Opinion
CAUSE NO. IP02-0762-C-M/S
March 2, 2004
ORDER ON SUMMARY JUDGMENT MOTIONS
The parties have filed a total of five summary judgment motions. This Order addresses all five of those motions. To start, this cause is now before the Court on cross motions for summary judgment on the issues of infringement and validity of the plaintiffs', Puritan-Bennett Corp. and Mallinckrodt, Inc. (collectively, "Puritan-Bennett"), U.S. Design Patent No. D 437,056 S ("`056 patent"). Puritan-Bennett asserts that there is no material question of fact that the defendants', Penox Technologies, Inc. and Essex Industries, Inc. (collectively, "Penox"), ESCO2RT ("ESCORT") portable liquid oxygen device infringes the `056 patent. Puritan-Bennett also contends that Penox cannot establish that the `056 patent is invalid or unenforceable by clear and convincing evidence, therefore, Penox's counterclaims should be dismissed.
In contrast, Penox argues that there is no material question of fact that its ESCORT product does not infringe the `056 patent. Penox asserts that it has evidence of invalidity that supports its counterclaim. In addition, Penox contends that it can establish by clear and convincing evidence that the inventors of the patented design committed inequitable conduct before the Patent Trademark Office ("PTO"), therefore, the Court should find the `056 patent unenforceable.
In addition, Penox has moved for partial summary judgment on the issue of the proper date from which any potential patent infringement damages should accrue. Penox asserts that the proper date is the date upon which it received notice of this lawsuit because at the only other time that Penox was put on notice of a potential patent infringement issue, the `056 patent had not yet issued.
Puritan-Bennett contends that regardless of when the patent issued, Penox admits that it had notice in October 2000, that Puritan-Bennett felt that Penox's ESCORT infringed its patent rights. This is sufficient, Puritan-Bennett argues, to start accrual of patent damages.
Finally, Penox has moved for summary judgment on Puritan-Bennett's claim that Penox's ESCORT portable liquid oxygen system infringes Puritan-Bennett's trade dress rights, both under the Lanham Act and under Indiana common law, in its HELiOS H-300 ("HELiOS") portable liquid oxygen system. Penox asserts that summary judgment on these claims is proper because the HELiOS had not acquired secondary meaning as of the relevant date, because there is no evidence of a likelihood of confusion between the ESCORT and the HELiOS and because the evidence only supports the conclusion that the HELiOS is primarily functional in its overall design.
In contrast, Puritan-Bennett contends that its trade dress has acquired secondary meaning in the market for portable liquid oxygen systems as of the relevant date, that there is evidence of actual confusion between the ESCORT and the HELiOS, and that the HELiOS trade dress's overall look is non-functional.
The parties' motions are fully briefed and ripe for ruling. For the reasons stated herein, the Court DENIES Puritan's motion for summary judgment of infringement and GRANTS its motion for declaration that the `056 patent is not invalid or unenforceable. In addition, the Court GRANTS Penox's motion for summary judgment of non-infringement and DENIES Penox's motion for summary judgment of unenforceabiliry of the `056 patent. The Court also DENIES Penox's motion for partial summary judgment on damages as MOOT, Furthermore, the Court GRANTS Penox's motion for summary judgment of non-infringement of the HELiOS trade dress.
I. DEFENDANTS' MOTIONS TO STRIKE
The Court notes that although Penox's motions to strike were presented in the context of the summary judgment motions related to patent infringement, Puritan-Bennett chose to counter Penox's motions in its surreply to Penox's motion for summary judgment on trade dress infringement. The Court only became aware of that fact when working through the issues in Penox's motion for summary judgment on the trade dress infringement issue. The Court recognizes that the motions for summary judgment in this case are related, however, there is nothing about them that would have required the Court to address them all in one Order or to consider them all simultaneously. Puritan-Bennett risked having all of its proffered declarations struck for not timely producing them with each motion to which they were relevant. Under the ordinary course, they would have been untimely produced as to the bulk of the motions at issue in this Order.
Penox has moved to strike eight declarations that Puritan-Bennett submitted to support its arguments on patent infringement, and has moved to strike some evidence that Puritan-Bennett submitted in a sur reply in opposition to Penox's motion for summary judgment on trade dress infringement. One of those declarations that is common to both motions is that of Puritan-Bennett's survey expert, Jacob Jacoby, Ph.D. ("Dr. Jacoby"), and included a design patent survey and a likelihood of confusion survey. In an entry dated November 25, 2003, the Court denied Penox's motion to strike Dr. Jacoby's declaration, accompanying report and survey data, on the basis of timeliness, but left open the question of whether or not Dr. Jacoby's survey evidence was relevant. In addition, the November 25, 2003, entry did not address any of the other declarations that Penox has moved to strike.
The other declarations that Penox seeks to exclude are those of W. Robert Worrell ("Worrell"), Jeffrey Earnest ("Earnest"), Jim Fulford ("Fulford"), Richard Ranalli, Jr. ("Ranalli"), Shelly McGee ("McGee"), Jo-Von Tucker ("Tucker"), and Lori Thompson("Thompson"). The Court notes that Penox moved to strike these declarations both in the context of Puritan-Bennett's motions for summary judgment of patent infringement, validity and enforceability, and in the context of its own motions for summary judgment of patent infringement. Penox has also moved to exclude the Earnest declaration in the context of its motion for summary judgment of trade dress infringement. The Court will endeavor to make consistent rulings relevant to all motions.
With respect to Worrell's declaration, the Court finds it must be struck for untimeliness. Puritan-Bennett disclosed Worrell as an expert on July 31, 2003, approximately eight days prior to the last-agreed summary judgment deadline. See Case Mgmt. Plan Order, Aug. 16, 2002, at 4 (requiring Puritan-Bennett to disclose experts to be used at the summary judgment stage sixty days prior to the summary judgment deadline); Order, July 18, 2003 (setting summary judgment deadline at August 8, 2003). Although Puritan-Bennett sought leave of the Court to modify the case management plan to extend the deadline for survey-related expert reports to accommodate the Court's ruling on claim construction, Puritan-Bennett never sought leave of the Court to extend the same deadline with respect to other expert reports. Under the circumstances, the Court cannot find that Worrell's declaration is timely served with respect to the summary judgment motions at issue now. Penox had no time to depose or otherwise interview Worrell prior to finalizing briefing on summary judgment. For this reason, Worrell's declaration is hereby STRUCK; Penox's motion to strike Worrel's declaration is hereby GRANTED.
With respect to Earnest's declaration, the Court finds that it is marginally relevant and should not be stricken. Earnest provides information regarding two boxes sent to Puritan-Bennett that contained Penox's ESCORT products, one in February 2003 and one in September 2003. Puritan-Bennett offers the evidence to establish confusion between its HELiOS product and Penox's ESCORT product. Although it may not be highly probative evidence, it meets the minimal requirements for relevance found in Rule 401. For this reason, the Court hereby DENIES Penox's motion to strike the Earnest declaration.
With respect to the declarations of Fulford and Ranalli, the Court finds that other than one portion of Ranalli's declaration, they are worded in such a way as to fall outside the hearsay rule. The comments in Fulford's declaration indicate that he received calls from patients who believed they had a HELiOS, when in fact they had an ESCORT. These comments are offered to prove patient confusion. Generally, the Ranalli declaration similarly identifies what a third party said, but it is offered to prove passing off rather than the truth of the statement. However, Ranalli also declares to know what other people at the meeting believed. The purpose of the proffer is to prove that those people believed an ESCORT was a HELiOS. Therefore, the Court concludes that this statement is inadmissible. Penox's motion to strike the Fulford declaration is hereby DENIED. Penox's motion to strike the Ranalli declaration is hereby GRANTED in part and DENIED in part.
Penox also asserts that these gentlemen were not timely disclosed as witnesses, therefore, their declarations should be struck. Although the Court agrees that Puritan-Bennett's disclosure of Fulford and Ranalli for purposes of summary judgment were not timely, the prejudice to Penox is minimal because the substance of their testimony, if not the specifics, was disclosed by other witnesses' depositions. Penox learned at the Thompson and Earnest depositions that customer service and sales representatives had information about customer confusion, therefore, Penox cannot be too surprised that Puritan-Bennett sought to supplement its confusion evidence with testimony from Fulford and Ranalli.
With respect to McGee's declaration, the Court finds that although some of the evidence would have been more aptly presented in support of Puritan-Bennett's opening brief on patent infringement and related issues, it is also appropriate material presented in opposition to Penox's motion for summary judgment of unenforceabiliry. Moreover, with respect to the evidence attached to McGee's declaration Penox's argument goes to the evidence's probative value rather than its relevance or timeliness. For these reasons, Penox's motion to strike McGee's declaration and the evidence attached to the declaration is hereby DENIED.
With respect to Tucker's declaration, the Court finds that Puritan-Bennett did not timely disclose Tucker as a witness pursuant to Federal Rule of Civil Procedure 26(a) ("Rule 26(a)"). Although Puritan-Bennett may argue that its catch-all witness provision would capture Tucker because she appears as a model in an advertisement disclosed to Penox, Penox could not reasonably have expected that Tucker would be called as a witness merely because of such an appearance. Nor has Penox had an opportunity to depose Tucker; therefore, Puritan-Bennet's failure to disclose timely Tucker as a witness is not "harmless." See Fed. R Civ. P. 37(c). Penox's motion to strike Tucker's declaration is hereby GRANTED.
With respect to Thompson's declaration, the Court finds that Thompson's declaration and the accompanying evidence is marginally relevant to the issues of infringement of the `056 patent, and are more clearly relevant to the issues of trade dress infringement. The bulk of the statements in Thompson's declaration are clearly directed to the FffiLiOS trade dress rather than the `056 patented design. However, Puritan-Bennett has asserted, and Penox has not disagreed, that the FffiLiOS very closely reflects the `056 patented design. The Court recognizes that the proper inquiry in a patent infringement analysis is between the allegedly infringing design and the `056 patent, however, evidence related to a commercial embodiment with no or little material difference between it and the patented design may be used in addition to the patented design in an infringement analysis. See Braun, Inc. v. Dynamics Corp. of Am., 975 F.2d 815, 820 n. 8 (Fed. Cir. 1997) (quoting Lee v. Dayton-Hudson Corp., 838 F.2d 1186, 1189 (Fed. Cir. 1988)). In addition, the evidence proffered in Thompson's declaration is relevant to Puritan-Bennett's trade dress infringement claim. For these reasons, the Court finds that Thompson's declaration and accompanying evidence is relevant and admissible. Penox's motion to strike the declaration is hereby DENIED.
Finally, with respect to Dr. Jacoby's survey evidence, the Court finds that the evidence should be admitted. As stated above, the Court has already determined that Dr. Jacoby's survey evidence should not be struck because it was untimely filed. The analysis left open by the Court's prior entry on the subject was Penox's relevancy argument. Penox argues that Dr. Jacoby's survey targets the wrong class of individuals: patients. Patients, Penox contends, are not the "ordinary observer" to whom the test for design patent infringement is directed, nor are they the "market" for purposes of a trade dress infringement analysis. Rather, it is the sophisticated dealer of medical equipment who "purchases" the portable liquid oxygen devices at issue that is the "ordinary observer" or that comprises the relevant market. Moreover, Penox argues, Dr. Jacoby's patent survey design is flawed because it does not compare the allegedly infringing device with the `056 patented design, but compares commercial products to each other.
While it is true, as Penox suggests, that the ordinary observer test in a patent infringement analysis focuses on the purchaser of the design in question, see Good year Tire Rubber v. Hercules Tire Rubber, 162 F.3d 1113, 1117(Fed. Cir. 1998), it is also clear that the test is meant to be objective in that it looks at the product throughout its useful life. See Contessa Food Prods., Inc. v. Conagra, Inc., 282 F.3d 1370, 1381 (Fed. Cir. 2002). In this case, the Court is unwilling to rule that survey evidence that accounts for a patient's perspective is completely irrelevant to the inquiry of whether or not an ordinary observer would confuse the allegedly infringing device for the `056 patented design because even Penox has admitted that the needs of the chronic obstructive pulmonary disease patients, as communicated through durable medical equipment suppliers ("DMEs"), was relevant to its own decision to pursue an ultra-light weight portable oxygen unit design. Defs.' Stmt. of Facts, ¶¶ 14, 18.
Similarly, the Court is unwilling to strike Dr. Jacoby's trade dress confusion survey of patients because they are a part of, although not the entire, relevant market. The Seventh Circuit has stated that
a trademark is an identifier rather than a property `right.' [therefore] the use of a competitor's mark that does not cause confusion as to source is permissible. Consistent with this economic focus of trademark law, the likelihood of confusion must be determined with reference to the realities of consumer behavior in the relevant market.Dorr-Oliver, Inc. v. Fluid-Quip, Inc., 94 F.3d 376, 380-81 (7th Cir. 1996) (citations omitted) (alteration by this Court). In the instant case, both parties seem to agree that the consumer of portable oxygen tanks are DMEs. Defs.' Stmt. of Facts, ¶¶ 10 12; Toma Dep. at 67-68; Thompson Dep. at 38-39. However, both parties have also presented evidence that suggests that DMEs are influenced in some ways by patients. Thompson Decl. ¶¶ 3, 4, 6; Defs.' Stmt. of Facts, ¶ 14. As a result, the Court is unwilling to find that evidence of patient confusion is completely irrelevant to the inquiry of trade dress infringement.
For the foregoing reasons, the Court hereby DENIES Penox's motion to strike Dr. Jacoby's survey evidence on relevance grounds.
In summary, the Court has GRANTED Penox's motion to strike the Worrell and Tucker declarations, GRANTED in part and DENIED in part Penox's motion to strike the Ranalli declaration, and DENIED Penox's motion to strike the Earnest, Fulford, McGee, Thompson and Dr. Jacoby declarations and DENIED Penox's motion to strike Dr. Jacoby's survey evidence.
II. BACKGROUND A. THE PARTIES
Plaintiif Puritan-Bennet Corp. manufactures and/or sells portable liquid oxygen dispensers, including the HELiOSH-300 portable liquid oxygen dispenser. Compl. ¶ 6. Plaintiff Mallinckrodt, Inc. wholly owns Puritan-Bennet Corp. Id. ¶ 2.
Defendant Essex Industries, Inc. designs and/or manufactures portable liquid oxygen dispensers including the ESCO2RT portable liquid oxygen dispenser ("ESCORT"). Id. ¶ 10. Defendant Penox Technologies, L.L.C., which is a subsidiary of The Respiratory Group, sells portable liquid oxygen dispensers, including the ESCORT. Id. ¶ 10; Sever Decl. ¶¶ 2-3.
B. THE `056 PATENT
Puritan-Bennett's `056 patent issued on January 30, 2001. Defs.' Exh. A, U.S. Patent No. Des. 437,056 S, at 1 ("`056 Patent"). The application that matured into the `056 patent was filed on October 29, 1999. Id. The inventors named on the `056 patent are Richard Scott Remes ("Remes"), Leonard S. Toma ("Toma"), Mark Robert Frye ("Frye"), and Scott LaVoy Conway ("Conway"). Id. Puritan-Bennett is currently seeking to add Timothy Payne as another inventor of the `056 patented design. Payne Dep., at 26-27. The `056 patent is owned by Mallincrkrodt Inc., as assignee. `056 Patent, at 1. The title of the `056 patent is "Portable Gas Dispenser," and the single claim of the `056 patent is "The ornamental design for a portable gas dispenser, as shown and described." Id. There are eight figures to the `056 patent that are attached to this order in an appendix. See Appendices G-L.
The Court has already construed the single claim of the `056 patent. The construction reads:
Figure 3 of the `056 patent shows the front of the patented design. From this view the most striking feature of the `056 patented design is evident: a center Roman arch, or rounded arch, at the top and center of which sits a rather large dial. Two partial arches, with slightly larger radii than the center arch and with a shorter height, flank the center arch and contribute to focusing attention upon the dial. In addition, a rather thick, squared, solid handle that appears to grow from the outer portions of the two partial arches, forms a rectangular arch over the center Roman arch and creates an opening between itself and the top of the center Roman arch, which creates a frame for the top of the center arch in which sits the rather large dial. The rather large dial has a center hour-glassed shaped flange that adds to the bulky look of the dial design.
Other features of the design that are evident from the front view of the `056 patent drawings include a column of horizontal vents on each of the two partial arches that start at the base of each arch and continue approximately halfway up each arch base. Although much of the design is symmetrical on its face, it is at this point that its asymmetry becomes apparent. The vents in the bottom half of the column of vents on the left partial-arch base are cut short by a notch that is cut out of the junction of the center Roman arch portion and the left partial-arched portion. Also on the left partial-arched portion, but at the top, is an extra shoulder that extends out from the junction of the left partial-arched portion and the center Roman arched portion. At the top of the right partial-arched portion two connectors are nestled in a reverse stair-stepped cutout that slant downward.
Vents are also prominent on the top of the center Roman arched portion, as shown in Figure 7. There are two rows of vents on either side of the center Roman arched portion, leaving the top of the center Roman arched portion smooth.
The `056 patented design also has a particular dimension. The footprint of the design, as pictured in Figure 8, best describes the overall dimension and is shaped like profile of a Volkswagen Beetle or "Bug" with a slightly concave base, where the base is the back of the dispenser design, the roof curve outlines the base of the center Roman arch portion, the front end curve outlines the base of the right partial-arched portion and the rear end curve outlines the base of the left partial-arched portion. Other than the variations in this dimension previously and further described, these shapes are fairly maintained to the tops of the arched portions.
Figure 1 of the `056 patent depicts another feature of the design that also serves to highlight the rather large dial that sits atop of the center Roman arch portion. There is a gently curved recess at the top of that portion in which the rather large dial is positioned vertically. The outer surface of the dial, as opposed to its face described earlier, has ribs that run from the back of the dial to the front and cover that outer surface.
Finally, looking at the back of the dispenser design of the `056 patent, as shown in Figure 4, the top of the center Roman arch is visible beneath the rectangularly-arched handle. In addition, a spoon-shaped lever is placed vertically in a recessed region on the right upper portion of the back.Puritan-Bennett Corp. v. Penox Technologies, Inc., IP02-0762-C-M/S, Order on Claim Constr. (S.D. Ind. Dec. 4, 2003), at 16-17 ("Cl. Constr. Order").
Puritan-Bennett asserts that its HELiOS portable liquid oxygen dispenser is the commercial embodiment of the `056 patent. Pls.' Stmt. of Facts, ¶ 4 (citing Remes Decl. ¶¶ 7 8; Crowson Decl. Exh. B, at 1).
The patent examiner cited the following prior art references: (1) U.S. Patent No. D 329, 288 to Miller; (2) U.S. Patent No. D 412, 577 to Mickelson; (3) U.S. Patent No. 3,672,129 to Strople; (4) U.S. Patent No. 4,409,978 to Bartos; and (5) U.S. Patent No. 4,788,973 to Kirchgeorg. `056 Patent, at 1. However, the `056 patent issued without office action.
C. THE MARKET IN WHICH THE PARTIES COMPETE
Both Puritan-Bennett and Penox sell portable liquid oxygen dispensers for use by people with chronic obstructive pulmonary disease ("COPD"), or other chronic pulmonary problems, whose therapeutic needs include exercise or ambulation. Defs.' Stmt. of Facts, ¶ 5. Portable liquid oxygen dispensers allow COPD patients to carry their supply of oxygen with them, either on a shoulder strap, on a hip pack, or by hand. Id. ¶ 7. Besides portable liquid dispensers, alternative modes of oxygen therapy for COPD patients include: pressurized oxygen cylinders place on small carts for ambulation; oxygen concentrators that are usually large and stationary; and liquid oxygen reservoirs that are also usually large and stationary and can be used to refill portable dispensers. Id. ¶ 8. See also Pls.' Mem. in Opp'n to Defs.' Mot. for Summ. J. of Non-Infringement ("Pls.' Patent Mem. in Opp'n"), at 8-9 (discussing the oxygen therapy products available to patients prior to Puritan-Bennett's launch of the HELiOS). COPD patients do not purchase portable liquid oxygen dispensers directly from either Puritan-Bennett or Penox because the dispensers are available only by prescription. Defs.' Stmt. of Facts, ¶ 11.
Instead, home health care equipment dealers, medical supply companies and hospitals purchase the dispensers directly from Puritan-Bennett and Penox. Id. ¶ 10. Generally, home health care equipment dealers and supply houses retain ownership of the portable liquid oxygen dispensers and lease the equipment to patients and/or their insurance companies. Id. ¶ 12.
Penox states that it generally has no contact with COPD patients. Id. ¶ 13. However, Puritan-Bennett states that it markets its dispenser, the HELiOS, directly to end-user patients through "a myriad of marketing, promotional and advertising materials, including a national television campaign specifically targeted to oxygen patients and their families, direct mail and direct response advertising specifically directed to oxygen patients and their families, as well as advertisements in hundreds of newspapers directed to patients." Pls.' Patent Mem. in Opp'n, at 17 (citing Thompson Decl. ¶¶ 3-4; 13-17). Puritan-Bennett contends that its "advertising and promotion actively encourages those patients requiring supplemental oxygen to ask their physicians for a HELiOS device, and currently the majority of Puritan-Bennett's promotional activities for HELiOS are targeted to oxygen patients not medical professionals." Id. (citing Thompson Decl. ¶ 6; Fulford Decl. ¶ 4) (emphasis by Puritan-Bennett). In other words, Puritan-Bennett is advertising to patients to create "pull through" sales of the HELiOS. Thompson Decl. ¶ 6.
D. DEVELOPMENT OF THE ULTRA LIGHTWEIGHT PORTABLE LIQUID OXYGEN UNITS 1. Puritan-Bennett's `056 Patented Design the HELiOS
Apparently, the small and highly portable units involved in this suit are relatively new. Puritan-Bennett began developing its HELiOS "ultra lightweight and long lasting portable liquid oxygen system" in 1998. Id. at 7. The company characterizes itself as "the recognized leader and innovator in the liquid oxygen system industry." Id. Puritan-Bennett avers that in early 1998 it envisioned revolutionizing the portable liquid oxygen system market with an entirely new system. Remes Decl. ¶¶ 5 6.
Puritan-Bennet developed the `056 patented design, which was the blueprint for its HELiOS product, with the help of an industrial design firm, Omnica Corp. Id. ¶ 5. Puritan-Bennett asked Omnica to focus on a revolutionary or "wow" ornamental design. Id. However, Puritan-Bennett also provided Omnica with some general operational parameters for the HELiOS including the volume of oxygen the unit should contain and the unit's optimum weight. Id.
In approximately September 1998, Omnica presented to Puritan-Bennett the first ornamental design images and a foam mock up of an ornamental design. Id. ¶ 6. Additional shape studies done by Omnica were also considered by Puritan-Bennett. Id. Eventually, Puritan-Bennett and Omnica settled upon the ornamental design and overall visual impression of the HELiOS. Id.
Once Puritan-Bennett settled on the design, it worked to configure the internal components of a portable oxygen device within that exterior design. Id. Apparently, Puritan-Bennett and Omnica worked further to refine the ornamental design based on additional engineering. Id. A design patent application was filed on the refined design on October 29, 1999. Id. ¶ 8.
The HELiOS, Puritan-Bennett's commercial embodiment of the `056 patent and the trade dress for which it seeks protection through this law suit, is pictured in Appendix M. The HELiOS has an off-white color, a gray handle, a gray flow control knob and two silver cannula barbs. Defs.' Stmt. of Facts, ¶ 200 (citing Noll Decl., Exh. 1). The handle of the HELiOS curves rather sharply from the back of the dispenser toward the front. Id. ¶ 201. For purposes of the patent issues in this case, the Court has determined that the curve of the handle is functional. Cl. Constr. Order, at 7. The flow control knob, or dial, of the HELiOS has ribbing on the outer portion and an hourglass-shaped single blade in the center. Defs.' Stmt. of Facts, ¶ 202. The knob or dial is positioned in a recess at the top of a central Roman arch. Id. ¶ 203. The HELiOS is marked "Puritan-Bennett HELiOS H-300 Portable" on its label. Id. ¶ 211. The name "Mallinckrodt" also appears on the label. Id. ¶ 212.
Puritan-Bennett presented the HELiOS to the market some time in October 1999, first offered it for sale in December 1999, and first sold a HELiOS in January 2000. Thompson Decl. ¶ 3; Defs.' Stmt. ofFacts, ¶ 199. At that time, Puritan-Bennett avers, the HELiOS was the only system on the market that combined low weight (less than four pounds), with an eight-hour oxygen supply. Remes Decl. ¶ 3.
In July 2000, "HME News," a business newspaper for DMEs, featured the HELiOS product. Thompson Decl. ¶ 3; Id. Exh. 1, Marketing Bulletin, To: ACSAE, ACSS, RSMAC, ACSR and Independent Reps, From Michael Samuelson, Prod. Mktg. Mgr., RE: Oxygen Therapy HME News Article, Aug. 22, 2000 ("HME News Article"). The article stated: "If the system has won fans on the dealer side, it has perhaps won an even more devout following on the patient side." Id. Exh. 1, at PB 003903. The article also quoted Bob McCoy, a consultant at Valley Inspired Products: "Patients have seen it at a lung club meeting or heard about it and are asking for it. . . . If one dealer doesn't provide it and another one does, patients are switching." Id. However, the article focused on the HELiOS' improvements incapacity, light weight and remote monitoring system over previously used systems; it never mentions the design. Id.
The HELiOS product also made the list of the top twenty-five most requested products of the year 2000, as determined by "Home Care Magazine." Id. Exh. 2, HomeCare Website Printout, Jan 1, 2001,http://homecaremag.com/ar/medicaltopproducts/index.htm. at PB 004141 ("HomeCare Website"). The description on the "Home Care Magazine" website reports: "Weighing less than 3.4 pounds, the portable HELiOS oxygen system provided 10 hours of use between fillings, according to the manufacturer. Patients can wear it on a waist belt, shoulder strap or backpack, and it does not require tubes or canisters." Id.
The HELiOS also won the "2001 Medical Design Excellence Award" presented by Canon Communications. Remes Decl. ¶ 7.
Thompson of Puritan-Bennett states that "[w]hile the uniqueness of the HELiOS product contributed to its nearly instantaneous success, the wide-spread popularity and demand of the HELiOS product was further driven by Puritan-Bennett's vast and substantial marketing and promotional activities prominently featuring the HELiOS trade dress." Thompson Decl. ¶ 4. See also Remes Decl. ¶ 7. In late 1999, Puritan-Bennett began promoting the HELiOS product and trade dress to DMEs through sales visits, distribution of brochures, attendance at trade shows and press releases. Thompson Decl. ¶ 7. In the year 2000, Puritan-Bennett followed the DME promotions with additional promotions directed to physicians and patients such as journal and newspaper advertisements and attendance at patient group meetings to promote the HELiOs product. Id. Also in the year 2000, Puritan-Bennett continued to expand its promotions by dedicating a website to the HELiOS product. Id.; Id. Exh. 6, Puritan-Bennett HELiOS Website Printout. http://www.heliosoxygen.com/main.asp ("HELiOS Website"). Puritan-Bennett launched other promotional activities in 2002 directed to patients. Id. ¶ 7.
Nearly all of the promotional materials for the HELiOS product picture the front view of the product sitting on a hand. Id. ¶ 8. Moreover, a slogan "The little oxygen unit that makes a big difference," incorporates the HELiOS front view by replacing the letter "I" in the word "big" with that front-view image of the product. Id. ¶ 10; id. Exhs. 6 13. The slogan was introduced in February 2002. Id. ¶ 10. Pop-up displays of the HELiOS product were distributed to physicians in February 2002 as well. Id. ¶ 11. In addition, since February 2002, Puritan-Bennett has distributed nearly 3,000 HELiOS shells — plastic non-working promotional pieces that look like the HELiOS — to physicians and DMEs. Id. Other trinkets that Puritan-Bennett has used since February 2002 to promote the HELiOS look to physicians and DMEs include golf balls, Post-It Note pads, bumper stickers and water bottles. Id. Exh. 21.
Since at least the year 2000, Puritan-Bennett has also used newspaper advertisements to promote the HELiOS to oxygen patients. Id. ¶ 13. Local advertising is generally handled by local sales representatives at the regional level; in one region between October 1999 and September 2000, an estimated 30 newspaper advertisements were run. Id. In addition, DMEs run advertisements directed to the HELiOS either on their own or in cooperation with Puritan-Bennett through use of Puritan-Bennett's cooperative advertising materials. Id.; Id., Exh. 19, Cooperative Advertising Materials Packet. The HELiOS product appears in most of the cooperative advertising. Id. ¶ 13.
Beginning in February 2002, Puritan-Bennett promoted the HELiOS through a national television advertising campaign. Id. ¶ 14. The sixty-second commercial has aired on local channels in nearly forty metropolitan markets, fromLos Angeles to Boston and Dallas to Cleveland, in over twenty states. Id. On June 20, 2003, Puritan-Bennett began another phase of its national television advertising campaign by placing more than $450,000 of media buys on national networks such as CNN, FOXNews, LifeTime, MSNBC and TNT. Id. Puritan-Bennett's television commercial includes an 800 number for persons to call to obtain more information concerning the HELiOS product. Id. ¶ 15. Since the introduction of the television commercial campaign, Puritan-Bennett has received close to 50,000 telephone calls from persons seeking information about the HELiOS. Id. Upon inquiry, a person may receive a "Patient Information Kit," which includes a video that describes the HELiOS product, a brochure, a directory of dealers and a brochure for the National Home Oxygen Patient Association. Id. Puritan-Bennett has mailed over 35,000 Patient Information Kits to date. Id.
Puritan-Bennett distributed at least 500,000 HELiOS product brochures to various groups including patients, healthcare providers and DMEs. Id. ¶ 16. However, 180,000 copies of the HELiOS brochure were sent between December 2000 and August 2003, and nearly 275,000 copies of the patient brochure were sent in the same period. Id. Numbers prior to December 2000 are speculative. See id. The HELiOS product is prominently displayed in each of these brochures. Id.
Puritan-Bennett has also promoted the HELiOS though its websites,www.HELiOSoxygen.com and www.puritanbennett.com. as early as the year 2000. Id. ¶ 17. The exclusive HELiOS website, www.HELiOSoxygen.com. began operation in August 2000. Id. Since Puritan-Bennett began tracking that website in February 2001, there have been over 15,000 visitors to the site, which equates to 50 visits per day on average. Id. Every page accessed from the website at www.HELiOSoxygen.com prominently displays the HELiOS product and the HELiOS slogan' The little oxygen unit that makes a `big' difference." Id. Puritan-Bennett has also promoted the HELiOS at trade shows. Id. ¶ 18. Specifically, Puritan-Bennett participated in five shows in the year 2000, including the American Lung Association/American Thoracic Society trade show in Toronto, Canada, in May 2000, the Future Show in Las Vegas, Nevada, in May 2000, the MedTrade Show in Orlando, Florida, in October 2000, the American Association for Respiratory Care in Cincinnati, Ohio, in October 2000, and the American College of Chest Physicians in San Francisco, California, in October 2000. Id. Puritan-Bennett attended six trade shows in 2001. Id.
In addition to its advertising campaign, Puritan-Bennett promoted the HELiOS product through its sales force. Id. ¶ 19. Puritan-Bennett's sales representatives visit physicians' offices and other healthcare facilities to discuss the HELiOS product and distribute various promotional materials. Id. Local DMEs also have promoted the HELiOS product through advertising or other promotional events such as picnics. Id. In early 2001, members of both Puritan-Bennett's sales force and local DMEs began making presentations at patient group meetings to promote the HELiOS product. Id.
Between the year 1999, and September 2000, Puritan-Bennett spent in excess of $750,000 on promotional activities directed to the HELiOS product. Id. ¶ 20. Between October 2000 and September 2001, Puritan-Bennett spent an estimated additional $1 million on promotional activities directed to the product. Id.
From January 2000 through September 2000 Puritan-Bennett sold 13, 242 HELiOS portable oxygen units. Defs.' Stmt. of Facts, ¶ 213. Between September 2000 and September 2001, Puritan-Bennett sold in excess of 28,000 HELiOS portable oxygen units. Thompson Decl. ¶ 21. Puritan-Bennett enjoyed a 35% market share in the market for portable liquid oxygen units in the year 2000, and by the end of the year 2001, had acquired over 40% of that market. Id.
2. Penox's ESCORT
Penox also has an ultra lightweight product design story. Penox states that its customers, medical dealers and suppliers, indicated their desire to reduce their costs of servicing COPD patients and drove the demand for smaller, lighter and more cost-efficient portable liquid oxygen dispensers. Defs.' Stmt. of Facts, ¶ 14. Penox also asserts that when it designed the ESCORT it wanted to create a portable liquid oxygen dispenser that satisfied the market-driven criteria for size, weight, mobility, ease of use, and duration of use. Id. ¶ 18.In the mid-1980s, Penox sold a liquid oxygen system called the Penox Lightweight. Id. ¶ 22. The Penox Lightweight had the exact same liquid oxygen volume as the ESCORT, but lacked a conserver device that would stretch out the duration of the oxygen supply. Id. at ¶ 23. The Penox Lightweight's oxygen supply would last only for two hours and twenty minutes. Id. Subsequently, Penox developed a product called the Penox Portable 1 Liter. Id. ¶ 28. That system was sold in the United States beginning in the mid-or late-1990s to the present. Id. The Penox Portable 1 Liter weighs more than the Penox Lightweight, but has a larger capacity and supplies oxygen for approximately seven hours. Id. ¶ 33.
At some point in the 1990s, one of Penox's customers, Lincare, asked if Penox could make the one-liter portable device smaller. Waldman Dep., at 126. Although Penox tried to simply cut the Penox Portable 1 Liter in half, the resulting product did not have a long enough oxygen supply time to satisfy Lincare. Id. at 127.
In the late 1990s, Penox continued to work on lightweight oxygen system models and designs. Sever Decl. ¶ 9. In or about March 2000, Penox purchased electronic conserver technology from SunRise Medical. Id. Electronic conserver technology refers to a device that senses the inhalation portion of the patient's breathing cycle and then opens corresponding components to allow gaseous oxygen to flow to the patient only during inhalation. Defs.' Stmt. of Facts, ¶ 39. This technology allows for the use of smaller oxygen tanks in portable dispensers without sacrificing oxygen supply time. Id. ¶ 41.
Once Penox had purchased conserver technology, it started to develop a new portable liquid oxygen system, taking into account the functional criteria that Penox had determined was important: size, weight, mobility, ease of use, and duration of oxygen supply. Id. ¶ 42. Penox asserts that it developed the ESCORT from the inside-out; in other words, it developed the inner components first, then designed the outer molding or casing to conform as closely as possible to the inner components. Id. ¶¶ 43-46.
However, during its development of the ESCORT Penox studied Puritan-Bennett's HELiOS, identified certain features of the HELiOS that Penox wanted to duplicate (such as filled weight), and compared photographs of the HELiOS device to photographs of early prototypes of Penox's ESCORT. Crowson Decl., Exhs. N, A O. Moreover, Penox hired one of Puritan-Bennett's engineers who had worked on HELiOS, Randy Scharfenberg ("Scharfenberg"), and assigned him to work as a primary engineer on the ESCORT. Id. Exhs. L D. However, Scharfenberg only worked on features unrelated to the ESCORT'S exterior design. Scharfenberg Dep. at 18-19 96, 134; Waldman Dep. at 164; GeiszDep. at 43.
The ESCORT, as sold by Penox today, is pictured in Appendices A-D. Generally, the ESCORT is vertically oriented with a large knob centered in a Roman arch. The handle, which is rather thick, appears to grow out of the two sides of the Roman arch. Four sets of vents are positioned below the large knob and create a "V" underneath the knob. In addition, there are four additional sets of vents on the lower left portion of the Roman arch leg, and two sets of vents on the lower right portion of the Roman arch leg. All of these sets of vents slant downward, also creating an impression of a "V" on the body of the dispenser. Four sets of vents, also in the shape of a wider "V", are positioned on the top of the dispenser just behind and on top of the large center knob. A button is recessed on the left side of the large center knob, and a single connector or port is recessed on a flat region on the right side of the large center knob. A flat lever is placed vertically on the upper right-hand portion of the back of the dispenser. The footprint of the ESCORT is that of an isosceles triangle, where the base is longer than the two equal sides, and with rounded corners.
In addition, the ESCORT has a powder blue body color, a navy blue dial, a black switch and a black cannula barb. Defs.' Stmt. of Facts, ¶ 91. The navy blue dial has either a four-lobe design or a six-lobe design that resembles a six-pointed star; it has no ribbing. Id. ¶ 98.
Penox displayed a non-working prototype of the ESCORT at the October 2000 MedTrade Show. Davis Dep. at 115-16. Further development continued throughout the year 2001, and culminated in working prototypes inmid-2001. McGee Decl., Tab 2, Slide Presentation, Essex Cryogenics, Inc., Escort Program Status Information Meeting, Friday, Dec. 15, 2000, at E000110, EOOO124-25. Between the October 2000 MedTrade Show and its first shipment of ESCORTs, Penox promoted the product to DMEs such as Lincare through extended presentations. Defs.' Trade Dress Reply, at 6 (citing McGee Dec!., Tab 2). See also Waldman Decl. ¶ 5. Penox sold the first ESCORTs in September 2001. Waldman Decl. ¶ 5.
3. Other Ultra Lightweight Portable Liquid Oxygen Units
There is one ultra lightweight portable liquid oxygen device on the market other than Puritan-Bennett's HELiOS and Penox's ESCORT, Caire, Inc.'s Spirit. Pls.' Patent Mem. in Opp'n, at 10 (citing Worrell Decl. ¶ 5, Tab 2). The Spirit provides the same lightweight, ease of use and capacity features of the HELiOS and the ESCORT, but has a different appearance. See id. (citing Worrell Decl. ¶ 5, Tab 2).
The Spirit dispenser, pictured in Appendices E and F, is small and compact, however, has a squat, semi-circular shaped body, with ear muff-shaped protrusions on either side, with the knob or dial on the top and a connector barb on the top as well. In addition, the vents are not elongated slits, but rather appear mesh-like.
E. ALLEGED PRIOR ART
In addition to the devices discussed in this section, Penox also asserts that the portable liquid oxygen systems evaluated by Puritan-Bennett in the late 1990s prior to Puritan-Bennett's development of the HELiOS are also material prior art to the extent that they disclose key features of the `056 patented design. Defs.' Stmt. of Facts, ¶¶ 107-47. See also Defs.' Exh. BB, P-B CPE, at PB 000522-42, PB 000545-48, PB 000551-54, PB 000611-18, PB 000656-59.
In the early 1990s until the present, Puritan-Bennett sold the Nellcor PB Companion 500, 550, and 1000, liquid oxygen systems in the United States. Defs.' Stmt. of Facts, ¶ 139. The Companion line of dispensers features a single-bladed flow control knob, horizontal air vents on the sides and front, vertically oriented and rectangular vent-to-fill levers, and indented notches in the bottom corner of the footprint to provide access to the fill connector. Id. ¶ 141.
At least as early as 1994, Western Medica sold the Western Medica XR-3000 in the United States. Id. ¶ 148. The XR-3000 was an oxygen regulator sold in conjunction with portable oxygen cylinders. Id. The XR-3000 has a three-bladed knob and a solid, tubular handle with rounded edges that spans from one side of the device to the other and forms a rectangular opening. Id. ¶ 150.
In the mid-1980s Penox sold the Penox Lightweight liquid oxygen system in the United States. Id.
¶ 22. The Lightweight has the same liquid oxygen volume, 0.375 liters, as the ESCORT, weighed 4.25 pounds when full, stood 8.5 inches high and was 8.5 inches in diameter. Id. ¶ 24. However, the Lightweight was a continuous flow dispenser that lacked conserver technology, therefore, it had a shorter oxygen-supply time. Id. ¶¶ 23 24. The Lightweight had a slightly concave back, a horizontal cannula barb on the right front side, horizontal air vents on the lower front side, the same shaped vent-to-fill lever as the ESCORT, and a cross-section with a center front-facing semi-cylindrical portion smoothly flowing into curved quarter-cylindrical wings on each side. Sever Decl., Exh. 1, Ordering Info. Specs., Penox Tech., Inc., at EOO1082-83. A large knob rests on top of the Lightweight in addition to a lever. Id. at E001083. The Lightweight's handle is a fabric strap that is attached at the top of the device. Id.
F. THE INVENTORS' DISCLOSURES TO THE PATENT TRADEMARK OFFICE
As discussed above, the `056 patent names Remes, Toma, Frye and Conwayas inventors. `056 Patent, at 1. Each of the named inventors signed a document stating that he "acknowledge[d] the duty to disclose information which is material to the patentability in accordance with Title 37, Code of Federal Regulations, § 1.56(a)." Defs.' Exh. H, File History, `056 Patent, Decl. Power of Attorney for Patent App., Feb. 2, 2000. However, Toma testified that he was unfamiliar with his duty to disclose relevant designs to the Patent Trademark Office ("PTO"). Toma Dep. at 234-35; 239. And, Conway testified that he "saw no prior art." Conway Dep. at 219. Conway also testified that he had seen and worked with several of Puritan-Bennett's Companion portable liquid oxygen dispensers. Id. at 80-82.No prior art was submitted by the patent applicants with the patent application or at any time during prosecution of the `056 patent. `056 Patent, at 1; Defs.' Exh. H, File History, `056 Patent, Application for Design Patent. However, the Patent Examiner cited five pieces of prior art in the PTO's investigation of the `056 patent application. Defs.' Exh. H, File History, `056 Patent, Search Notes, Jul. 26, 2000. As stated above, one of those patents listed was U.S. Patent No. D 329, 288 to Miller. `056 Patent, at 1. The design shown in that patent was a Puritan-Bennett oxygen concentrator that `056 patent inventor Remes recognized. Remes Dep. at 119.
In the late 1990s, Puritan-Bennett had a Competitive Products Evaluation ("CPE") performed. Defs.' Exh. BB, Nellcor Puritan Bennett, Competitive Prods. Eval, Jan. 29, 1998 ("P-B CPE."). Apparently, Puritan-Bennett commissioned the CPE from Omnica Corp., however, employees of Puritan-Bennett participated in the evaluation including `056 patent inventor Toma. Toma Dep. at 198-99. `056 patent inventor Frye testified that he was aware of the CPE and its contents as of its date, January 29, 1998. FryeDep. at 233.
The CPE contained comparative information about the following portable liquid oxygen systems: the Caire Stroller 1.2; the Caire Sprint 0.5; the DeVilbiss Pulsair 0.5; the Invacare 1; the Penox Portable 1; the Penox Portable 2; the Penox Portable 2 No Spill; the Nellcor PB Companion 500; the Nellcor PB Companion 550; the Nellcor PB Companion 1000; the Nellcor PB Companion T; the Mark Systems Mark 5 Walker; the Health dyne Protege 1000; the L'Air Liquide Smaller Unit; and the L'Air Liquide Larger Unit. Defs.' Exh. BB, P-B CPE, atPB 000522-42, PB 000545-48, PB 000551-54, PB 000611-18, PB 000656-59. The evaluation compared specific characteristics of those devices, including: the shroud/enclosure; the product labeling; the flow control knobs; the quick connect; the shoulder straps/handles; and the patient manuals. Id. at PB 000525-28, PB 000537-40, PB 000545-48, PB 000551-54, PB 000656-59, PB 000611-18. The CPE also indicated whether or not the devices or designs were patented. Id. at PB 000537-40.
Puritan-Bennett retained and stored the devices that were compared in the CPE. Toma Dep. at 203. `056 patent inventors Remes, Toma and Payne testified that they knew Puritan-Bennett still possessed the devices after Omnica completed the CPE. Remes Dep., at 142; Toma Dep. at 203; Payne Dep. at 57-58.
In addition to this knowledge of prior art designs, `056 patent inventor Remes testified that he was a named inventor on U.S. Patent Des. No. 372, 529 (the "`529 patent"), a design patent for a portable liquid oxygen dispenser, that issued on August 6, 1996. Remes Dep. at 113. See also U.S. Patent Des. No. 372, 529. The `529 patent discloses the design for the Caire Liberator Stroller, which is one of the competitive portable liquid oxygen products that Puritan-Bennett evaluated during the development of the HELiOS. Remes Dep. at 113-14.
Remes testified that he was also a named inventor on U.S. Patent No. 5,561,983 (the "`983 patent"), a utility patent for a portable liquid oxygen dispenser, that issued on October 8, 1996. Remes Dep. at 116. See also Defs.' Exh. E, U.S. Patent No. 5,561,983. Figure 1 of the `983 patent discloses an exploded view of the Caire Liberator Stroller. Remes Dep. at 116-18.
According to Remes, both the `529 patent and the `983 patent show the following features: a fill connector notch, a series of horizontal air vents, a single-bladed control knob, a clip for attaching a shoulder strap, and a circular recess for a horizontal vent lever. Id. at 114-16.
G. EVIDENCE OF CONFUSION
Puritan-Bennett provides some evidence that DMEs and patients have confused Penox's ESCORT with Puritan-Bennett's HELiOS. Specifically, Earnest, Puritan-Bennett's Production Manager — Portable Product Team, testified at his deposition that he received a box that contained ESCORTs. Earnest Dep. at 106-07. The outside of the box, received on or about February 11, 2003, apparently had a sticker from Lincare, a DME, and also a sticker from Pari Medical. Earnest Dep. at 106-07. The United Parcel Service ("UPS") records indicate that Lincare actually shipped the box. Earnest Decl. ¶ 2. A Lincare "Defective Equipment" tag was attached to each of the two ESCORT units in the February 2003 box. Id. Earnest could not say why Puritan-Bennett received the first box. Earnest Dep. at 107.
On or about September 15, 2003, Puritan-Bennett received another box that contained seven ESCORT units. Earnest Decl. ¶ 3. The September 2003 box had a Lincare shipping label on the outside. Id. Four of the ESCORT units in the box had "Defective Equipment" tags attached to them; two of the units had white-colored Lincare tags that noted equipment defects. Id.
Earnest also declares that Puritan-Bennett received a third box on or about September 24, 2003. Id. ¶ 4. The box had a Lincare shipping label. Id.
Based on reports from salespeople, Thompson, Vice President, Marketing Respiratory Home Care Division of Puritan-Bennett, believes that patients are confused about whether the blue portable oxygen unit they have is a HELiOS. Thompson Dep. at 90.
Fulford, a support technician for Puritan-Bennett, has realized during several telephone conversations with patients that the patient was talking about an ESCORT rather than a HELiOS. Fulford Decl. ¶ 2. Fulford also declares that the patients realized during the conversation that they had an ESCORT rather than a HELiOS. Id. In addition, Fulford declares that several patients "have commented as to the numerous similarities in appearance between the ESCORT product and the HELiOS product." Id. ¶ 3. Fulford substantiates this claim with an e-mail that documented one particular call Fulford received in August 2003. Id.; id. Exh. 1, E-mail, From: Jeffery Earnest, To:KHSABHARWAL@HHLAW.COM. Aug. 22, 2003.
Ranalli, a Puritan-Bennett account representative in South Carolina and Georgia, attended a meeting at which Keith Mildenberger ("Mildenberger"), a Lincare representative, made a presentation. Ranalli Decl. ¶¶ 1-3. Mildenberger's presentation was about the new liquid oxygen system offered by Lincare, the ESCORT. Id. ¶ 4. During the presentation, Mildenberger displayed and demonstrated the ESCORT, "but repeatedly referred to it as a `HELiOS' product." Id. Furthermore, Mildenberger never distinguished the ESCORT from the HELiOS. Id. Even after Ranalli pointed out to Mildenberger that the product he was demonstrating was an ESCORT not a HELiOS, Mildenberger continued to refer to the ESCORT as a HELiOS. Id. ¶ 5.
Puritan-Bennett submitted two survey reports in connection with the summary judgment motions in this case. The first survey is related to the patent infringement issues; the second survey is related to trade dress infringement and the element of consumer confusion. Both surveys were conducted by Dr. Jacoby.
Dr. Jacoby conducted a pilot patent-related survey of forty-three patients. Jacoby Decl. ¶ 2. Interviews were conducted in Holmdel, New Jersey, Louisville, Kentucky, Chagrin Falls, Ohio, and Colorado Springs, Colorado. Id. Dr. Jacoby describes the survey design as set forth here:
Each qualified respondent was interviewed at a location convenient for him or her. Initially, each respondent was shown the eight drawings included in the `056 Patent [sic] depicting the claimed ornamental design of a portable dispenser. All drawings were reproduced in the same size as they appear in the `056 Patent [sic]. After viewing the drawings for as long as desired, each respondent was shown an array of three portable oxygen dispensers Penox's Escort (#26), Caire's Spirit 300 (#35) and Puritan-Bennett's Companion (#48). The respondent was then asked the following question designed to assess whether he or she believed any of the three portable oxygen dispensers was substantially similar in appearance to the portable dispenser depicted in the drawings of the `056 Patent [sic]:
Now I'd like you to tell me which, if any, of these dispensers looks substantially similar in appearance to the portable dispenser you see in these drawings. You can tell me that none of them looks substantially similar in appearance to the dispenser in these drawings, that only one of them does, or that more than one of them does.
For any portable oxygen dispenser named by a respondent, he or she was asked the following question to determine the reason for such response:
What, in particular, is it about the appearance of dispenser #___ that makes it look substantially similar in appearance to the dispenser in the drawings?Id. ¶ 3. A participant was "qualified" if he or she uses supplemental oxygen from a tank or dispenser on a regular basis, uses a tank that is portable, does not work for a market research company, an advertising agency or a company that makes, distributes, sells or services oxygen equipment, and has not participated in a survey on the subject of oxygen equipment. Id., Exh. 5, Supervisor Instr., (2326) Healthcare Study, at 4.
Dr. Jacoby summarized the results of the pilot survey and his conclusions as follows:
Of the 43 respondents, 34 (79%) identified the Escort [sic] unit as being substantially similar to the portable dispenser depicted in the drawings of the `056 Patent [sic]. Tab 6 contains a transcript of each of the 43 respondents' responses. When extrapolated, this means that approximately three out of four users of portable oxygen dispensers are likely to believe that the Escort [sic] unit is substantially similar to the dispenser depicted in the drawings for the `056 Patent [sic]. While data are still incoming and the percentages may change somewhat based upon further analyses and the Court's claim construction, the basic import of the findings are not expected to change. In overwhelming proportion, people who use supplemental oxygen from a portable dispenser on a regular basis are likely to believe that the Escort [sic] unit is substantially similar to the dispenser depicted in the drawings of the `056 Patent [sic].Id. ¶ 4.
In the final study, under the same design, Dr. Jacoby had a total of 109 qualified and edited respondents. Supp. Design Patent Survey Rep. of Jacob Jacoby, Ph.D., at 3. After the Court's claim construction, Dr. Jacoby merely re-analyzed the data from the original survey. Id. at 4. Dr. Jacoby summarized his findings:
Dr. Jacoby edited and validated each individual's survey based on criteria selected prior to implementation of the survey.
[M]ore than six out of ten respondents (63%) said that the ESCORT product looked "substantially similar" to the portable dispenser depicted in the drawings they had reviewed. Only one percent said the Companion dispenser looked "substantially similar" to the portable dispenser depicted in the drawings they reviewed for ornamental reason; or said the Caire Spirit did. To correct for "noise" (due to guessing or to the impact, if any, of the questions), the average who said the other dispensers looked substantially similar to the dispenser depicted in the `056 Patent [sic] drawings were subtracted from the 63% who said the ESCORT product looked substantially similar to the dispenser depicted in the `056 Patent [sic] drawings. Since this average noise level was one percent, this yielded a noise-adjusted value of 62%.Id. at 5 (footnote omitted).
Dr. Jacoby also conducted a trade dress-related survey. The Preliminary Likelihood of Confusion Survey Report of Jacob Jacoby, Ph.D. ("Confusion Survey Report"), describes the design survey in the following manner:
Each [of 50] respondent[s] was shown an exemplar of plaintiffs' HELiOS product and asked to examine it as they normally would if they were considering whether to buy or use it. After indicating they were done, the HELiOS product was removed from view and the respondent was shown an array of three portable oxygen dispensers, one of which was defendants' Escort [sic] product. The respondent was asked to examine these dispensers as they normally would if they were deciding whether to buy or use them. After indicating he/she was done, the respondent was asked several questions designed to ascertain confusion as to source, business connection or relationship, or permission or a license.
Pls.' Trade Dress Surreply, Exh. D, Prelim. Likelihood of Confusion Survey Rep. of Jacob Jacoby, Ph.D., at 4 ("Confusion Survey Rep."). The respondents were all individuals who claim to use supplemental oxygen from a portable dispenser for medical purposes on a regular basis. Id.
Dr. Jacoby principal findings and conclusions in the Confusion Survey Report were:
After adjusting for "noise" and other potential alternative explanations, the Net Confusion rate was 41%. That is, for reasons having to do with trade dress, approximately two out of five respondents were confused into believing that defendants' Escort [sic] product either:
• comes from the company that put out the HELiOS, or
• comes from a company that has a business connection or relationship with the company that put out the HELiOS, or
• obtained, or needed to obtain, permission or authorization from the company that put out the HELiOS. Based on these findings, it is my opinion that the trade dress of defendants' Escort [sic] product is likely to cause confusion with plaintiffs' HELiOS product among prospective purchasers and/or users of the products.Id. at 4-5.
H. EVENTS LEADING TO THIS LAW SUIT
Puritan-Bennett introduced the HELiOS to the public in or about November or December 1999. Thompson Dep. at 64. Puritan-Bennett sold the first HELiOS in January 2000. Id. at 55. The company sold 13, 242 HELiOS portable liquid oxygen dispensers during the period from January 2000 through September 2000. Defs.' Exh. W, HELiOS Sales Summary; Thompson Dep. at 123. As mentioned earlier, Puritan-Bennett contends that the HELiOS is the commercial embodiment of the `056 patent. Pls.' Stmt. of Facts, ¶ 4 (citing Remes Decl. ¶¶ 7 8; Crowson Decl. Exh. B, at 1). However, the HELiOS is not marked with a patent number. Pls.' Obj. Resp. to Def. Penox's First Set of Interrog., Ans. No. 1.
Penox first showed the ESCORT and offered it for sale to customers at the October 2000 MedTrade Exposition in Orlando, Florida. Waldman Decl. ¶ 5. The company continued to show and promote the ESCORT to customers over the next number of months as manufacturing and tooling was finaliTed. Id. The first ESCORT products were ordered on August 8, 2001, and shipped in September 2001. Id.
Puritan-Bennett first became aware of the ESCORT product at the October 2000 MedTrade show. Pls.' Supp. Obj. Ans. to Interrogs. Nos. 1, 4-13 15 from Def. Essex Indus., Inc., Ans. No. 7. At the MedTrade show, Richard A. Davis ("Davis"), who was then Director of Marketing for Puritan-Bennett, approached Mitchell Waldman ("Waldman") of Essex Industries, and told Waldman that Davis believed that there might be a problem with the ESCORT. Waldman Dep. at 250-52; Waldman Decl. ¶ 10; Davis Dep. at 112-14. At that time, when Waldman asked Davis what he meant by his statement, Davis responded that he though the ESCORT violated some of Puritan-Bennett's patents. Waldman Dep. at 252-53. Waldman asked Davis to identify the patents, but Davis refused to discuss the matter further at that time. Id. at 253.
By letter dated November 22, 2000, Waldman followed up with Davis about the discussion the men had at the MedTrade show regarding the appearance of the ESCORT. Waldman Decl. Exh. 2, Letter, From Mitchell Waldman, Essex Industries, Inc., To Richard A. Davis, Puritan-Bennett/Mallinckrodt, RE: Puritan-Bennett Personal Oxygen Unit; ESCORT Portable Oxygen Unit, Nov. 22, 2000 ("Waldman Inquiry Letter"). The letter stated, in pertinent part:
[P]lease identify for Essex every U.S. or other patent which has been issued to Puritan — Bennett/Mallinckrodt on [its] product, and provide us with a copy of such patent(s). If no patent has been issued, please inform us if there is a patent application pending, and if so, please tell us its status and why you believe that it might have any relationship or relevance to the proposed Essex construction. Will you promptly get back to me on this, as we are interested in avoiding any dispute with Puritan-Bennett/Mallinckrodt [sic].Id. Davis never responded to Waldman's letter. Waldman Decl. ¶ 13. Davis testified that he did not recall the letter. Davis Dep. at 120.
Penox became aware of the `056 patent and Puritan-Bennett's formal allegations that Penox infringed the patent when Puritan-Bennett filed this lawsuit on May 14, 2002. Defs.' Ans. Objs. to Pis.' First Set of Interrog., Ans. No. 3. Puritan-Bennett's complaint alleges that Penox's ESCORT infringes the `056 patent because its design is confusingly similar such that an ordinary observer would be induced to purchase the ESCORT supposing it to be a product covered by the `056 patent. Compl. ¶ 12. In addition, Puritan-Bennett's complaint alleges that Penox was notified of its allegedly infringing activity, and has continued to infringe, therefore meeting the standard for willful infringement. Id. ¶ 19. Puritan-Bennett also alleges in its complaint that Penox's ESCORT infringes Puritan-Bennett's trade dress rights in its HELiOS portable liquid oxygen system under both federal law and Indiana common law. Id. ¶¶ 23-24 28-30.
The Court has endeavored to include all the relevant facts in this section, however, recognizes that certain facts may have been omitted unintentionally and will appear in the section or sections below when they are relevant. The Court now turns to the standard that governs its decisions.
III. STANDARDS A. SUMMARY JUDGMENT
Summary judgment is granted "if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law." Fed. R Civ. P. 56(c). See also CAE Screenplates v. Heinrich Fiedler GMBH, 224 F.3d 1308, 1316 (Fed. Cir. 2000). An issue is genuine only if the evidence is such that a reasonable jury could return a verdict for the opposing party. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). A disputed fact is material only if it might affect the outcome of the suit in light of the substantive law. See id. The moving party has the initial burden to show the absence of genuine issues of material fact. See Wollin v. Gondert, 192 F.3d 616, 620 (7th Cir. 1999); Schroeder v. Barth, 969 F.2d 421, 423 (7th Cir. 1992). This burden does not entail producing evidence to negate claims on which the opposing party has the burden of proof. See Green v. Whiteco Indus., Inc., 17 F.3d 199, 201 n. 3 (7th Cir. 1994). The party opposing a summary judgment motion bears an affirmative burden of presenting evidence that a disputed issue of material fact exists. See Wollin, 192 F.3d at 621; Gonzalez v. Ingersoll Milling Mach. Co., 133 F.3d 1025, 1031 (7th Cir. 1998); Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586-87 (1986); Scherer v. Rockwell Int'l Corp., 975 F.2d 356, 360 (7th Cir. 1992). Moreover, the opposing party must "go beyond the pleadings" and set forth specific facts to show that a genuine issue exists. See Wollin, 192 F.3d at 621; Stop-N-Go of Madison, Inc. v. Uno-Ven Co., 184 F.3d 672, 677 (7th Cir. 1999); Hong v. Children's Mem. Hosp., 993 F.2d 1257, 1261 (7th Cir. 1993), cert. denied, 511 U.S. 1005 (1994). This burden cannot be met with conclusory statements or speculation, see Cliff v. Bd. of Sch. Comm'rs, 42 F.3d 403, 408 (7th Cir. 1994) (citing McDonnell v. Cournia, 990 F.2d 963, 969(7th Cir. 1993)); accord Chapple v. Nat'l Starch Chem. Co., 178 F.3d 501, 504 (7th Cir. 1999); Weihaupt v. Am. Med. Ass'n, 874 F.2d 419, 428 (7th Cir. 1989), but only with appropriate citations to relevant admissible evidence. See Local Rule 56.1; Brasic v. Heinemann's Inc., Bakeries, 121 F.3d 281, 286 (7th Cir. 1997); Foreman v. Richmond Police Dept., 104 F.3d 950, 957 (7th Cir. 1997); Waldridge v. Am. Hoechst Corp., 24 F.3d 918, 923-24 (7th Cir. 1994). Evidence sufficient to support every essential element of the claims on which the opposing party bears the burden of proof must be cited. See Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986).
In considering a summary judgment motion, a court must draw all reasonable inferences in the light most favorable to the opposing party. See Johnson Worldwide Assocs., Inc. v. Zebco. Corp., 175 F.3d 985, 988 (Fed. Cir. 1999); Wollin, 192 F.3d at 621; Thomas Betts Corp. v. Panduit Corp., 138 F.3d 277, 291 (7th Cir. 1998); Spraying Sys. Co. v. Delavan, Inc., 975 F.2d 387, 392 (7th Cir. 1992). If a reasonable fact finder could find for the opposing party, then summary judgment is inappropriate. Stop-N-Go, 184 F.3d at 677; Shields Enters., Inc. v. First Chi. Corp., 975 F.2d 1290, 1294 (7th Cir. 1992). When the standard embraced in Rule 56(c) is met, summary judgment is mandatory. Celotex Corp., 477 U.S. at 322-23; Thomas Betts, 138 F.3d at 291; Shields Enters., 975 F.2d at 1294.
B. DESIGN PATENT INFRINGEMENT
The parties have filed cross-motions for summary judgment on infringement and/or non-infringement of the `056 patent. Generally, patent infringement is a two-step analysis. First the Court must construe the claimed design. See Oddzon Prods., Inc. v. Just Toys, Inc., 122 F.3d 1396, 1404-05 (Fed. Cir. 1997); Markman v. Westview Inst., Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) ("Markman I'), aff'd, 517 U.S. 370 (1996) ("Markman II'). "The patent claim measures the invention." Sun Hill Indus., Inc. v. Easter Unlimited, Inc., 48 F.3d 1193, 1196 (Fed. Cir. 1995). Only the novel, ornamental features of Puritan-Bennett's patented designs are protected. See Oddzon Prods., 122 F.3d at 1405. The Court has already construed the `056 patent and the construction is set forth in the previous section.Next, the claimed design is compared to that of the accused design. See id. at 1404-05 (citing Elmer v. ICC Fabricating, Inc., 67 F.3d 1571, 1577 (Fed. Cir. 1995)); see also Sun Hill Indus., 48 F.3d at 1196. In this case, Puritan-Bennett must prove by a preponderance of the evidence that the patented design as a whole is substantially similar in appearance to Penox's accused ESCORT design. See id. at 1405. However, the ESCORT'S design need not be identical to find infringement. See id. Infringement is found
if, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other.Gorham Co. v. White, 81 U.S. 511, 528 (1871). Moreover, Puritan-Bennett must prove that Penox's ESCORT design appropriates the "points of novelty" in the `056 patented design that distinguishes it from the prior art. Sun Hill Indus., 48 F.3d at 1197 (citing Shelcore, Inc. v. Durham Indus., Inc., 745 F.2d 621, 628 n. 16 (Fed. Cir. 1984); Litton Sys., Inc. v. Whirlpool Corp., 728 F.2d 1423, 1444 (Fed. Cir. 1984)).
C. PATENT INVALIDITY
Puritan-Bennett has moved for a declaration that the `056 patent is not invalid. In other words, Puritan-Bennett has moved for summary judgment on Penox's counterclaim of invalidity. Design patents are subject to the same non obviousness requirement found at 35 U.S.C. ` 103 as utility patents. See In re Borden, 90 F.3d 1570 , 1574(Fed. Cir. 1996). Moreover, because a patent is presumed valid, Penox mustprove its invalidiry counter claim by clear and convincing evidence. See Avia Group Int'l, Inc. v. L.A. Gear Cal, Inc., 853 F.2d 1557, 1562 (Fed. Cir. 1988).
Penox has not alleged that any one prior art reference discloses each of the patented ornamental features of the `056 design; therefore, the Court must focus on whether or not the `056 patented design is obvious. Obviousness is a legal inquiry informed by four factual tests set out in Graham v. John Deere Co., 383 U.S. 1 (1966). See Avia Group, 853 F.2d at 1564. The four factors include: the scope and content of the prior art, the differences between the prior art and the claimed design, the level of ordinary skill in the art when the design was made and evidence of secondary considerations of nonobviousness, such as commercial success, licensing or copying. See id. When making an obviousness inquiry, the Court must look to the overall appearance or the whole visual effect of the design rather than individual features. See In re Borden, 90 F.3d at 1574; In re Rosen, 673 F.2d 388, 390(C.C.P.A. 1982). Penox must first point to a basic design reference in the prior art as the foundation for combining the teachings in other references. See In re Borden, 90 F.3d at 1574. It must be "something in existence, the design characteristics of which are basically the same as the claimed design." In re Rosen, 673 F.2d at 391. However, obviousness need not be based on a single reference, rather, other references may be considered to find a design obvious. See In re Borden, 90 F.3d at 1574. In that case, Penox must also show that the teachings in other prior art references should be combined with the primary reference because the designs are "so related that the appearance of certain ornamental features in one would suggest the application of those features to the other." In re Glavas, 230 F.2d 447, 450, 109 U.S.P.Q. 50, 52 (C.C.P.A. 1956). See also In re Borden, 90 F.3d at 1575 (quoting In re Glavas); In re Rosen, 673 F.2d at 391 (quoting In re Glavas). In other words, there must be some suggestion or motivation in the prior art to modify the design features of the primary reference with features from the second reference. See In re Borden, 90 F.3d at 1574.
D. INEQUITABLE CONDUCT
The parties have filed cross-motions for summary judgment on Penox's inequitable conduct defense and counterclaim. The defense and/or counterclaim of inequitable conduct arises from the patent applicant's duty to prosecute patent applications with candor, good faith, and honesty. See Semiconductor Energy Lab. Co. v. Samsung Elec. Co., 204 F.3d 1368, 1373 (Fed. Cir. 2000) (citing Molins PLC v. Textron, Inc., 48 F.3d 1172, 1178 (Fed. Cir. 1995)). "`[U]nequitable conduct includes affirmative misrepresentation of a material fact, failure to disclose material information, or submission of false material information, coupled with an intent to deceive.'" Id. (quoting Molins, 48 F.3d at 1178). The challenger to the patent's enforceabiliry must demonstrate by clear and convincing evidence that the information was material and that the conduct was intended to deceive. See id. A district court faced with an inequitable conduct defense must make two threshold determinations: whether the withheld references or misrepresentations satisfy a threshold level of materiality; and whether the applicant's conduct satisfies a threshold showing of intent to deceive. See id. If the evidence supports an affirmative finding on each of these elements, then the "court balances materiality and intent to determine whether the equities warrant the conclusion that inequitable conduct occurred." Id. The question for the Court is "whether the applicant's conduct is so culpable that the patent should not be enforced." Id.
E. TRADE DRESS INFRINGEMENT
Puritan-Bennett has alleged that the ESCORT infringes its HELiOS trade dress in violation of section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a) and in violation of Indiana commonlaw. "Trade dress" refers to the total image of a product, including features such as "size, shape, color or color combinations, texture, graphics, or even particular sales techniques.'"" Syndicate Sales, Inc. v. Hampshire Paper Corp., 192 F.3d 633, 636 (7th Cir. 1999) (quoting Roulo v. Russ Berrie Co., 886 F.2d 931, 935 (7th Cir. 1989) (quoting John H. Harland Co. v. Clarke Checks, Inc., 711 F.2d 966, 980 (11th Cir. 1983), cert. denied, 493 U.S. 1075 (1990))). To establish its trade dress claim under section 43(a) of the Lanham Act, Puritan-Bennett must establish the following elements by a preponderance of the evidence: (1) that its trade dress has acquired secondary meaning; (2) that the similarity of Penox's ESCORT trade dress to Puritan-Bennett's HELiOS trade dress causes a likelihood of confusion on the part of consumers as to the source of affiliation of the products; and (3) that the FffiLiOS trade dress is non-functional. 15 U.S.C. § 1125(a)(3); Billy-Bob Teeth, Inc. v. Novelty, Inc., 329 F.3d 586, 593 (7th Cir. 2003); Syndicate Sales, 192 F.3d at 636 (citing Thomas Belts Corp. v. Panduit Corp., 138 F.3d 277, 291 (7th Cir.), cert. denied, 525 U.S. 929 (1998)). The Court will discuss the requirements pertinent to each element when it addresses the merits of Penox's motion for summary judgment on the trade dress infringement issue.IV. DISCUSSION A. PATENT INFRINGEMENT
Puritan-Bennett asserts that summary judgment in its favor is appropriate on its claim that Penox's ESCORT infringes the `056 patent because "the overall visual appearance of the Escort [sic] as a whole 15 U.S.C. § 1125(a)(1). is virtually identical to the design claimed in the `056 patent and thus no reasonable jury could find that [Penox's] design does not infringe the design of the patent-in-suit." Pis.' Patent Mem. in Support, at 17 (citing Durling v. Spectrum Furniture Co., 101 F.3d 100, 104-05 (Fed. Cir. 1996)). Puritan-Bennett specifically points to the arch-shaped top portion, the large round dial positioned on the front face of the dispenser, the vertical orientation, the generally isosceles triangularly-shaped footprint withrounded corners and slightly concave edges, the vertically oriented lever in a recessed niche toward the right side, the flat base portion with an indented notch at the left underside, the handle that flows from and in alignment with an integrated body with a solid, tubular shape that forms a semi-rectangular opening with the lower edge of the opening being interrupted by a prominent arch-shaped curve of the top of the dispenser and spans the width of the dispenser, the slit-like vents arranged in rows on top of the dispenser near the dial and on the lower portions of the front face, and the vertically stacked connectors in a recessed region on the left side upper portion of the dispenser face. Id. at 17-19. Puritan-Bennett also argues that the additional evidence of confusion of ordinary observers, patients who use portable oxygen dispensers, and passing off of the ESCORT as a HELiOS by distributors familiar with the two devices, further supports Puritan-Bennet's view that summary judgment on infringement is appropriate. Pls.' Reply in Support, at 8-10.
In its defense and in support of its own motion for summary judgment of non-infringement, Penox asserts that Puritan-Bennett's evidence of confusion focuses on the wrong observers — patients — who never actually purchase a portable oxygen unit. Penox contends that the correct "ordinary observers" are the sophisticated medical equipment companies that actually purchase the units and then rent them to patients. Defs.' Mem. in Opp'n, at 15-16. Penox argues that Dr. Jacoby's survey suffers from the same problem. Defs. Surreply in Opp'n, at 15-16. Moreover, Penox continues, Dr. Jacoby's survey is unreliable because it encourages the respondents to compare commercial products rather than compare the ESCORT with the `056 patented design and it fails to identify the non-functional features that the respondents found substantially similar. Id. at 16.
Penox also asserts that a simple comparison of the ESCORT with the `056 patented design reveals substantial differences between them. Specifically, Penox points to the following differences on the ESCORT from the `056 patented design: a different orientation of vents, and their segmentation into smaller vents; a body handle that is unitary with the body rather than separate; a multi-lobed knob with no ribbing or protrusions; a rectangular lever in a barbell-shaped recess; a horizontally oriented and flat recess that house the cannula barbs; and a footprint that is generally triangularly shaped with curved corners. Id. at 17.
Moreover, Penox contends that the ESCORT does not appropriate the points of novelty of the `056 patented design. Penox argues that the ESCORT is significantly different from the following eight points of novelty in the `056 patented design: the way the handle arches from the back to the front; the shape and ornamental details of the knob or dial; the particular shape and texture of the lever; the stair-stepped downward-angled recess for the cannula barbs; the quarter-hemispherical cap on the left front side that covers other connections; the particular arrangement and configuration of the vents; the unique multi-curved footprint that resembles a Volkswagen Beetle automobile; and the multi-arched body that makes the `056 patented design appear to have "wings." Id. at 19-28.
In its Order on Claim Construction the Court determined that the curvature of the handle from back to front is a functional feature and not part of the ornamental design. Puritan-Bennett Corp. v. Penox Technologies, Inc., IP 02-1762-C-M/S, Order on Claim Constr. (Dec. 4, 2003), at 7 ("Cl. Constr. Order").
Viewing the facts in the light most favorable to Puritan-Bennett, the Court is persuaded that there is no issue of fact on whether or not the ESCORT infringes the `056 patent: it does not infringe. The differences between the ESCORT and the `056 patented design as depicted in the drawings and construed by the Court are stark. First, the Court determined that the focal point of the `056 patented design is the central Roman arch, in which sits the rather large dial, and is highlighted by two flanking partial Roman arches. The ESCORT design has a single Roman arch in which sits a rather large dial, however, the two flanking partial arches are noticeably absent. Furthermore, the `056 patented design and the Court's construction make the dial the focus of attention when an observer is looking at the design from the front (see Appendix I), in other words, the eye is drawn upward to focus on the dial because of the design features. But the dial of the ESCORT design, while positioned similarly to the dial in the `056 patented design, does not enjoy the same focus because the flanking partial arches are missing and because there are vents below the dial that actually draw the eye downward.
The downward focus of the ESCORT'S design is made more prominent by the downwardly slanting vents on the two sides of the single Roman arch at the bottom. The slant of the lower vents mimic the "V" shape of the vents directly below the dial, just more widely set. Furthermore, unlike in the `056 patented design, where the columns of vents are continuous, the column of vents on the left side of the ESCORT'S design have a distinctive gap partway up the left side.
Similarly, the vents on the top of the ESCORT'S design seem to point the eye downward around the dial and to the "V" shape of the vents below the dial. In other words, the features of the ESCORT'S design seem to draw the eye away from the dial rather than focus the eye upon it.
Moreover, the Court has construed the ornamental features of the `056 patented design to include a rather thick, squared, solid handle that appears to grow from the outer portions of the two partial arches, forms a rectangular arch over the center Roman arch and creates an opening between itself and the top of the center Romanarch, which creates a frame for the top of the center arch in which sits the rather large dial.
Cl. Constr. Order, at 16. The handle of the ESCORT is rather thick, squared and solid. However, unlike the handle of the `056 patented design, the ESCORT'S handle grows from the outer portions ofthe single arch, rather than from any two partial arches that flank a center arch. In addition, the curve of the ESCORT handle as it arches over the central Romanarch doesn't make the same rectangular-shaped arch over the central arch, rather it is more trapezoidal in shape.
In addition to these significant differences, the dimension ofthe ESCORT is distinct from that of the `056 patented design. Figure 8 best depicts the dimension ofthe `056 patented design. The Court has construed that dimension to resemble
the profile of a Volkswagen Beetle or "Bug" with a slightly concave base, where the base is the back ofthe dispenser design, the roof curve outlines the base ofthe center Roman arch portion, the front end curve outlines the base ofthe right partial-arched portion and the rear end curve outlines the base of the left partial-arched portion. Other than the variations in this dimension previously and further described, these shapes are fairly maintained to the tops ofthe arched portions.Id. at 17. Unlike the Volkswagen Beetle-shaped `056 patented design, the ESCORT has an isosceles triangle shaped base, the corners of which are rounded. In addition, each of the sides is slightly concave, with the two equal sides having a more pronounced dip or curvature, but without the stark definition of the profile of a Volkswagen Beetle. This dimension is carried up throughout the body of the ESCORT design until at the very top of the arch on either side of the dial. It is not until this very top portion that the ESCORT becomes asymmetrical.
The asymmetry at the top front of the ESCORT is also not reminiscent of that found in the `056 patented design. The Court described the asymmetry of the `056 patented design to start at the bottom:
Although much of the design is symmetrical on its face . . . [t]he vents in the bottom half of the column of vents on the left partial-arch base are cut short by a notch that is cut out of the junction of the center Roman arch portion and the left partial-arched portion. Also on the left partial-arched portion, but at the top, is an extra shoulder that extends out from the junction of the left partial-arched portion and the center Roman arched portion. At the top of the right partial-arched portion two connectors are nestled in a reverse stair-stepped cutout that slant downward.Id. at 16. There is no notch in the ESCORT design at the bottom left-hand side of the single Roman arch. Moreover, there is no extra shoulder at the top of the left-hand side of the ESCORT'S single Roman arch that extends out; the only protruding pieces on the front of the ESCORT are the lever in a recessed region on the left, the rather large dial in a slightly recessed region in the middle and the single connector in a recessed region on the right.
Overall, the visual impression of the `056 patented design focuses on the center Roman arch and the dial as emphasized by two flanking partial arches, while the overall visual impression of the ESCORT'S design focuses on the prominent "V" shaped vents below the dial that draws the eye away from the center of the single Roman arch and the dial.
Puritan-Bennett's evidence of confusion is not enough to rebut the substantial differences between the `056 patented design and the ESCORT'S design. The statements made by Puritan-Bennett employees that they believed that patients were confusing the ESCORT and the HELiOS are self-serving and conclusory. Evidence a few patients called Puritan-Bennett and realized during the conversation that the product the patient was talking about was the ESCORT and not a HELiOs is not enough to rebut the clearly substantial differences between the ESCORT and the `056 patented design.
Puritan-Bennett also asserts that a single circumstance of "passing off' by a third-party, in combination with patient confusion substantiates its claim that the ESCORT'S design infringes the `056 patent. But whether or not a third-party is presenting an ESCORT as a HELiOS does not tend to prove that the ESCORT infringes the `056 patent or that an ordinary observer would find the ESCORT'S design substantially similar to that of the `056 patent; such evidence only proves that the third-party was trying to create confusion between the two products. Puritan-Bennett's salesperson's conclusory statement that audience members were in fact deceived is inadmissible and no more persuasive.
Puritan-Bennett also points to the three shipments of ESCORTS to Puritan-Bennett from Lincare as proof of confusion. However, there is no evidence, other than the appearance of the boxes at Puritan-Bennett, that they were sent to Puritan-Bennett because Lincare or the person at Lincare that shipped them confused the ESCORT'S design with the `056 patented design. These few incidents of incorrect shipments does not support Puritan-Bennett's assertion that an ordinary observer would find the ESCORT'S design substantially similar to that of the `056 patent. See Oddzon Prods., Inc. v. Just Toys, Inc., 122 F.3d 1396, 1406-07 (Fed. Cir. 1997).
Even when the Court considers all of this testimony in conjunction with Dr. Jacoby's survey evidence, Puritan-Bennett has not shown a material question of fact on infringement. Dr. Jacoby's survey purports to find that approximately 62% of patients who use portable oxygen units would consider the ESCORT'S design similar to that ofthe `056 patent. However, the hypothetical "ordinary observer" in the Gorham test both speaks to "purchasers" and must be "objective." Gorham Co. v. White, 81 U.S. 511, 528 (1871); Goodyear Tire Rubber v. Hercules Tire Rubber, 162 F.3d 1113, 1117 (Fed. Cir. 1998); Contessa Food Prods., Inc. v. Conagra, Inc., 282 F.3d 1370, 1381 (Fed. Cir. 2002). Puritan-Bennett admits that the "purchaser" of the portable oxygen units in question is not the patient. Toma Dep. at 67-68 (discussing the need for a patient to have a prescription to obtain a portable oxygen unit from a "home care provider"); Earnest Dep. at 50-51 (discussing the distribution chain for portable oxygen units and agreeing that distributors or home health care providers buy the portable oxygen units from Puritan-Bennett); Thompson Dep. at 38-39 (stating that the portable oxygen units are paid for, ordered by and shipped to DMEs). The purchaser of portable oxygen units is the medical equipment distributor. Toma Dep. at 67-68; Thompson Dep. at 38-39. Puritan-Bennett admits that physicians and medical equipment distributors were their first targets when it introduced the HELiOS because those groups made the purchasing decision. Thompson Decl. ¶¶ 5, 7. It follows then that any survey of "ordinary observers" in this case must include medical equipment distributors, at the least, and possibly, hospitals and physicians, at best, to ensure that all relevant purchasers' views are considered. Puritan-Bennett's survey simply misses these key "ordinary observer" groups, and as a result, is not nearly broad enough to create an issue of fact on infringement.
For the foregoing reasons, the Court finds that Puritan-Bennett has failed to establish a material question of fact that the Penox ESCORT infringes the `056 patent, therefore, Penox's motion for summary judgment of non-infringement should be GRANTED and Puritan-Bennett's motion for summary judgment of infringement should be DENIED.
B. PATENT INVALIDITY
Puritan-Bennett contends that summary judgment in its favor is appropriate on Penox's counterclaim for patent invalidity because Penox has failed to proffer clear and convincing evidence that the `056 patented design is anticipated or obvious. In its brief in opposition, Penox tacitly agrees that it has failed to produce evidence of an anticipatory reference, see Defs.' Mem. in Opp'n, at 28, therefore, the Court must GRANT Puritan-Bennett motion for summary judgment as to Penox's counterclaim of invalidity due to anticipation.With respect to Penox'sassertion that the `056 patented design is obvious, Puritan-Bennett argues that Penox has failed to identify a primary reference that embodies the basic design features of the `056 patent and has failed to evidence a motivation to combine any of the references it cites to form the `056 patented design. Because Penox has failed to produce any evidence, Puritan Bennett asserts, Penox cannot meet its clear and convincing burden and summary judgment is appropriate.
Penox contends that summary judgment is premature because Puritan-Bennett's motion for summary judgment was filed prior to the Court's ruling on claim construction and because Penox has until thirty days prior to trial to produce invalidating prior art. Id. (citing 35 U.S.S. § 282). If the Court considers Puritan-Bennett's motion, Penox asserts that the Penox Lightweight is a primary reference that demonstrates the majority of the features claimed in the `056 patent, as Puritan-Bennett has construed the design. In addition to the Penox Lightweight, Penox points to the Western Medica device, the Puritan-Bennett Companionline of portable dispensers and at least five other prior art designs that together disclose each of the `056 patented design's features. Id. at 29-31 29 n. 16.
The Court finds that despite Penox's protestations, summary judgment on its obviousness counterclaim and defense is appropriate. First, Penox contends that 35 U.S.C. § 282, which requires a defendant/declaratory judgment plaintiff that asserts invalidity to disclose prior art it intends to rely upon thirty days prior to trial, renders Puritan-Bennett's motion for summary judgment premature. If Penox's argument is the law, then no motions for summary judgment on the issue of validity would ripen until thirty days prior to trial. From a case management standpoint, such a prospect borders on the ridiculous.
Moreover, the Court is not persuaded that § 282 precludes summary judgment on the issue of invalidity prior to thirty days before trial. Federal Rule of Civil Procedure 56 ("Rule 56") specifically requires that when a summary judgment motion is filed, it is the non-movant's burden to produce evidence that a material fact exists for trial. Fed.R.Civ.P. 56(e) (stating that "[w]hen a motion for summary judgment is made and supported as provided in this rule, an adverse party may not rest upon the mere allegations or denials of the adverse party's pleading, but the adverse party's response, by affidavits or as otherwise provided in this rule, must set forth specific facts showing that there is a genuine issue for trial"). Of course, Rule 56 also provides a non-movant party who cannot obtain the relevant evidence an opportunity to seek leave of the Court to extend discovery to allow the party to obtain such evidence. Fed. R Civ. P. 56(f). In the instant case, Penox did not file such a motion or seek to conduct further discovery by filing a motion to compel. In addition, there is nothing in either § 282 or Rule 56 that precludes the filing of summary judgment motions on the issue of validity prior to thirty days before trial.
Turning to the merits of Puritan-Bennett's motion, the Court agrees with Puritan-Bennett that even if the Court accepts Penox's cursory identification of a primary reference and several secondary references, Penoxh as failed to evidence a motivation to combine those references to render obvious the `056 patented design. A party may base an obviousness argument on a combination of references. See In re Borden, 90 F.3d 1570, 1574 (Fed. Cir. 1996). However, "there must be some suggestion in the prior art to modify the basic design with features from the secondary references" for such a combination to render a patented design obvious. Id. In other words, "the teachings of prior art designs may be combined only when the designs are `so related that the appearance of certain ornamental features in one would suggest the application of those features to the other.'" Id. at 1575 (quoting In re Glavis, 230 F.2d 447, 450 (C.C.P.A. 1956); citing/n re Harvey, 12 F.3d 1061, 1063 (Fed. Cir. 1993); In reSungNam Cho, 813 F.2d 378, 382 (Fed. Cir. 1987); In reRosen, 673 F.2d 388, 391 (C.C.P.A. 1982)).
Here, Penox asserts that the Penox Lightweight is a primary reference. The Lightweight was a portable oxygen system that stood 8.5 inches high and was 8.5 inches in diameter. Defs.' Stmt. of Facts, ¶ 24. It had a slightly concave back, a horizontal cannula barb on the right front side, horizontal air vents on the lower front side, the same shaped vent-to-fill lever as the ESCORT, and a cross-section with a center front-facing semi-cylindrical portion smoothly flowing into curved quarter-cylindrical wings on each side. Sever Decl., Exh. 1, Ordering Info. Specs., Penox Tech., Inc., at E001082-82. A large knob rests on top ofthe Lightweight in addition to a lever. Id. at E001083. The Lightweight's handle is a fabric strap that is attached at the top ofthe device. Id.
The design ofthe Lightweight does teach a slightly concave back and a dimension that has three distinct curved shapes with a central curvature flanked by two smaller curvatures. In addition, it teaches horizontally-placed vents on the lower portions ofthe sides ofthe dispenser and a cannular barb on the right side ofthe front face. However, the overall dimension ofthe Lightweight is more square than vertically oriented, which seems to teach away from the vertical orientation of the `056 patented design. Moreover, the Lightweight teaches away from a solid handle with its fabric strap handle, and teaches away from the central feature ofthe `056 patented design, the centrally located dial that is accentuated by a Roman arch and two flanking, smaller Roman arches because the Lightweight has its dial or knob placed on the top of the dispenser.
The secondary references cited by Penox do have large dials or knobs, however, only one, the Puritan-Bennett Companion, has a dial in a recessed region on the front of the dispenser. None of the prior art devices have the same distinctive central Roman arch that houses a large, bulky dial and is accentuated by two flanking partial Roman arches. Because none of the secondary references teach this prominent feature of the `056 patented design, Penox must point to some other teaching or knowledge of one skilled in the art of portable oxygen dispenser design that would motivate a designer to arrange the ornamental features of a dispenser in the same way as those of the `056 patented design. Penox has not even tried to make that argument. Nor does Penox argue that the teachings of the primary reference, the Penox Lightweight, in combination with those of the secondary references would motivate a designer to make the `056 patented design. Without these arguments or evidence, no jury could find the `056 patented design obvious by clear and convincing evidence.
Penox argues that the arch is functional because that shape fits closest to the interior components of the pneumatic conserver and oxygen dewer. Defs.' Mem. in Opp'n, at 31. However, the Court has found that this feature of the `056 patented design is ornamental rather than functional, therefore, Penox's argument is unpersuasive.
For the foregoing reasons, the Court finds that Puritan-Bennett's motion for summary judgment on Penox's counterclaim that the `056 patent is invalid because it is either anticipated or obvious should be GRANTED.
C. PATENT UNENFORCEABILITY — INEQUITABLE CONDUCT
Puritan-Bennett contends that summary judgment in its favor is proper on Penox's counterclaim for unenforceability. Puritan-Bennett argues that Penox has not presented evidence to support its opinion that the prior art not disclosed to the PTO is material. Even if the Court accepts that some or all of the references are material, Puritan-Bennett asserts that Penox has not put forth any evidence to support an allegation that the inventors intended to deceive the PTO. Puritan-Bennett suggests that Penox's argument that intent should be inferred falls short of Penox's burden to prove inequitable conduct by clear and convincing evidence.Penox asserts that summary judgment in its favor is appropriate on its own claim that the `056 patent is unenforceable because of inequitable conduct. Penox contends that the `056 patent inventors failed to discharge their duty of good faith during prosecution of the patent because they did not disclose material prior art to the PTO, including the exhaustive product comparison study, the CPE, performed by Omnica in January 1998. Penox asserts that many of these designs more closely mirror those of the `056 patented design than the prior art unearthed by the patent examiner. Moreover, Penox argues that the inventors did not even disclose other material patents with which they were familiar.
Penox asserts that Puritan-Bennett's CPE, of which the inventors had knowledge, compared the specific features of all the portable liquid oxygen units on the market prior to Puritan-Bennett's development of the `056 patented design. The competitive products, Penox contends, share a number of features of the `056 patent including: horizontal air vents, single-bladed recessed flow control knobs, concave outer casings, vertically oriented levers, indented notches in the fill connector corner of the footprint and diagonal cannular barbs. Defs.' Mem. in Opp'n, at 33. Moreover, one of the inventors, Remes, was named as an inventor on two other relevant patents, the `529 patent, a design patent for a portable oxygen dispenser, and the `983 patent, a utility patent for a cryogenic liquid delivery system, yet did not disclose those patents to the PTO. Penox asserts that both the `529 patent and the `983 patent show these features of the `056 patented design: a fill connector notch, a horizontal air vents, a single-bladed flow control knob, a shoulder strap clip and a circular recess for a horizontal vent lever. Id. at 34. Remes' knowing omission, Penox argues, "is nothing short of a smoking gun. . . . " Id. at 35 (citing Paragon Podiatry Lab, Inc. v. KLM Lab., Inc., 984 F.2d 1182, 1189-90 (Fed. Cir. 1993)). Penox concludes that "[t]he applicants knew that material prior art existed, they intentionally withheld that material art from the USPTO, and they quite obviously intended to mislead the USPTO by their knowing omissions." Id.
Taking the facts in the light most favorable to Penox, the Court agrees with Puritan-Bennett that Penox's evidence falls short of the clear and convincing standard. To prove inequitable conduct, Penox must demonstrate by clear and convincing evidence that the withheld information was material and that the conduct was intended to deceive. See Semiconductor Energy, 204 F.3d at 1373. The Court must first make two threshold determinations: whether the withheld references or misrepresentations satisfy a threshold level of materiality; and whether the applicant's conduct satisfies a threshold showing of intent to deceive. See id. If the evidence supports an affirmative finding on each of these elements, then the "court balances materiality and intent to determine whether the equities warrant the conclusion that inequitable conduct occurred." Id. The question for the Court is "whether the applicant's conduct is so culpable that the patent should not be enforced." Id.
Penox bases its inequitable conduct argument on two sets of non-disclosures: the CPE and the Remes patents. Penox argues that the inventors testified that the CPE disclose certain features of the `056 patented design including: horizontal air vents; single-bladed flow control knob; recessed flow control knob; concave outer casing; vertically oriented levers; indented notches in the fill connector corner of the footprint; and diagonal cannula barbs. Moreover, the inventors all knew about the CPE and its contents to some degree prior to working on the `056 patented design. Conway Dep. at 80-82; Frye Dep. at 228-33; Payne Dep. at 57-58; Toma Dep. at 203; Remes Dep. at 142. In addition, Remes testified in his deposition that the `529 patent and the `983 patent show features that appear in the HELiOS H-300 including: a fill connector notch, a series of horizontal air vents, a single-bladed control knob, a clip for attaching a shoulder strap, and a circular recess for a horizontal vent lever. Remes Dep. at 114-16. Penox asserts that the presence of these features in each of the prior art references makes them material because "`there is a substantial likelihood that a reasonable examiner would consider [them] important in deciding whether to allow the application to issue as a patent.'" Defs.' Reply, at 6 (quoting Baxter Int'l, Inc. v. McGaw, Inc., 149 F.3d 1321, 1327 (Fed. Cir. 1998) (alteration by this Court)).
Moreover, Penox asserts, the Patent Examiner cited five references she found relevant to the patent design. The diversity of those references from a design standpoint evidence that a reasonable examiner would have found the designs disclosed by the CPE and those disclosed by the `529 and `983 patents relevant. Id. at 7-8.
Puritan-Bennett counters that there is no evidence that the overall look of the devices disclosed by any of the references cited by Penox bears any similarity to that of the `056 patented design. Pls.' Reply, at 17. Moreover, significant, unobvious differences exist between the patented design and the `056 patented design that make the references immaterial. Id. at 18 (citing Pacific Furniture Mfg. Co. v. Preview Furniture Corp., 800 F.2d 1111, 1114 (Fed. Cir. 1986)).
The Court finds that Penox has failed to evidence a material question of fact on whether the CPE reference or the patent references are material. Turning to the CPE first, the evaluation contains information about certain features of commercially available portable oxygen systems in 1998. Defs.' Exh. BB, P-B CPE. The CPE clearly shows pictures of parts of each device. In addition, there are two pages that have pictures of the outside casing of each device. Id. at Pb 000522-23. Other than the pictures, the CPE reveals very little about the arrangement of features on the devices as a whole. Moreover, as discussed in detail in the prior section regarding invalidity, the most prominent feature of the `056 patented design, the central Roman arch in which sits the rather large dial and the existence of two partial Roman arches that flank the central Roman arch, is clearly absent from any of the prior art referenced in the CPE. In other words, the contents of the CPE add nothing to a patent examiner's evaluation of the `056 patented design because none of them evoke the same image from an ornamental design perspective.
Similarly, with respect to the `529 design patent and the `983 utility patent, there are significant unobvious differences between the `056 patented design and the two Remes patents. The design shown in the `983 utility patent is the same design shown in the `529 design patent. As a result, the `983 utility patent would add little to a reasonable examiner's analysis, save perhaps to suggest some features of the design that may have utility (such as the existence of the connectors or the dial, but not the shape, placement or contour of these features).
The design disclosed by the Remes patents may be described as follows: a kidney bean shaped vertically oriented unit where the inwardly curved part of the kidney bean is the back and the outwardly curved part of the kidney bean is the front; two columns of vents are notched on the back side of one curved end of the kidney bean shape; a circular-shaped indentation or notch that contains a large circular connector is located directly below the two columns of vents on the back side; more vents begin high up on the unit and curve gently downward across the front face from left to right; the last few of these vents end prior to reaching the opposite side; three small columns of horizontally placed vents are located on the lower left hand corner of the front face; a lever is horizontally placed on the back side of the unit in a lollipop-shaped recess; a single-bladed dial rests on the top of the unit in the corner of the kidney bean shape over the vents at the back, the dial is flush with the top of the unit with only the blade portion protruding above the top surface; a connector is also set in a recessed round hole on the top of the unit placed close to the dial toward the front curve of the kidney bean shape; another recessed region placed close the dial is set toward the back curve of the kidney bean shape; a large circular piece that is slightly raised fills the opposite corner of the kidney bean shape and has a piece cut out of it in the shape of an elongated electrical outlet, where the flat sides of the shape are parallel to a tangential line drawn at the apex of the front curve of the kidney bean shaped body; and a half-ring protrudes from the back corner just above the column of vents.
Although the Court agrees with Penox that the `529 patented design and the `056 patented design share a few specific features, such as the notch at the bottom and horizontal vents, the overall look of the '529 patented design and that ofthe `056 patented design are significantly different. It is not the individual features that make a design patentable, but the overall look. The most noticeable and distinct features of the `529 patented design are the kidney bean shape, the placement ofthe key working features ofthe design on the top of the unit and the curved vents on the front face ofthe unit. In contrast, the most notable and distinct features ofthe `056 patented design are the front face with its central Roman arch in which a rather large dial sits and the two flanking partial Roman arches that further emphasize the central Roman arch and the dial. In addition, none ofthe key working features ofthe `056 patented design are on the top ofthe unit; all of them are on the front face. Because the `056 patented design has significant unobvious differences from the `529 patented design, the Court concludes that the design disclosed by the `529 and `983 patents is not material.
Penox's argument is without merit that the examiner's varied choices of prior art evidences the significance of the prior art disclosed in the CPE and the Remes patents. The diversity of the examiner's choices of prior art supports only a finding that the `056 patented design was unique in its field. There simply was no other design on the market that had the `056 patented design's unique arrangement of ornamental features.
Even if the CPE or the `529 and `983 patents were material, Penox asks the Court to infer deceptive intent from the inventors' knowledge of the CPE and the patents coupled with the fact that they did not disclose them. However, given the lack of materiality of the references, such a knowing non-disclosure does not support an inference of intent without more. See Hebert v. Lisle Corp., 99 F.3d 1109, 1116 (Fed. Cir. 1996). Under the circumstances presented in this case, a jury could not find by clear and convincing evidence that the inventors had a specific intent to deceive the PTO by withholding the CPE or the Remes patents.
In summary, the Court has found that the references Penox relies upon to make its case of inequitable conduct are not material, and even if they were, Penox has failed to evidence that the inventors intended to deceive the PTO by not making the disclosures. For these reasons, Puritan-Bennett's motion for summary judgment on Penox's unenforceabiliry counterclaim should be GRANTED. Conversely, Penox's motion for summary judgment on unenforceabiliry should be DENIED.
D. PATENT DAMAGES
Penox has moved for partial summary judgment on the issue of what date patent damages should begin to accrue. However, the Court has ruled in favor of Penox on its motion for summary judgment of non-infringement of the `056 patent. That ruling makes the entire issue of patent damages MOOT.Therefore, the Court DENIES Penox's motion for partial summary judgment on damages as MOOT.E. TRADE DRESS INFRINGEMENT
Penox asserts that summary judgment on Puritan-Bennett's trade dress infringement claims is proper because Puritan-Bennett cannot establish that the HELiOS trade dress has secondary meaning prior to October 2000, and cannot establish that the relevant consumers — DMEs and physicians — are likely to be confused as to the source of the ESCORT. Moreover, Penox asserts that even if Puritan-Bennett has established a question of fact on those two elements, it cannot establish that any similar or confusing features of the designs are non-functional.In contrast, Puritan-Bennett contends that it has produced evidence from which a jury could conclude that it established secondary meaning in the HELiOS trade dress prior to September 2001, the date upon which Penox shipped ESCORTs to customers, or even prior to October 2000. Specifically, Puritan-Bennett asserts that its intense promotion of the HELiOS led to rapid demand and to Puritan-Bennett's success in obtaining 35% of the portable oxygen system market in the year 2000. According to Puritan-Bennett this evidences the significant secondary meaning ofthe HELiOS trade dress. Moreover, Puritan-Bennett argues that its proof of intentional copying by Penox and actual confusion by patients further evidences the secondary meaning ofthe HELiOS trade dress.
With respect to confusion, Puritan-Bennett contends that in addition to the substantial similarity in overall look between the two products, Puritan-Bennett has evidence that reflects actual patient confusion between the HELiOS and the ESCORT. In addition, Puritan-Bennett has received in error three shipments of ESCORT units, which Puritan-Bennett asserts further evidences confusion at the DME level. Puritan-Bennett suggests that patients will not use a high degree of care to distinguish between the HELiOS and the ESCORT because they are generally elderly and may have physical and/or mental deficiencies. Furthermore, Puritan-Bennett suggests that the absence of any similar third-party designs is proof of the strength of Puritan-Bennett's HELiOS trade dress. Finally, Puritan-Bennett contends that Lincare's attempt to pass off an ESCORT as a HELiOS is evidence that Penox deliberately copied Puritan-Bennett's trade dress and supports a finding of actual confusion.
With respect to functionality, Puritan-Bennett asserts that it has evidence that the outward appearance of the HELiOS was developed independently from the internal components. Furthermore, the features of the HELiOS that might have some functional purpose individually must be taken as a whole to properly analyze whether the ESCORT infringes the HELiOS trade dress. The only other ultra lightweight portable oxygen system on the market, Puritan-Bennett asserts, has a completely different overall appearance, which supports a finding that the HELiOS trade dress as whole is non-functional.
To avoid summary judgment on its trade dress infringement claim, Puritan-Bennett must evidence a material issue of fact exists on each of three elements: (1) that its trade dress has acquired secondary meaning; (2) that the similarity of Penox's ESCORT trade dress to Puritan-Bennett's HELiOS trade dress causes a likelihood of confusion on the part of consumers as to the source of affiliation of the products; and (3) that the HELiOS trade dress is non-functional. 15 U.S.C. § 1125(a)(3); Billy-Bob Teeth, Inc. v. Novelty, Inc., 329 F.3d 586, 593 (7th Cir. 2003);SyndicateSales, Inc. v. Hampshire Paper Corp., 192 F.3d 633, 636 (7th Cir. 1999) (citing Thomas Betts Corp. v. Panduit Corp., 138 F.3d 277, 291 (7th Cir.), cert. denied, 525 U.S. 929 (1998)). The Court finds that Puritan-Bennett has failed to establish a material question of fact on the first element, that the HELiOS trade dress has acquired secondary meaning.
Puritan-Bennett's HELiOS trade dress has acquired secondary meaning "`when "in the minds of the public, the primary significance of a product feature . . . is to identify the source of the product rather than the product itself.'"" Thomas Betts Corp., 138 F.3d at 291 (quoting Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 163 (1995) (quoting Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 852 n. 11 (1982))). Puritan-Bennett may show that the HELiOS has acquired secondary meaning "`through direct consumer testimony, consumer surveys, length and manner of use, amount and manner of advertising, volume of sales, place in the market and proof of intentional copying.'" Id. (quoting Spraying Sys. Co. v. Delavan, Inc., 975 F.2d 387, 393 (7th Cir. 1992)). The first two factors are sometimes called "direct evidence" of secondary meaning and the later factors are sometimes called "circumstantial evidence" of secondary meaning. See Echo Travel, Inc. v. Travel Assocs., Inc., 870 F.2d 1264, 1267 (7th Cir. 1989).
Before it turns to the merits of the parties' arguments, the Court must address their dispute about the date by which Puritan-Bennett must have established secondary meaning. Puritan-Bennett contends that September 2001 is the relevant date because it was not until that date that Penox sold its ESCORT to DMEs. Puritan-Bennett asserts that to require it to establish secondary meaning prior to that date
would be contrary to the purposes of trademark law — to prevent confusion among consumers once they have come to associate a trade dress with a particular source — in view of the fact that consumers continued to exclusively associate the HELiOS trade dress with Puritan-Bennett until September 2001 as it was the only product on the market bearing such trade dress.
Pls.' Mem. in Opp'n to Defs.' Mot. for Summ. J. Non-Infringement of Trade Dress, at 42 (citing Thomson Decl. ¶ 21) ("Pls.' Trade Dress Opp'n"). Puritan-Bennett also cites Westward Coach Manufacturing Co. v. Ford Motor Co., 258 F. Supp. 67 (S.D. Ind. 1966), aff'd, 388 F.2d 627 (7th Cir.), cert. denied, 392 U.S. 927 (1968), and G. Heileman Brewing Co. v. Anheuser-Busch Inc., 676 F. Supp. 1436 (E.D. Wis. 1987), aff'd, 873 F.2d 985 (7th Cir. 1989), for the proposition that the relevant date is when Penox shipped ESCORT units to Lincare, a DME. Pls.' Trade Dress Opp'n, at 42.
In contrast, Penox contends that the relevant date for secondary meaning is the time at which it "`commenced its alleged infringing activities.'" Defs.' Reply in Support of Summ. J. of Non-Infringement of Trade Dress, at 6 (quoting Continental Lab. Prods. v. Medax Int'l, Inc., 114 F. Supp.2d 992, 999 (S.D. Cal. 2000)) ("Defs.' Trade Dress Reply"). Penox argues that the time it commenced infringing activity was at the October 2000 MedTrade Show because that is when Penox began its marketing and sales efforts related to the ESCORT. Id. Penox states that it continued to market the ESCORT to DMEs after the trade show through direct sales and extended presentations. Id. (citing McGee Decl., Exh. 2, Dec. 2000 and March 2001 Presentations). Moreover, Penox avers, the cases cited by Puritan-Bennett support a finding that the relevant date is October 2000, because the courts in those case used an introduction date rather than a shipping date as the relevant secondary meaning date. Id. at 6-8.
The Court agrees with Penox that the relevant date for secondary meaning is October 2000. The parties agree that the standard for determining when Puritan-Bennett must prove the HELiOS trade dress had secondary meaning is captured in the phrase: the time at which Penox "commenced its alleged infringing activities." Continental Lab. Prods., 114 F. Supp.2d at 999. Accord G. Heileman Brewing Co., 676 F. Supp. at 1468 (stating that the plaintiff had the burden to prove secondary meaning existed at the time the defendant commenced using the allegedly infringing mark in commerce); Westward Coach Mfg. Co., 258 F. Supp. at 76 (identifying the date at which defendant had displayed the allegedly infringing trade dress at a trade show and the plaintiff had put defendant on notice that its use of the trade dress likely infringed). The parties have no dispute about the facts related to this issue, they only dispute the meaning of the phrase "commenced its alleged infringing activities." The Court finds that the meaning of this phrase includes any activity by which the relevant market and the putative plaintiff were put on notice of the alleged infringers intent to use the trade dress for a product it intends to sell to that market. In other words, promotion of the product, whether a working prototype or not, suffices as "commencement" of "alleged infringing activities."
Under the circumstances of this case, first-line consumers in the market for portable oxygen systems, physicians and DMEs, were put on notice at the October 2000 MedTrade Show that Penox would offer the ESCORT for sale. In fact, Puritan-Bennett does not dispute that it was at this trade show that Puritan-Bennett asserted to Penox that the ESCORT'S design might infringe Puritan-Bennett's rights in the HELiOS design. Pls.' Supp. Obj. Ans. to Interrogs. Nos. 1, 4-13, 15 from Def. Essex Indus., Inc., Ans. No. 7; Davis Dep. at 12-14; Waldman Dep. at 250-52. Moreover, Penox's display of the ESCORT at the MedTrade Show was a form of marketing in that Penox intended to solicit commercial interest in the product at the trade show. There is nothing in the law that limits "commenced its alleged infringing activities" to actual sales; any "activity" that is commercial in nature, it seems to this Court, would suffice. Clearly, Penox's display and promotion of the ESCORT at a trade show would fall under the definition of commercial activity. Puritan-Bennett would be hard pressed to dispute this finding because it uses its extensive promotion of the HELiOS at trade shows as evidence of the trade dress' secondary meaning. In addition, Penox did not stop promoting the ESCORT prior to its first shipment of the product in September 2001, it simply did not sell the product during that time period. Waldman Decl. ¶ 5.
The Court notes that Puritan-Bennett asserts in its opposition brief related to Penox's motion for partial summary judgment on the issue of patent infringement damages that there is no statutory notice requirement that would limit Puritan-Bennett to a patent issue date or other date for purposes of trade dress infringement damages. Pls.' Mem. in Opp'n to Defs.' Mot. for Summ. J. of Alleged Damages on Pls.' Patent Infringe. Cl., at 6-8 ("Pls.' Damages Opp'n Mem."). Moreover, in that brief, Puritan-Bennett implies that Penox was put on notice of its alleged infringing activities at the October 2000 MedTrade Show. Id. at 10.
In summary, the Court finds that any activity by an alleged infringer that is commercial in nature would qualify as "commencing its allegedly infringing activity." Therefore, Penox's allegedly infringing activity began in October 2000. It is this date by which Puritan-Bennett must show that the HELiOS trade dress had acquired secondary meaning.
Turning now to the merits of the parties' arguments, the Court finds that Puritan-Bennett failed to evidence a material question of fact on secondary meaning. The Court will address each factor of the inquiry in turn.
1. DIRECT CONSUMER TESTIMONY CUSTOMER SURVEYS
Puritan-Bennett asserts that patients are the appropriate market group for the secondary meaning analysis, however, it offers no evidence of patient surveys and their association of the HELiOS with Puritan-Bennett. However, Puritan-Bennett's Thompson declares that the frontal view of the HELiOS sitting on a hand is the primary image used in HELiOS promotional materials. Thompson Decl. ¶ 8. She also states that "[f]ocus group research among physicians, DMEs and patients indicate that the design image is equal to or higher in recall than any other part of the communication." Id. Therefore, Puritan-Bennett concludes, there is direct evidence that consumers associate the HELiOS with Puritan-Bennett and there is a material question of fact on secondary meaning.Penox asserts that Thompson's declaration on this point is self-serving and of little evidentiary value. Moreover, the absence of direct consumer testimony will make it more difficult for Puritan-Bennett to prove secondary meaning through circumstantial factors.
The Court agrees with Penox that Puritan-Bennett's direct evidence of secondary meaning has no persuasive value. Thompson's declaration discusses the image of the HELiOS sitting on a hand as an image that focus groups remember more than any other in Puritan-Bennett's promotional materials. However, there is no information about when these focus group studies were run and whether or not they were designed to test consumer's association of the HELiOS with Puritan-Bennett. Moreover, Puritan-Bennett presents no evidence that it is the trade dress of the HELiOS that creates an impression with focus group participants rather than the complete image of the HELiOS resting on the hand that creates such an impression. Without more information about the details of the focus group study design, the results of the study are not probative of secondary meaning related to the HELiOS trade dress.
2. LENGTH MANNER OF USE
Puritan-Bennett argues that it is possible for a product to acquire secondary meaning in a short period of time, even as short a time as weeks. Pls.' Trade Dress Opp'n Mem. at 45-46 (citing Continental Lab. Prods., Inc. v. Medax, Int'l, Inc., 114 F. Supp.2d 992, 1004 (S.D. Cal. 2000); Paramount Pics. Corp. v. Worldwide Entm't Corp., 195 U.S.P.Q. 539, (S.D.N.Y. 1977); 2 J.Thomas McCarthy, McCarthy on Trademarks Unfair Competition § 15:15 (2003)). Puritan-Bennett contends that the HELiOS is just such a product. From its launch in October 1999, Puritan-Bennett had a continuous and extensive promotional campaign designed to create awareness of the HELiOS product that included the front view of the HELiOS sitting on a hand. Thompson Decl. ¶ 8. The product was displayed at five trade shows in 2000 and six in 2001. Id. ¶¶ 16, 18. Moreover, in the year 2000, Puritan-Bennett promoted the HELiOS through "sales visits, distribution of brochures, attending [sic] trade shows and the issuance [sic] of a press release." Id. ¶ 7; Thompson Dep. at 192-93. These promotions were sent to doctors and other suppliers. Thompson Dep. at 193-94. Moreover, Puritan-Bennett placed at least thirty newspaper advertisements in 2000. Thompson Decl. ¶ 13. Puritan-Bennett also points to its numerous other advertisements of the HELiOS in 2002, including the massive television advertisement campaign that commenced in that year, as evidence of length and manner of use of the HELiOS trade dress to establish secondary meaning. Puritan-Bennett also argues that its attainment of a 35% share of the portable oxygen unit market in 2000 is evidence of its success in creating brand awareness for the HELiOS trade dress. Thompson Decl. ¶ 21.
Penox argues that none of Puritan-Bennett's promotional efforts in 1999 or 2000 focused on image advertising or brand recognition. Instead, they focused on product feature identification and promotion. Moreover, the bulk of Puritan-Bennett's promotional campaign began in 2002, well outside any period that the parties have argued is relevant for purposes of establishing secondary meaning. Therefore, Puritan-Bennett's evidence to support the length and manner of its use of the HELiOS trade dress as an identifier for Puritan-Bennett is insufficient to create a material question of fact.
The Court finds that Puritan-Bennett has evidenced that it used the front face of the HELiOS since late 1999 or early 2000 because that image appears in its advertising almost from the beginning. However, there is no evidence that it promoted the entire look of the product at any time. Moreover, it is clear that Puritan-Bennett's advertisements sought to sell the advantages of the HELiOS product, but there is no support for a finding that Puritan-Bennett utilized the HELiOS image to equate the product with Puritan-Bennett or, as Penox phrases it, to establish "brand recognition."
Similarly, Puritan-Bennett argues that its 2000 market share number is impressive given the amount of time the HELiOS was in the market. While that may be true, Puritan-Bennett provides no evidence that the company obtained such a market share because of the brand awareness for the HELiOS trade dress versus its other unique and/or revolutionary features such as lightweight, portability and oxygen supply duration. Puritan-Bennett's advertisements prominently featured these benefits of the HELiOS product, not its trade dress. Again, Puritan-Bennett's evidence lacks a connection between the HELiOS trade dress and the company's success in the market. See, e.g., Duraco. Prods. Inc. v. Joy Plastics Enters., Ltd., 40 F.3d 1431, 1452-53 (3d Cir. 1994) (stating that sales success by itself is not as probative of secondary meaning in trade dress context because success may be due to the desirability of the product configuration rather than source-designating factors); Cicena Ltd. v. Columbia Tele. Group, 900 F.2d 1546, 1551 (Fed. Cir. 1990) (stating that sales success could be attributed to secondary factors other than trade dress).
3. AMOUNT MANNER OF ADVERTISING
Puritan-Bennett asserts that prior to October 2000, it spent in excess of $750,000.00 in advertising. Between the October 2000, and September 2001, Puritan-Bennett avers that it spent an additional $1,000,000.00 in advertising. Moreover, this advertising prominently displayed the front view of the HELiOS sitting on a hand, which drew attention to the design, as well as its relative size and weight. Thompson Decl. ¶ 8. Thompson declared that focus groups identified this image with equal or greater recall than any other aspect of Puritan-Bennett's promotional materials. Id. ¶ 4. In addition, other promotional materials focused attention exclusively on the HELiOS design: pop-up displays, golf balls, Post-It-Note pads, and HELiOS shells displayed in doctors' offices. Thompson Decl. ¶¶ 8-11; id. Exh. 21.
Penox contends that the bulk of Puritan-Bennett's advertising occurred too late for consideration on the issue of secondary meaning. The pop-up displays, other trinkets picturing the front view of the FffiLiOS and the HELiOS shell displays all were promoted in 2002, well after any relevant date asserted by the parties. Defs.' Trade Dress Reply, at 12 (citing Thompson Decl. ¶¶ 9-19; Thompson Dep. at 191-92). Similarly, the national television ad campaign did not start until February 2002. Id. (citing Thompson Decl. ¶ 14). In addition, the advertising budget numbers cited by Thompson for prior to October 2000, and between October 2000 and September 20001, indicate Puritan-Bennett's advertising numbers for all of its oxygen products, not just the HELiOS. Id. (citing Thompson Decl., Exh. 20). Finally, Penox asserts that the image of the HELiOS sitting on a hand highlights the size and weight of the product rather than distinguishing its trade dress. Id. at 13 (citingPis.' Trade Dress Opp'n, at 7; Thompson Decl. Exhs. 3-8, 14, 17, 19). Moreover, even the advertising that contains this graphic is not focused on brand recognition for trade dress, but rather focuses on recognition of features and benefits of the product.
Puritan-Bennett's advertising evidence does not create an issue of fact on secondary meaning for several reasons. First, advertising numbers that reflect the entirety of Puritan-Bennett's oxygen therapy product line are not indicative of its relevant expenditures — expenditures directed to promotion of the HELiOS trade dress as a Puritan-Bennett franchise. Accord Echo Travel, Inc. v. Travel Assocs., Inc., 870 F.2d 1264, 1270 (7th Cir. 1989) (evaluating the effect of the specific advertising in creating secondary meaning). Second, the image of a HELiOS sitting on a hand that Thompson avers is remembered by focus group participants more than any other feature of Puritan-Bennett's HELiOS advertising could actually be considered a trademark in an of itself. In other words, the picture of the HELiOS sitting on the hand is the connection to Puritan-Bennett, not the trade dress ofthe HELiOS. Thompson's declaration also does not provide the underlying focus group study data to support her assertions; therefore, it is conclusory and not probative on the issue of secondary meaning. In addition, Thompson herself admits that the image ofthe HELiOS on the hand connotes the relative small size and light weight ofthe HELiOS as well as the front face ofthe trade dress. Thompson Decl. ¶ 8. This is unpersuasive in the analysis of secondary meaning because the focus of Puritan-Bennett's advertising is the functional features ofthe product not the "wow" design that Puritan-Bennett claims is so important.
Finally, Puritan-Bennett's advertising that focused on the trade dress, such as the pop-up displays, the trinkets with the front view of the HELiOS and the HELiOS shell displays, were done well after the ESCORT was introduced either at the October 2000 MedTrade Show or in September 2001, when the first shipment was sent to Lincare. Thompson Decl. ¶ 12; id. Exh. 21. Similarly, the huge television advertising campaign was launched in February 2002, see Thompson Decl. ¶ 14, which is clearly after any relevant date for purposes of establishing secondary meaning. Therefore, these pieces of evidence are irrelevant to this inquiry. Cf., Commerce Nat'l Ins. Servs., Inc. v. Commerce Ins. Agency, Inc., 214 F.3d 432, 439-40 (3d Cir. 2000) (finding irrelevant evidence of promotion after the date of junior user's entry into the market).
In summary, Puritan-Bennett has shown evidence that it advertised the HELiOS, however, the amount it spent on that advertising is undefined and the manner in which it advertised the FELiOS does not reflect an intent to encourage consumers — physicians, DMEs and patients — to associate the HELiOS trade dress, in and of itself, with Puritan-Bennett or a single anonymous source. Puritan-Bennett has not come forward with evidence of a material question of fact on whether the amount and manner of its advertising created secondary meaning in the FELiOS trade dress.
4. VOLUME OF SALES PLACE IN THE MARKETPLACE
Puritan-Bennett contends that it sold 13,000 HELiOS units in the time period between January 2000 and October 2000, which amounted to $8 million in sales and an estimated 35% market share of the portable oxygen system market. Thompson Decl. ¶ 21. In addition, from launch of the HELiOS to September 2001, it had sold in excess of 41,000 units for over $24 million in sales. Id. Puritan-Bennett asserts that its strong market share number, 35%, within a year of introduction "demonstrates a question of fact as to whether the volume of sales and the place in the market of the HELiOS product is itself sufficient to find secondary meaning . . ." Pls.' Trade Dress Opp'n, at 49.
Penox contends that Puritan-Bennetth as failed to connect the success of the HELiOS withits trade dress; therefore, it has not evidenced a material question of fact on this issue. Defs.' Trade Dress Mem. at 13-14 (citing Continental Lab. Prods., Inc., 114 F. Supp.2d at 1003).
The Court agrees with Penox that absent evidence that Puritan-Bennett's length and manner of use of the HELiOS trade dress in its advertising was directed to the HELiOS trade dress, there is no evidence that Puritan-Bennett's success in the market was achieved because of the design of the HELiOS rather than its unique features as the first ultra lightweight portable oxygen system with over an eight-hour oxygen supply. Accord Duraco. Prods. Inc., 40 F.3d at 1452-53; Cicena Ltd., 900 F.2d at 1551. Even taking this factor in conjunction with the others, there is no question of material fact on secondary meaning.
5. PROOF OF INTENTIONAL COPYING
Puritan-Bennett contends that its proof that Penox intentionally copied the HELiOS trade dress evidences that its product had acquired secondary meaning by October 2000. Specifically, Puritan-Bennett points to the fact that Penox had a HELiOS product in its possession when its product development team met to discuss the ESCORT development strategy. Crowson Decl. Exhs. N, A O. In addition, Penox's development team specifically identified things about the HELiOS that it wanted to duplicate. Id. Exhs. L D. Moreover, Penox hired one of Puritan Bennett's engineers who had worked on the HELiOS to work on the ESCORT. Id. Puritan-Bennett concludes that this "evidence is sufficient to create an `inference, which is by no means mandatory, that the defendant copied plaintiff's mark for the purpose of trading off an established association in the minds of consumers between the mark and a particular source for products or services.'" Pls.' Trade Dress Opp'n, at 49-50 (quoting Simon Property Group, L.P. v. my Simon, Inc., No. IP 99-1195-C-H/G, 2001 WL 66408, at *9 (S.D. Ind. Jan. 24, 2001); citing Health O Meter, Inc. v. Terraillon Corp., 873 F. Supp. 1160, 1174 (N.D. Ill. 1995)).
In contrast, Penox argues that contrary to Puritan-Bennett's assertions that its evidence supports a finding of secondary meaning, copying alone cannot make its case that the HELiOS had obtained secondary meaning by October 2000. Defs.' Trade Dress Reply, at 14 (citing Dorr-Oliver, Inc. v. Fluid-Quip, Inc., 94 F.3d 376, 378 (7th Cir. 1996)). In addition, Penox contends that to distinguish itself, it set out to make the ESCORT as different as physically possible given the technological constraints. Id. Moreover, Penox states that Puritan-Bennett's former employee, Randy Scharfenberg, testified during his deposition that his work on the ESCORT only involved internal components not the shell design. Id. (citing Scharfenberg Dep. at 14-15, 18-19, 96, 133-34). Other uncontroverted deposition testimony taken in the case supports Scharfenberg's testimony. Id. (citing Malcolm Dep. at 222; WaldmanDep. at 98, 163-65; Geisz Dep. at 43).
The Court finds that Puritan-Bennett's evidence of copying is insufficient to raise a material issue of fact on secondary meaning. According to the Seventh Circuit, proof of intentional copying is probative of secondary meaning, however, it has not been the sole basis for such a finding. Schwinn Bicycle Co. v. Ross Bicycles, Inc., 870 F.2d 1176, 1182 n. 13 (7th Cir. 1989) (citing Vaughan Mfg. Co. v. Brikam Int'l, Inc., 814 F.2d 346, 348 n. 2 (7th Cir. 1987)). See also Keystone Camera Prods. Corp. v. Ans co. Photo-Optical Corp., 667 F. Supp. 1221, 1231-32 (N.D. Ill. 1987) (stating that evidence of trade dress duplication alone does not establish secondary meaning). Therefore, absent probative evidence on other indicia of secondary meaning, any proof of intentional copying is insufficient to create an issue of material fact by itself.
Even if evidence of intentional copying alone were sufficient to establish secondary meaning, the evidence proffered by Puritan-Bennett fails to raise an issue of fact. The look of the HELiOS and the ESCORT are sufficiently different that Puritan-Bennett's argument that Penox intentionally copied the HELiOS trade dress falls flat. The HELiOS' overall appearance is all curves and soft lines in addition to the colors being similarly soft and muted. In direct contrast, the lines of the ESCORT are angular not to mention the powder blue color of the body and the navy blue color of the dial.
In addition, the HELiOS has a distinct focus on the dial as emphasized by the Roman arch in which its sits and the two flanking partial Roman arches. The ESCORT lacks this focus because it does not have the two flanking partial Roman arches and because the vents of the ESCORT draw the eye down and away from the dial rather than toward it. In addition, the features of the HELiOS that Puritan-Bennett contends that Penox wanted to copy were functional features unrelated to the trade dress of either product. Crowson Decl. Exhs. A (discussing a vent-to-fill ratio equal to that of the HELiOS) N (discussing conserver ratio and fill weight of the HELiOS as targets). Moreover, the uncontroverted testimony establishes that Puritan-Bennett's former employee was not involved in the design of the ESCORT'S exterior housing. Scharfenberg Dep. at 18-19; 96; 134; Waldman Dep. at 164; Geisz Dep. at 43. The facts Puritan-Bennett relies upon to evidence intentional copying standing alone or in combination with other minimal evidence of secondary meaning would not lead a jury to conclude that Penox intended to capitalize on the goodwill that Puritan-Bennett had established in the HELiOS trade dress.
6. ACTUAL CONFUSION
Puritan-Bennett asserts that this Court has explained that evidence of actual confusion supports a finding of secondary meaning. Pls.' Trade Dress Opp'n, at 50 (citing Simon Property Group, L.P., 2001 WL 66408, at* 10). Moreover, at least one other court has agreed with this assessment. Id. (citing Logan Graphic Prods., Inc. v. Textus USA, Inc., 2002 WL 31870549, No. 02 C 1823, at *5 (N.D. Ill. Dec. 23, 2002)). Puritan-Bennett contends that its evidence of actual consumer confusion is enough to create a material question of fact on both the consumer confusion issue and the secondary meaning issue.Penox argues that Puritan-Bennett's evidence on confusion is either irrelevant or inadmissible. Moreover, the evidence is only directed to confusion among patients, which Penox asserts is not the purchasers who Puritan-Bennett must establish were confused.
The Court agrees with Puritan-Bennett that in an overall analysis of trade dress infringement a finding of actual confusion can support a finding of secondary meaning. Int'l Kennel Club of Chi., Inc. v. Mighty Star, Inc., 846 F.2d 1079, 1086 (7th Cir. 1988) (finding evidence of actual confusion probative of secondary meaning in conjunction with other evidence of secondary meaning). However, Puritan-Bennett's evidence of actual confusion is dated after either of the parties' proffered relevant dates for establishing secondary meaning. Thompson testified that she knew patients were confused because sales people and service people were reporting such confusion. See, e.g., Thompson Dep. at 90. However, Thompson fails to put that evidence into perspective in terms of time. Furthermore, Earnest's testimony regarding patient confusion is flawed because its frame of reference is the date Earnest received returns — in 2003 — well after the October 2000 or September 20001 proffered reference dates. Earnest Dep. at 117. Supporting details about patient confusion from Fulford is dated in 2002 and 2003, well after either the October 2000, relevant date for secondary meaning or the September 2001, date proffered by Puritan-Bennett as the relevant date for secondary meaning.
Similarly to Fulford's declaration, Earnest testified to improperly returned ESCORTs that occurred in 2003 and made a declaration about more improper returns that also occurred in 2003. Earnest Dep. at 106-07; Earnest Decl. ¶¶ 2, 3. This evidence is not probative of whether the HELiOS trade dress had secondary meaning as of October 2000, or September 2001. While it may be evidence of actual confusion, which is not a time sensitive inquiry, see G. Heileman Brewing Co., 676 F. Supp. at 1470 (citing Amstar Crop. v. Domino's Pizza, Inc., 615 F.2d 252, 259 (5th Cir.), cert. denied, 449 U.S. 899 (1980); Brooks Shoe Mfg. Co. v. Suave Shoe Corp., 533 F. Supp. 75, 77-78 78 n. 4 (S.D. Fla. 1981), aff'd, 716 F.2d 854 (11th Cir. 1983)), it is simply too long after any possible relevant date for establishing secondary meaning, which is a time sensitive inquiry, id. at 1468, to create a material issue of fact on secondary meaning. Cf. Commerce Nat'l Ins. Servs., Inc., 214 F.3d at 439-40 (finding irrelevant evidence of promotion after the date of junior user's entry).
In summary, the Court has found that Puritan-Bennett has failed to provide evidence of secondary meaning that would create a material issue of fact for resolution by a jury. Because Puritan-Bennett has failed to establish a material question of fact on an element upon which it bears the burden of proof at trial, summary judgment on its trade dress infringement claim is appropriate.
V. CONCLUSION
For the reasons discussed herein, the Court DENIES the plaintiffs', Puritan-Bennett Corp. and Mallinckrodt Inc., motion for summary judgment of infringement and GRANTS its motion for declaration that the `056 patent is not invalid or unenforceable. In addition, the Court GRANTS the defendants', Penox Technologies, Inc. and Essex Industries, Inc., motion for summary judgment of non-infringement and DENIES the defendants', Penox Technologies, Inc. and Essex Industries, Inc., motion for summary judgment of unenforceability of the `056 patent. Moreover, the Court DENIES the defendants', Penox Technologies, Inc. and Essex Industries, Inc., motion for partial summary judgment on patent infringement damages as MOOT. Finally the Court GRANTS the defendants', Penox Technologies, Inc. and Essex Industries, Inc., motion for summary judgment on the plaintiffs', Puritan-Bennett Corp. and Mallinckrodt Inc., trade dress infringement claim.
Within this Order, the Court GRANTED in part and DENIED in part the defendants', Penox Technologies, Inc. and Essex Industries, Inc., Motion to Strike Exhibit D to Plaintiffs' Surreply Memorandum, and DENIED defendants', Penox Technologies, Inc. and Essex Industries, Inc., Motion to Strike Survey Evidence.