John Mezzalingua Associates, Inc. v. Pace Electronics, Inc. et al
Filing
159
MEMORANDUM OPINION AND ORDER. IT IS HEREBY ORDERED that Defendants' Motion for Summary Judgment 108 is DENIED. (Written Opinion). Signed by Chief Judge Michael J. Davis on 7/22/11. (GRR)
UNITED STATES DISTRICT COURT
DISTRICT OF MINNESOTA
John Mezzalingua Associates, Inc.
(d/b/a PPC), a Delaware corporation,
Plaintiff,
v.
MEMORANDUM OPINION
AND ORDER
Civil No. 10‐64 (MJD/JJG)
Pace Electronics, Inc.
(d/b/a Pace International)
a Minnesota corporation,
Defendant,
and
Perfect 10 Antenna Company,
an Arkansas corporation,
Defendant.
__________________________________________________________________
Sterling A. Brennan, C.J. Veverka and Robert E. Aycock, Workman
Nydegger, P.C. and Jeanette M. Bazis and Robert J. Gilbertson, Greene Espel
P.L.L.P., Counsel for Plaintiff.
Ronald J. Schutz, Mathew J. Yang and Brock J. Specht, Robins, Kaplan,
Miller & Ciresi, LLP and Charles Darwin “Skip” Davidson and Robert E. Fahr,
Jr., Davidson Law Firm and Brian Y. Boyd and John R. Horvack, Jr., Carmody &
Torrance LLP, Counsel for Defendants.
__________________________________________________________________
This matter is before the Court upon Defendants’ Motion for Summary
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Judgment [Doc . No. 108].
I.
Factual Background
Plaintiff John Mezzalingua Associates, Inc., d/b/a PPC, Inc. (“PPC”) has
developed coaxial cable connectors that are covered by various patents. One of
PPC’s patents is United States Patent No. 7,118,416 (“the ‘416 patent”) which
describes a coaxial cable connector with an elastomeric band. (Declaration of
Robert Aycock, Ex. A.)
PPC asserts that the ‘416 patent embodies a novel design for a compression
connector. The unique feature of this design is an elastomeric band that is
positioned inside the connector, which deforms to provide a waterproof seal
when it is compressed. Each of the asserted claims contains as an element the
“elastomeric band.” For example, claim 1 reads as follows:
1. A connector for a coaxial cable, comprising:
a connector body;
a fastening member for connecting said connector to an object;
a post including a barbed portion, said post fitted at least partially
inside said connector body for receiving a prepared end of said
cable;
a compression member fitted to said connector body radially
outward of the barbed portion of the post; and
a elastomeric band fitted inside a cavity formed at least in part by
said compression member;
wherein axial movement of said compression member onto said
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connector body causes said elastomeric band to deform and seal an
outer layer of said cable to said connector to isolate an inside of said
connector from environmental influences.
PPC asserts that two years ago, DirecTV agreed to purchase its
requirements of “F” type universal coaxial cable connectors directly and
exclusively from PPC. (Id. ¶ 11.) Prior to that time, Defendant Perfect 10
Antenna Company (“Perfect 10ʺ) supplied DirecTV and its installers with
satellite‐related products, including PPC’s connectors. (Id. ¶ 10.) PPC asserts
that it learned that Perfect 10 began selling its own “F” type universal coaxial
cable connector and at a lower cost than PPC’s. (White Decl. ¶ 16.) DirecTV has
indicated to PPC that it is willing to take the risk of trying a lower cost connector.
(Id. ¶ 15.) In response, PPC agreed to lower the price of its connectors by one
cent per unit, and to provide training services to DirecTV installers. (Id. ¶ 18.)
Such price reduction results in a loss of approximately $1.35 million in revenue.
(Id.) If DirecTV chooses to purchase its connectors from Perfect 10, PPC asserts
that it will suffer lost profits and that Perfect 10ʹs sales may have a ripple effect on
PPC’s ability to expand its sales of other products to DirecTV. (Id. ¶ 20.)
Defendant Pace Electronics, Inc., d/b/a Pace International (“Pace”) is a
reseller of DISH Network’s satellite television services and a DISH Network retail
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partner. (Id. ¶ 24 (Doc. No. 25).) PPC is one of two suppliers that sell coaxial
cable connectors to DISH Network’s internal technical work force. (Id. ¶ 31.)
PPC has also acquired 100% of the market share of DISH Network’s outside
regional service providers. (Id. ¶ 32.) PPC asserts that it became aware that Pace
is attempting to supply DISH Network with a cheaper, infringing alternative to
the PPC cable connectors that DISH Network and its installers had been utilizing.
The connector being sold by Perfect 10 and Pace are identical, except for cosmetic
appearance. (Declaration of Robert Chastain ¶ 9.)
PPC alleges that Defendants’ cable connectors infringe claims 1, 4, 5, 8 and
11 of the ‘416 patent. PPC also alleges that Defendants’ use of PPC’s EX
Connector Trade Dress in its own products is deceptive and likely to cause
mistake and confusion as to whether Defendants’ products are sponsored or
approved of by PPC.
II.
Standard for Summary Judgment
Summary judgment is appropriate if, viewing all facts in the light most
favorable to the non‐moving party, there is no genuine issue as to any material
fact, and the moving party is entitled to judgment as a matter of law. Fed. R. Civ.
P. 56(c); Celotex Corp. v. Catrett, 477 U.S. 317, 322‐23 (1986). The party seeking
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summary judgment bears the burden of showing that there is no disputed issue
of material fact. Celotex, 477 U.S. at 323. This burden can be met “by ‘showing’ ‐
that is, pointing out to the district court ‐ that there is an absence of evidence to
support the nonmoving party’s case.” Id. at 325. The party opposing summary
judgment may not rest upon mere allegations or denials, but must set forth
specific facts showing that there is a genuine issue for trial. Krenik v. County of
Le Sueur, 47 F.3d 953, 957 (8th Cir. 1995).
III.
Analysis
A.
Infringement Claim
To succeed on its claims of patent infringement, PPC must demonstrate
that the ‘416 patent is valid and that it is infringed. Amazon.com, Inc. v.
Barnesandnoble.com, Inc., 239 F.3d 1343, 1350 (Fed. Cir. 2001).
The determination of patent infringement involves a two step analysis.
Transclean Corp. v. Bridgewood Serv., Inc., 290 F.3d 1364, 1370 (Fed. Cir. 2002).
The Court must first determine the scope and meaning of the patent claims
asserted. Id. Next, the Court compares the properly construed claims against the
accused device. Id. Claim construction is a matter of law, while infringement
involves questions of fact. Id.
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1.
Claim Construction
Words in a claim are generally given their ordinary and customary
meaning as to one skilled in the art at the time of the invention. Phillips v. AWH
Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005). “In some cases, the ordinary meaning
of claim language as understood by a person of skill in the art may be readily
apparent even to lay judges, and claim construction in such cases involves little
more than the application of the widely accepted meaning of commonly
understood words.” Id. at 1314. When the ordinary and customary meaning of
claim language is not readily apparent, however, the Court must look to “those
sources available to the public that show what a person of a skill in the art would
have understood disputed claim language to mean.” Id. (citation omitted). Such
sources include the words of the claims themselves, the specification, the
prosecution history and extrinsic evidence concerning relevant scientific
principles, the meaning of technical terms, and the state of the art. Id.
While a claim must be read in view of the specification, the Court cannot
read a limitation into a claim based on the specification. Renishaw PLC v.
Marposs Societa’ Per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998) (citing Vitronics
Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir.1996); Markman v.
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Westview Instruments, Inc., 52 F.3d 967, 979‐80 (Fed. Cir.1995) (en banc), affʹd,
517 U.S. 370 (1996)). The same is true with regard to the prosecution history,
which can be used to understand the claim, but not to enlarge, diminish or vary
the limitations in the claim. Markman, 52 F.3d at 980. Similarly, extrinsic
evidence, such as inventor or expert testimony, dictionaries and treatises, cannot
be used to vary or contradict the terms of the claims. Id. at 981. Extrinsic
evidence should be used only to assist the Court in understanding the patent, not
to vary or contradict terms of the claims. Id.
Finally, a patentee is free to be his own lexicographer, but any special
definition given to a word must be clearly defined in the specification. Id.
2.
Elastomeric Band
The parties dispute the definition of elastomeric band.
Defendants’ Proposed Construction:
A strip of elastomeric material that has a width greater than its thickness,
with the width being in the radial direction. The strip is flat, i.e., its
surfaces are smooth, even and level without protrusions.
PPC’s Proposed Construction:
A thin, flat and encircling strip of elastomeric material that has a width
greater than its thickness. The “width” of an elastomeric band extends
along the axial direction of the connector. The “thickness” of the
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elastomeric band extends in the radial direction of the connector.
(Doc. No. 102 at 8.)
Defendants argue that they are entitled to summary judgment on PPC’s
infringement claim because its connectors do not contain an elastomeric band as
defined in the ‘416 patent. It is Defendants’ position that elastomeric band
should not be given its ordinary meaning because this term is specifically defined
in the ‘416 specification.
An elastomeric band 26 is disposed within a cavity formed in part by a
shoulder 34 of compression nut 16. “Band” is used in the sense of a flat
strip, i.e., the width is greater than the thickness. (The “length” would be
the circumference of the band, with the width being in the radial direction.)
An O‐ring is not considered a band and would not work as a replacement
for the band of the present invention.
(2:38‐45.)
Defendants argue that PPC cannot avoid the definitions that are included
in the specification. Phillips, 415 F.3d at 1316 (where the specification includes a
special definition, the inventor’s lexicography governs). The fact that the word
“band” is included in quotations marks indicates an intent to define. Sinorgchem
Co. v. Int’l Trade Comm’n, 511 F.3d 1132, 1136 (Fed. Cir. 2007). Use of “i.e.”, for
example, signals an intent to define a word, and the Court should construe the
disputed term according to that definition. Edward Lifesciences LLC v. Cook,
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Inc., 582 F.3d 1322, 1334 (Fed. Cir. 2007). Here, the specification specifically
defines “band” as a flat strip having a width greater than thickness, with width
being in the radial direction. That the band must be a flat strip is further
reinforced by the language in the specification which excludes an O‐ring. Finally,
because the specification specifically provides that the longer dimension is in the
radial direction, such definition controls. See Sinorgchem Co., 511 F.3d at 1137‐
38; Multiform Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1478 (Fed. Cir.
1998) (finding that where the specification defines a term without ambiguity or
incompleteness, such definition controls).
In response, PPC argues that if elastomeric band is construed as proposed
by Defendants, none of the embodiments disclosed in the ‘416 patent fall within
the scope of such claim term, and the elastomeric band takes on the dimensions
of a thin rubber washer. By contrast, if the Court adopts its proposed
construction, all of the embodiments disclosed will include the elastomeric bands
that fall within such construction.
PPC further argues that construing the term elastomeric band to resemble a
thin rubber washer is inconsistent with the specification as a whole, and is not
sufficiently definite to establish that the patentee defined elastomeric band to
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exclude embodiments. Renishaw, 158 F.3d at 1249. While a patentee is free to be
his own lexicographer, and is bound by his lexicography, any special definition
given to a claim term must be clearly defined. Markman, 52 F.3d at 980. The
definition must be sufficiently clear so that one of ordinary skill in the art would
deem it to be different from its common meaning. In re Paulsen, 30 F.3d 1475,
1480 (Fed. Cir. 1994).
The parties’ dispute centers on which dimension “width” is applied to. To
resolve this dispute, the Court must refer to the context in which “width” is used
in the specification. The language relied on by Defendants ‐ that the width of the
band is greater than the thickness and that the width is in the radial direction ‐ is
easily understood when viewed in context. The first use of width clearly refers to
a side to side or axial measurement of a flat strip, as it is contrasted with
“thickness”, while the second use of width refers to a circumferential or radial
measurement as it is used in the context of discussing “length” as the
circumference of the band.
Requiring the elastomeric band to have a radial width that is greater than
the thickness describes a thin washer shape, which shape runs counter to the
objectives of the band as taught in the specification ‐ which is when compressed,
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the elastomeric material of the band deforms and pushes against the cable,
creating a weather‐tight seal and providing retention force to the cable/connector
combination. (‘416 patent, 4:32‐36.)
Further, all of the embodiments disclosed in the ‘416 patent have
elastomeric bands that are depicted as having a thickness in the radial dimension
that is less than the widths in the axial dimension. (See Figures 1, 4 and 7.) In
this case, the Court agrees that if the patentee had desired to define the term
“elastomeric band” that has a width greater than its thickness, with the width
being in the radial direction, the patentee would have provided a drawing that
fit such definition.
Finally, the elastomeric band is compared to a “flat strip.” (‘416 patent,
2:40‐41.) A thin washer shape cannot be laid out to resemble a flat strip. Based
on the above, the Court finds that when read in view of the specification as a
whole, the claim term elastomeric band does not require a width greater than
thickness, the width being in the radial direction.
The Court further finds that there is no requirement that every surface of a
“flat strip” be flat. In fact, dictionary definitions of “flat” generally describe one
surface that is level or even. (See, e.g., Aycock Decl., Ex. B “3. Having a
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relatively broad surface in relation to its thickness or depth: a flat board.” The
American heritage Dictionary of English Language, (4th ed. 2000); Ex. C “1.
horizontally level. 2. level, even, or without unevenness of surface, as land or
tabletops. 3. having a surface that is without marked projections.” Random
House Webster’s College Dictionary, (2d. ed. 1997).) Accordingly, to fall within
the claim limitations of an elastomeric band, it is not required that all surfaces of
the strip be flat.
Based on the above, the Court will adopt the following construction for the
term “elastomeric band”:
A thin, flat and encircling strip of elastomeric material that has a width
greater than its thickness. The “width” of an elastomeric band extends
along the axial direction of the connector. The “thickness” of the
elastomeric band extends in the radial direction of the connector.
3.
Infringement Analysis
Defendants argue they are entitled to summary judgment on PPC’s
infringement claim because the accused products do not include an elastomeric
band as defined in the ‘416 patent. Specifically, Defendants argue the accused
products include an elastomeric band that has one curved surface.
(Memorandum in Support of Summary Judgment, p. 12‐13.) Further, Defendants
argue the elastomeric band in the accused products do not have a radial
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dimension that is greater than its axial dimension. The Defendants’ arguments of
non‐infringement no longer have merit as the Court has not adopted the
Defendants’ proposed construction of “elastomeric band.” Rather, the Court has
adopted a construction of elastomeric band that does not require that the radial
dimension is greater than the axial dimension or that all surfaces must be flat.
Accordingly, Defendants have not demonstrated that they are entitled to
judgment as a matter of law on the infringement claim.
B.
Trade Dress Claim
In the Complaint, PPC alleges that the appearance, or trade dress, of its EX
connectors is unique and distinctive. (Comp. ¶ 17.) PPC asserts that its EX
connectors are regarded as top of the line connectors by the industry.
(Declaration of Andrew White ¶ 9 (Doc. No. 57).) PPC alleges that Defendants
have adopted, imitated and used the EX connector trade dress in connection with
their infringing connectors. (Id. ¶ 20, Ex. B (comparing EX connector with
infringing connector).)
In an action under the Lanham Act for trade dress infringement, a plaintiff
is generally required to prove: (1) that the plaintiff has a protectible interest in its
trade dress design, which will be established by evidence that the design (a) is
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inherently distinctive or is at least descriptive and has acquired secondary
meaning among consumers, and (b) is not functional; and (2) that the defendant’s
use of a similar trade dress design is likely to cause confusion among consumers
as to the source of the partiesʹ goods or services. Gateway, Inc. v. Companion
Prod., Inc., 384 F.3d 503, 507 (8th Cir. 2004).
PPC has the burden of proving that the matter sought to be protected is not
functional. 15 U.S.C. § 1125(a)(3). An element of trade dress is nonfunctional “if
it is an arbitrary embellishment primarily adopted for purposes of identification
and individuality.” Rainbow Play Sys., Inc. v. Groundscape Tech., LLC, 364 F.
Supp.2d 1026, 1037 (D. Minn. 2005) (citations omitted). A feature is functional “if
it is essential to the use or purpose of the article or if it affects the costs or quality
of the article.” TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 33
(2001). Also, “a functional feature is one the ‘exclusive use of [which] would put
competitors at a significant non‐reputation‐related disadvantage.’” Id. (citation
omitted). A prior patent is important in resolving a trade dress claim because a
“utility patent is strong evidence that the features therein claimed are functional.”
Id. at 29.
Defendants argue that PPC cannot meet its burden of proving the external
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features of the EX connectors are not functional. PPC has failed to identify any
feature that is simply an arbitrary embellishment. Further, the external
appearance of the EX connector consists entirely of its functional components: the
nut, connector body and compression ring. There can be no question that these
components are necessary for the operation of the EX connector. Defendants
argue that given the utility for these components, PPC’s claim to a monopoly
would put competitors at a significant disadvantage. TrafFix, 532 U.S. at 32.
As noted above, a utility patent is strong evidence that the claimed features
are functional. PPC owns the ‘194 patent ‐ an expired utility patent which
includes claims that recite the three components of the EX connector. (Boyd Decl,
Ex. 7.) At a recent ITC proceeding, PPC established that the EX connector and its
components were covered by the ‘194 patent. (Boyd Decl., Ex. 4, pp.103‐05.)
Given the administrative record of this ITC proceeding, Defendants argue that
PPC is barred from taking a contrary position. Defendants thus argue that PPC
has failed to demonstrate that its EX connector is not covered by protectible trade
dress and Defendants are entitled to summary judgment.
In response, PPC asserts the appearance of its EX connector is not
functional. PPC is not arguing that competitors cannot use the three components
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that make up its EX connectors: the nut, the connector body and the compression
ring. PPC’s trade dress claim is based solely on whether the color scheme and
overall impression created by the EX connector is functional.
PPC asserts there are many examples of different designs on the market of
a coaxial cable connector that practice the ‘194 patent. The central advance of the
‘194 patent is the interaction between the inner wall of the compression ring and
the corresponding connector body, and that this central advance can be
accomplished by a wide variety of connectors that have an outwardly distinct
appearance. (See PPC’s Memorandum in Opposition, ps. 31, 34 and 35.) As is
clear from the examples provided, some connectors use all metal components,
others use metal and plastic. Further, the silver‐colored finish of the EX
connectors is not essential to its purpose or use. Other connectors have brass
finishes or copper finishes.
PPC further argues that Defendants have failed to put forth evidence as to
why it chose to design its connectors in such a way as to copy the outward
appearance of the EX connector, rather than one of the many other design choices
available. PPC argues that at the very least, until a full record is developed on
this and other relevant issues, summary judgment is premature.
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Because PPC has the burden to prove that the appearance of the EX
connectors is not functional, and because discovery was not complete at the time
this motion was briefed and argued, the Court finds that Defendants’ motion for
summary judgment on the trade dress claim is premature.
IT IS HEREBY ORDERED that Defendants’ Motion for Summary Judgment
[Doc. No. 108] is DENIED.
Date: July 22, 2011
s/ Michael J. Davis
Michael J. Davis
Chief Judge
United States District Court
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