated cones at
the ends of the handle would make the tourniquet “easier to use.” DSOF ¶ 37. Although Johnson
now believes that the shape of the handle end caps does not make inserting the handle into the
locking rings any easier, the question is whether the design was dictated by function, not by
whether it was as effective as it was initially expected to be for that function after it was designed.
Indeed, TMS’s own utility patents describe the intended functionality of the beveled ends. See,
e.g., U.S. Patent No. 7,776,064 at 3:34-36, ECF No. 1-1 (“Handle G is beveled and notched on the
surface area at each end of handle G to facilitate the securing of handle G into the locking rings.”);
U.S. Patent No. 8,303,620 at col. 3:49-52, ECF No. 1-3 (“Handle G includes bevels and notches
mm on the surface area at each end of handle G to facilitate the securing of handle G into the
locking rings.”). Patents for other products have recognized that beveled ends may have a
functional purpose of facilitating insertion, as well. See, e.g., U.S. Patent No. 4,995,591, Karl
Decl., Ex. 3 at col. 2:7, ECF No. 145-3 (The “purpose of beveling the end is to facilitate
insertion . . . .”); U.S. Patent No. 5,979,276, Karl Decl., Ex. 4 at col. 2:42, ECF No. 145-4 (stating
that specialized hose-trimming tools typically have a “beveled end for easy insertion”).
But there is also evidence that supports the view that beveling the handle ends is not the
only way to facilitate the function of inserting the handle into the locking device. TMS cites
examples of tourniquets with similar handles to the SOF tourniquet but different handle end
designs, such as the Combat Application Tourniquet, the Military Emergency Tourniquet, and the
NATO tourniquet. A jury would not be required to credit those alternative designs, however,
because it is not clear those alternative designs would work as well with the triangular locking
15
rings into which the beveled ends of the ‘642 design patent are intended to be inserted. Cf. Best
Lock Corp. v. Ilco Unican Corp., 94 F.3d 1563 (Fed. Cir. 1996) (affirming finding of invalidity on
functionality grounds where key blade was designed to be inserted into keyway even though
alternative key blade designs could mate with other keyways); Static Control Components, Inc. v.
Lexmark Int’l, Inc., 487 F. Supp. 2d 830, 841–42 (E.D. Ky. 2007), aff’d, 697 F.3d 387 (6th Cir.
2012) (invalidating on summary judgment two printer cartridge design patents because their
designs were primarily functional as they were made to fit the printers with which they were used).
Neither party has adduced evidence as to the relative effectiveness (or ineffectiveness) of
competing designs.
While the existence of these putative alternative designs does not compel a finding that the
‘642 design was primarily ornamental, as TMS suggests, the evidence of functionality is also not
so overwhelming as to compel a finding that the design disclosed in the ‘642 design patent is
primarily functional, as EMI suggests. Although the examples of possible alternative designs TMS
cites were not intended to be used with the triangular locking rings into which the beveled ends of
the ‘642 design patent were to be inserted, a jury could reasonably conclude that the alternative
designs TMS cites could be used “without adversely affect[ing] the utility of” the T.A.T.
tourniquet. Ethicon, 796 F.3d at 1330. Accordingly, this is a question of fact for the jury, and
TMS’s motion for summary judgment as to EMI’s affirmative defense of invalidity based on the
alleged functionality of the ‘642 design patent (contained within EMI’s Second Affirmative
Defense) is denied. Necessarily, then, TMS’s motion for summary judgment on its claim that EMI
infringed the ‘642 design patent must also be denied.
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2.
Anticipation
EMI cannot, however, defend against TMS’s infringement claim by asserting that the ‘642
design patent is invalid under 35 U.S.C. § 102 as anticipated by prior art. A design patent is
anticipated if “in the eye of an ordinary observer, giving such attention as a purchaser usually
gives,” its design is “substantially the same” as that of the prior art. Samsung Electronics Co., Ltd.
v. Apple, Inc., 137 S. Ct. 429 (2016) (stating ordinary observer test in context of infringement)
(citation omitted); see also Int’l Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1237–
40 (Fed. Cir. 2009) (stating that same ordinary observer test applies in context of anticipation).
Establishing “design patent anticipation requires a showing that a single prior art reference is
identical in all material respects to the claimed invention.” Door-Master Corp., 256 F.3d 1308,
1312 (Fed. Cir. 2001) (internal quotation marks omitted).
EMI argues that the ‘642 design patent was anticipated by design patents for a spark plug,
U.S. Patent No. 1,360,946, and another for a drawer knob, U.S. Patent No. 1,855,482. Beyond the
conclusory statement that “[e]ach of these two patents have an identical or at least substantially
similar design to the ends of the handle of the tourniquet claimed in the ‘642 patent,” DSOF ¶ 39;
Karl Decl. ¶ 49, EMI has not provided any explanation or argument for how those patents
anticipated TMS’s ‘642 design patent. Nor is any such explanation apparent from the face of that
prior art; neither prior art reference appears to even roughly approximate the ‘642 design such that
a reasonable observer could confuse either of them with the ‘642 design. The spark plug and
drawer knob are also not drawn to medical devices, let alone tourniquets, which “significantly
limits the relevance of the prior art” in this case. Columbia Sportswear North Am., Inc. v. Seirus
Innovative Accessories, 202 F. Supp. 3d 1186, 1196 (D. Or. 2016). “Courts examining design
patents in relation to prior art cabin their analysis to prior art specific to the class of articles
17
identified in the design patent at issue.” Id.; see also Cornucopia Products, LLC v. Dyson, Inc.,
Nos. CV 12-234, CV 12-294, 2012 WL 3094955, at *4 (D. Ariz. 2012) (“[T]he ordinary observer
is assumed to be familiar with the prior art—i.e., all relevant preexisting designs for similar
products.”). EMI’s invalidity defense based on anticipation therefore fails as a matter of law.
C.
‘064 and ‘620 Utility Patents
1.
Validity
EMI has established that a reasonable jury could conclude by clear and convincing
evidence that the ‘064 and ‘620 patents are invalid as obvious in light of prior art under 35 U.S.C.
§ 103, but not that those patents are invalid as anticipated by prior art under 35 U.S.C. § 102.
EMI’s Second Affirmative Defense asserts that “[e]ach claim of the ‘064, ‘642 and ‘620 patents
is invalid because it fails to satisfy the conditions for patentability specified in 35 U.S.C. § 100 et
seq., including §§ 101, 102, 103, 112 and 171.” Answer at 35, ECF No. 17. The only of these
statutory sections that EMI has invoked in support of the invalidity of the ‘064 and ‘620 utility
patents are § 102 (anticipation) and § 103 (obviousness). Paragraph 43 of Karl’s declaration states:
The asserted claims are invalid over the McMillan and Brothers
prior art patents. In particular, claims 1, 14, 15 and 17 of the ‘064
patent are anticipated by Brothers under 35 U.S.C. § 102. All of the
asserted claims (1-5, 7-12 and 14-19 of the ‘064 patent and 1-4, 68, 10-11 and 13 of the ‘620 patent) are obvious [under 35 U.S.C.
§ 103] over Brothers alone or in combination with U.S. Patent No.
6,899,720 to McMillan issued May 31, 2005.
Karl Decl. ¶ 43, Exs. 1, 2, ECF Nos. 145, 145-1, 145-2; DSOF ¶ 34.
As to the § 102 grounds for invalidity, EMI asserted that it is “certain” that the Brothers
prior art base is more flexible than “substantially rigid.” DSOF ¶ 29; Karl Decl. ¶ 35; Resp. 29,
ECF No. 143. To establish anticipation under § 102, the proponent must show “that the four
corners of a single, prior art document describe every element of the claimed invention” and that
the prior art “disclose[s] those elements as arranged in the claim.” Net MoneyIN, Inc. v. VeriSign,
18
Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008) (citations and internal quotation marks omitted). If the
Brothers prior art base was more flexible than the “substantially rigid” base of the ‘064 and ‘620
utility patents, then the Brothers prior art could not have described the “substantially rigid base”
element of the claims of those patents to anticipate them. Karl’s claim chart also does not allege
that Brothers discloses the elements in each claim of either patent. See Karl Decl., “The ‘064
Patent” and “The ‘620 Patent” charts following ¶ 43 at 9–18, ECF No. 145 (stating, e.g., that claim
9 of ‘064 patent was obvious but not alleging facts to suggest it was anticipated and that claim 2
of ‘620 patent was obvious but not alleging facts to suggest it was anticipated). Having cited
Brothers as the only basis for invalidity based on anticipation under 35 U.S.C. § 102, that basis for
invalidity must fail.
EMI has, however, raised a genuine fact issue regarding whether the ‘064 and ‘620 utility
patents are invalid under 35 U.S.C. § 103. Section 103 forbids issuance of a patent when “the
differences between the subject matter sought to be patented 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.” 35 U.S.C. § 103. Obviousness is a question of law based upon
underlying factual findings, which include: “(1) the scope and content of the prior art, (2)
differences between the prior art and the claims at issue, (3) the level of ordinary skill in the
pertinent art, and (4) the presence of objective indicia of nonobviousness such as commercial
success, long felt but unsolved needs, failure of others, and unexpected results.” Endo Parm. Inc.
v. Actavis LLC, 922 F.3d 1365, 1372–73 (Fed. Cir. 2019) (internal quotation marks omitted).
Karl’s claim charts explain how the claims would have been obvious to a person of ordinary
skill in the art at the time of invention. See Karl Decl., “The ‘064 Patent” and “The ‘620 Patent”
charts following ¶ 43 at 9–18, ECF No. 145 (stating, e.g., as to claim 9 of the ‘064 patent that
19
“McMillan discloses a tourniquet 10 with a handle lock (24 or 28) attached to a base 12 and
positioned to receive an end of a handle 20. It would have been obvious to one of ordinary skill in
the art at the time of the alleged invention to modify Brothers as taught by McMillan in order to
secure the handle to the base.”). TMS has not rebutted Karl’s claim charts regarding obviousness
or otherwise argued that EMI has failed to establish a genuine dispute of material fact as to the
invalidity of the ‘064 and ‘620 utility patents due to obviousness.
2.
Infringement
A genuine issue of material fact also exists as to whether the T.A.T. tourniquet had a
“substantially rigid base” and therefore infringed on the ‘064 and ‘620 utility patents.8 Analyzing
whether a valid patent has been infringed involves a two-step inquiry. “The court must first
interpret the claims to determine their scope and meaning. It must then compare the properly
construed claims to the allegedly infringing device.” Sunoco Partners Marketing & Terminals L.P.
v. U.S. Venture, Inc., 339 F. Supp. 3d 803, 828 (N.D. Ill. 2018) (citing Dynacore Holdings Corp.
v. U.S. Phillips Corp., 363 F.3d 1263, 1273 (Fed. Cir. 2004). The second step of this inquiry “is
primarily factual.” Sunoco, 339 F. Supp. 3d at 828; see also Medgraph, Inc. v. Medtronic, Inc.,
843 F.3d 942, 949 (Fed. Cir. 2016) (“Infringement is a question of fact.”); Freedman Seating Co.
v. Am. Seating Co., 420 F.3d 1350, 1357 (Fed. Cir. 2005) (“[T]he second step is a question of
fact.”). “Direct infringement can be found when a defendant makes a product containing each and
every limitation set forth in a claim.” Centrak, Inc. v. Sonitor Techs., Inc., 915 F.3d 1360, 1371
(Fed. Cir. 2019).
8
“Substantially rigid base” is the only claim element in dispute as to the issue of EMI’s
alleged infringement of the ‘064 and ‘620 utility patents.
20
This Court completed the first step of this inquiry by construing the “substantially rigid
base” term, which is the only claim term in dispute, as follows: “A base that provides sufficient
rigidity to avoid binding and crushing while being flexible enough for use on a limb and facilitating
carriage and storage.” Mem. Op. and Order dated Sept. 26, 2017 at 14, ECF No. 126. Now that the
claim term has been construed, what is left is a factual question regarding whether the T.A.T.
tourniquet has a “substantially rigid base” as that term has been construed by this Court. TMS has
argued that “rigidity” is “a matter of degree.” Mem. Op. and Order dated Sept. 26, 2017 at 10, ECF
No. 126; see also id. at 10–11 (“TMS is seeking a claim construction indicating that the base has
some degree of flexibility, and which places the term between either ends of a continuum
beginning with ‘flexible’ on one extreme end of the spectrum and ‘rigid’ on the other.”).
TMS has attached to its motion a demonstration video and cites to testimony from Johnson
and Hester that roughly amount to statements that the T.A.T. tourniquet base is substantially rigid.
EMI has submitted Karl’s competing interpretation of the degree of rigidity, roughly amounting
to a statement that the base of the T.A.T. tourniquet is more flexible than substantially rigid. A
reasonable jury could watch the demonstration video and consider those statements and reasonably
conclude that the T.A.T. tourniquet does not have a “base that provides sufficient rigidity to avoid
binding and crushing while being flexible enough for use on a limb and facilitating carriage and
storage.” Where the base of the T.A.T. tourniquet falls on the spectrum of rigidity as a matter of
degree is a fact question that must be left to the jury.
D.
False Representation
A reasonable jury could conclude that EMI did not falsely advertise its T.A.T. tourniquet
by using images of the SOF tourniquet on its website and in its product catalogs. To prevail on a
false advertising claim under the § 43(a) of the Lanham Act, codified at 15 U.S.C. § 1125(a), a
plaintiff must prove that “(1) the defendant made a material false statement of fact in a commercial
21
advertisement; (2) the false statement actually deceived or had the tendency to deceive a substantial
segment of its audience; and (3) the plaintiff has been or is likely to be injured as a result of the
false statement.” Eli Lilly and Co. v. Arla Foods, Inc., 893 F.3d 375, 381–82 (7th Cir. 2018). Two
types of statements are actionable under the Lanham Act: “those that are literally false and those
that are literally true but misleading.” Id. at 382. Because a “literally false statement will
necessarily deceive consumers . . . extrinsic evidence of actual consumer confusion is not
required” to establish liability for such statements, but for literally true but misleading statements
to be actionable, “the plaintiff ordinarily must produce evidence of actual consumer confusion.”
Id. Here, TMS has not produced evidence of actual consumer confusion stemming from EMI’s
use of the tourniquet image. TMS must therefore show that EMI’s use of the image was a literally
false statement.
While a company’s use of an image of a competitor’s product in advertising its own product
may give rise to liability under § 43(a), liability under such circumstances “is not automatic.” Nat’l
Presto Indus., Inc. v. Hamilton Beach, Inc., 1990 WL 208594, at *7 (N.D. Ill. Dec. 12, 1990)
(quoting Vibrant Sales, Inc. v. New Body Boutique, Inc., 652 F.2d 299, 304 (2d Cir. 1981); see
also Flowserve Corp. v. Hallmark Pump Co., No. 4:09-cv-0675, 2011 WL 1527951, at *7 (S.D.
Tex. Apr. 20, 2011) (“In most situations, the use of a photograph of the plaintiff’s product to
advertise defendant’s product is a § 43(a) violation.”) (emphasis added); Nat’l Presto Indus., Inc.
v. Hamilton Beach, Inc., No. 88 C 10567, 1990 WL 208594, at *8 (N.D. Ill. Dec. 12, 1990) (“[T]he
language of the Lanham Act is very broad and may certainly embrace the defendant’s use of a
photo of the plaintiff’s product in advertising its own.”) (emphasis added). “One who uses a
photograph of his competitor’s unpatented and untrademarked product to advertise his own wares
22
may be guilty of false representation if the product is not identical to the one he is prepared to
deliver.” Vibrant Sales, Inc. v. New Body Boutique, Inc., 652 F.2d 299, 304 (2d Cir. 1981).9
Far from claiming that EMI’s use of a photo of the SOF tourniquet falsely represented what
consumers who purchased the T.A.T. tourniquet would receive, TMS asserts that the “T.A.T
tourniquet is a visual twin of the SOF tourniquet” and that the tourniquets’ appearance is “virtually
indistinguishable.” Mem. 5, ECF No. 141; see also id. (“Perusal of the photographs disposes of
any reasonable argument that the accused T.A.T. tourniquet is visually distinguishable from its
authorized patented counterpart.”); PSOF ¶ 22 (asserting that the T.A.T. tourniquet “copies
virtually every feature” and “replicates the appearance” of the SOF tourniquet). Although some of
these statements are in the section of TMS’s brief relating to the ‘642 design patent, the statements
are not limited to the handle end design. See, e.g., Mem. 5, ECF No. 141 (“A side-by-side
comparison of the SOF tourniquet to the T.A.T. tourniquet illustrated below, shows that the T.A.T.
tourniquet is a visual twin of the SOF tourniquet.”).
TMS argues that the T.A.T. tourniquet uses lower-quality stitching, is covered in coating
that chips more easily, has a cap screw that rusts more easily, and lacks pin covers. TMS has also
stated generally that the “T.A.T. inferiorities cheapen the appearance of the tourniquet.” Mem. 16.,
ECF No. 141. But these are qualities that are not discernible from the photo at issue. TMS has not
alleged how the picture EMI used to advertise the T.A.T. tourniquet misrepresents those
inferiorities or creates an impression that the customer will receive a tourniquet of superior quality
9
The quoted language refers to a competitor’s “unpatented and untrademarked” product.
For purposes of the present motion, all reasonable inferences must be construed in EMI’s favor.
EMI has shown that a material fact dispute exists as to whether TMS’s patents are invalid, and this
Court previously denied TMS’s motion for summary judgment on TMS’s trademark claims. See
Order dated Sept. 21, 2015, ECF No. 62. Further, TMS has not argued why that qualification
should prevent the Court from applying the same principle enunciated in Vibrant Sales here.
23
to the one that EMI is prepared to deliver. Nor do the pictures at issue appear to make any
representations about the ability of the T.A.T. tourniquet to withstand wear and tear. Although a
customer might be able to discern differences in the quality of the stitching or the lack of pin covers
when viewing a close-up image of those components, the pin covers and the stitching themselves
can hardly be seen in the accused images (if at all), let alone any material differences in the quality
of those components. There is also evidence upon which a jury could base a reasonable conclusion
that in using the tourniquet photo, EMI did not have the “kind of intent to misrepresent which is
the cornerstone of a money damage [false representation] action.” Can-Am Eng’g Co. v.
Henderson Glass, Inc., 814 F.2d 253, 257 (6th Cir. 1987). EMI contends that it innocently used
the photograph from its supplier, and that if the photograph depicted the SOF tourniquet, EMI was
not aware of that fact.
Under these circumstances, the Court cannot conclude as a matter of law that EMI is liable
for false representation based on the use of the tourniquet photograph. See Merchant & Evans, Inc.
v. Roosevelt Bldg. Prods. Co., 963 F.2d 628, 636 (3d Cir. 1992) (“Because the appearance of the
two products is identical, it is difficult to see how [defendant’s] alleged use of [plaintiff’s product]
in its photograph could be misleading.”); see also Compaq Computer Corp. v. Procom Tech., Inc.,
908 F. Supp. 1409, 1426–27 (S.D. Tex. 1995) (“Given that the differences between the displayed
product and the actual product are slight, there is little chance that a customer could be misled by
the photograph in [the defendant’s] ads.”). TMS has not made any arguments that it is entitled to
summary judgment on its unfair competition counts (Counts X and XI) that are different from
those it raises in support of summary judgment on the Lanham Act false representation count
(Count VIII). Accordingly, TMS’s motion for summary judgment is denied as to all counts relating
to the use of the tourniquet photograph.
24
E.
TACMED Counterclaims
Genuine issues of material fact also remain as to all of EMI’s TACMED counterclaims. As
this Court noted when ruling on the defendant’s summary judgment motion, “[t]he facts that bear
on [the TACMED trademark] question are in substantial dispute,” and “there is a material fact
dispute as to whether the TACMED mark is valid.” Order dated Sept. 26, 2017 at 8, 7, ECF No.
125; see also id. at 10 (“[T]here is a material dispute of fact as to whether the TACMED mark is
protectable.”). This Court thoroughly discussed in that opinion the arguments the parties raise here
in support of and against TMS’s motion for summary judgment on the TACMED counterclaims;
that discussion is incorporated here by reference. See Order dated Sept. 26, 2017 at 7–10, ECF No.
125. The facts were in substantial dispute then, and TMS has pointed to no evidence or argument
that would lead the Court to believe that the facts on this question are now so one-sided that TMS
is entitled to summary judgment on the same counterclaims.
Instead of pointing to facts that were not available at the time of briefing on the previous
motion for summary judgment, TMS argues that the case of the law doctrine somehow entitles it
to prevail. TMS badly misconstrues this Court’s prior opinion by wrongly suggesting that the
Court’s ruling that EMI had failed to establish that the TACMED mark was valid as a matter of
law now compels a ruling that no reasonable jury could find that the mark was valid. The Court
did not make the latter finding then, and TMS has not provided a basis for the Court to make such
a finding now. Indeed, when drawing all reasonable inferences against EMI, this Court concluded
that there were substantial factual disputes as to the TACMED counterclaims. See Order dated
Sept. 26, 2017 at 7, 8, 10, ECF No. 125 (emphasizing that the facts relevant to the TACMED
counterclaims are in substantial dispute). In moving for summary judgment on those same
counterclaims, TMS faces a difficult task because it must show that the factual picture has changed
25
so drastically that TMS is now entitled to judgment as a matter of law even though those inferences
are now construed in favor of EMI.
As to whether the TACMED mark is descriptive or suggestive, the Court held that a
“material dispute of fact exists . . . as to whether [EMI]’s use of the mark is . . . descriptive.” Order
dated Sept. 26, 2017, ECF No. 125; see also Sands, Taylor & Wood Co. v. Quaker Oats Co., 978
F.2d 947, 952 (7th Cir. 1992) (“[C]lassification of a term as ‘descriptive’ or ‘suggestive’ is a
factual determination.”). And if the mark was suggestive as used by EMI, EMI need not show
secondary meaning to establish that EMI had a valid TACMED trademark. See Two Pesos, Inc. v.
Taco Cabana, Inc., 505 U.S. 763, 768 (1992) (plaintiffs need not show secondary meaning to
establish trademark rights in suggestive mark). But even if EMI needed to show secondary
meaning, “[t]he facts that bear on this question are in substantial dispute.” Order dated Sept. 26,
2017 at 8, ECF No. 125. For the same reasons summary judgment was previously denied, summary
judgment is denied on each of EMI’s TACMED trademark infringement counterclaims.10
10
TMS filed a Notice of Supplemental Information, ECF No. 165, stating that after the
U.S. Patent and Trademark Office rejected EMI’s application to register TACMED because it
found that the mark was descriptive, EMI amended its trademark application on the “Principal
Register” to become an application on the “Supplemental Register.” The Supplemental Register is
where marks may be registered that are not inherently distinctive but that may become registrable
on the Principal Register upon the acquisition of secondary meaning. Real Foods Pty Ltd. v. FritoLay N. Am., Inc., 906 F.3d 965, 972 n.3 (Fed. Cir. 2018). TMS contends that registering on the
Supplemental Register amounts to a concession that the mark is not inherently distinctive. TMS,
however, has not pointed to any such express concession by EMI. And the mere act of registering
on the Supplemental Register cannot be viewed as a concession that the mark is not inherently
distinctive, because the registration scheme contemplates that a mark registered on the
Supplemental Register may later be registered on the Principal Register on the basis that it is
inherently distinctive. See Park ‘N Fly, Inc. v. Dollar Park and Fly, Inc., 469 U.S. 189, 212 n.13
(1985) (describing process whereby applicant may get mark from Supplemental Register to
Principal Register, including by arguing that mark is inherently distinctive) (citing 1 J. McCarthy,
Trademarks and Unfair Competition § 19:7 (1984)); see also California Cooler, Inc. v. Loretto
Winery, Ltd., 774 F.2d 1451, 1454 (9th Cir. 1985) (declining to hold that “a manufacturer which
registers on the [S]upplemental [R]egister comes away with fewer rights than it would have had if
it had not sought registration at all”). And even if the mere act of registering on the Supplemental
26
F.
Tortious Interference
Genuine issues of material fact also exist as to whether TMS tortiously interfered with
EMI’s contracts and reasonable business expectancies. To prevail under a tortious interference
with a contract theory under Illinois law, a plaintiff must establish the following elements: “(1) the
existence of a valid and enforceable contract between the plaintiff and a third party; (2) defendant’s
awareness of the contract; (3) defendant’s intentional and unjustified inducement of a breach; (4)
defendant’s wrongful conduct caused a subsequent breach of the contract by the third party; and
(5) damages.” Echo, Inc. v. Timberland Machines & Irr., Inc., 661 F.3d 959, 968 (7th Cir. 2011).
And to prevail on a tortious interference with prospective economic advantage theory, the plaintiff
must establish “(1) a reasonable expectancy of entering into a valid business relationship, (2) the
defendant’s knowledge of the expectancy, (3) an intentional and unjustified interference by the
defendant that induced or caused a breach or termination of the expectancy, and (4) damage to the
plaintiff resulting from the defendant’s interference.” McCoy v. Iberdrola Renewables, Inc., 760
F.3d 674, 685 (7th Cir. 2014) (citation omitted).
EMI’s reasonable expectancy of continuing or entering into valid business relationships
with its distributors—and EMI’s knowledge of those relationships—is evidenced by TMS’s
decision to send its letters to those customers. TMS did not, of course, select those customers at
random; TMS would not have bothered sending such distributors cease-and-desist letters if TMS
thought there was no business relationship from which to demand that they cease-and-desist. And
even if there was no overarching distribution agreement that required EMI’s distributors to make
Register amounted to a concession that the mark is not inherently distinctive, TMS has not pointed
to any new evidence since the Court ruled on the previous motion for summary judgment to show
that there is no longer a factual dispute as to whether EMI could establish secondary meaning in
the mark.
27
future purchases from EMI, there is ample evidence upon which a reasonable jury could rest a
conclusion that EMI had valid business expectancies and contracts with its distributors. EMI
received purchase orders, issued invoices, and received payment for products that it shipped to
distributors. After receiving the cease-and-desist letter, some EMI distributors stopped purchasing
EMI products and others returned conforming products; some even cited the cease-and-desist letter
as the basis for the changed business relationship. Although TMS contends that it sent the letters
in a good-faith attempt to protect its intellectual property rights, EMI has provided evidence that
could give rise to a reasonable inference that the letters were motivated by an unjustified desire to
drive EMI out of business. See, e.g., DSOF ¶ 23; Defs.’ Prior Statement of Facts, Ex. 35, ECF No.
110-35 (Johnson stating that he hoped EMI would be “out of business in a few months.”).
TMS’s arguments in support of summary judgment on the tortious interference issue rest
largely on its incorrect assertion that the “testimony of an interested party to a suit, without any
corroborating evidence or documentary support to substantiate the testimony, fails to raise a
materially disputed issue of fact.” Reply 11, ECF No. 152 (citing Pugh v. City of Attica, Indiana,
259 F.3d 619, 625 (7th Cir. 2001)). While “conclusory allegations, unsupported by specific facts,
will not suffice” to defeat summary judgment, Payne v. Pauley, 337 F.3d 767, 773 (7th Cir. 2003)
(emphasis added), the self-serving nature of testimony or lack of corroborating evidence or
documentary support does not provide a basis for declining to consider such evidence on a motion
for summary judgment, see id. (seeking to “lay[] to rest the misconception that evidence presented
in a ‘self-serving’ affidavit is never sufficient to thwart a summary judgment motion”). “Provided
that the evidence meets the usual requirements for evidence presented on summary judgment—
including the requirements that it be based on personal knowledge and that it set forth specific
28
facts showing that there is a genuine issue for trial—a self-serving affidavit is an acceptable
method for a non-moving party to present evidence of disputed material facts.” Id.
*
*
*
For the reasons stated above, TMS’s partial motion for summary judgment, ECF No. 135,
is granted in part. EMI’s Second Affirmative Defense survives summary judgment only to the
extent that it asserts 35 U.S.C. § 171 (functionality) as a basis for invalidity of the ‘642 design
patent and 35 U.S.C. § 103 (obviousness) as a basis for invalidity of the ‘064 and ‘620 utility
patents. Summary judgment in favor of TMS is granted as to EMI’s Third and Eleventh
Affirmative Defenses, and EMI’s First Affirmative Defense is stricken. TMS’s motion for
summary judgment is otherwise denied.
_______________________
John J. Tharp, Jr.
United States District Judge
Date: June 11, 2019
29
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