United States Court of Appeals
for the Federal Circuit
__________________________
ERBE ELEKTROMEDIZIN GMBH and ERBE USA,
INC.,
Plaintiffs-Appellants,
and
CONMED CORPORATION,
Plaintiff-Appellee,
v.
CANADY TECHNOLOGY LLC, AND DR. JEROME
CANADY,
Defendants-Cross Appellants.
__________________________
2008-1425, -1426
__________________________
Appeals from the United States District Court for the
Western District of Pennsylvania in case no. 05-CV-1674,
Chief Judge Donetta W. Ambrose.
__________________________
Decided: December 9, 2010
__________________________
PHILIP G. HAMPTON, II, Dickstein Shapiro, LLP, of
Washington, DC, argued for plaintiffs-appellants. With
ERBE ELEKTROMEDIZIN v. CANADY TECHNO 2
him on the brief was LAURENCE E. FISHER. Of counsel
was STEVEN M. WAR.
JOHN G. POWERS, Hancock & Estabrook, LLP, of Syra-
cuse, New York, argued for plaintiff-appellee. With him
on the brief was ASHLEY D. HAYES. Of counsel was ERIC
C. NORDBY.
TIMOTHY R. DEWITT, 24IP Law Group USA, PLLC, of
Annapolis, Maryland, argued for defendants-cross appel-
lants.
__________________________
Before RADER, NEWMAN, and PROST, Circuit Judges.
Opinion for the court filed by Circuit Judge PROST.
Opinion concurring-in-part, dissenting-in-part filed by
Circuit Judge NEWMAN.
PROST, Circuit Judge.
Appellants ERBE Elektromedizin GmbH and ERBE
USA, Inc. (collectively, “ERBE”) appeal from a final
decision of the United States District Court for the West-
ern District of Pennsylvania. Following the parties’
various motions for summary judgment, the district court
granted summary judgment of non-infringement of U.S.
Patent No. 5,720,745 (“’745 patent”) in favor of Cross-
Appellants Dr. Jerome Canady and Canady Technology
LLC (collectively, “Canady”). The court also granted
summary judgment on ERBE’s trademark and trade
dress claims in Canady’s favor based on the lack of a
legally protectable mark. Canady cross-appeals the
court’s grant of summary judgment on its antitrust coun-
terclaims in favor of ERBE and Plaintiff-Appellee Con-
Med Corporation (“ConMed”). We affirm.
3 ERBE ELEKTROMEDIZIN v. CANADY TECHNO
BACKGROUND
This is a patent infringement case involving three
competitor companies that create argon gas-enhanced
electrosurgical products for electrosurgery. Argon gas-
enhanced electrosurgery is typically performed with an
electrosurgical generator to which various surgical acces-
sories, including endoscopic probes, are attached. The
generator delivers a high frequency current to the human
tissue through a stream of argon gas to create uniform
hemostasis of bleeding tissue, which enhances surgical
effects by limiting blood loss. Three different patents are
implicated here.
ConMed is the owner by assignment of U.S. Patent
No. 4,781,175 (“’175 patent”), issued in 1988. The ’175
patent is directed at argon gas-assisted electrosurgical
products used in argon beam coagulation (“ABC”), where
the gas molecules move substantially parallel to one
another long enough to strike the target tissue. It dis-
closes an electrosurgical instrument that aims a directed,
laminar stream of argon gas. ’175 patent col.8 ll.10–14.
Dr. Canady is the named inventor of U.S. Patent No.
5,207,675 (“’675 patent”), issued in 1993, and is Canady
Technology’s founder, CEO, and partial owner. The ’675
patent discloses a “surgical tissue coagulator” that in-
cludes a “flexible tube” with a handle that is used to
maneuver the tube within an endoscope for argon gas-
assisted electrosurgery. 1
ERBE is the owner by assignment of the ’745 patent,
issued in 1998. The ’745 patent was filed in 1995 as
Continuation-in-Part Application Serial No. 08/579,879
1 The ’675 patent is not directly at issue here, but is
relevant prior art.
ERBE ELEKTROMEDIZIN v. CANADY TECHNO 4
(“’879 CIP”) of U.S. Patent Application Serial No. 981,009
(“’009 application”) from 1992. The ’879 CIP application
added forty-eight new claims and disclosures of argon gas
rates and a not directed, non-laminar stream of argon gas.
The patent examiner issued an Office Action, dated
March 28, 1997, rejecting nearly all of the pending claims
as indefinite and obvious in light of the prior art. J.A.
1068–77. The examiner noted that the Canady ’675
patent disclosed argon flow rates ranging from 1 to 12
liters per minute, but did not disclose argon flow rates of
“less than 1 liter per minute.” J.A. 1073. On June 27,
1997, in response to that Office Action, the applicants
filed an amendment to overcome the deficiencies in which
it argued for the patentability of its pending claims over
the Canady ’675 patent because of the invention’s claimed
low gas flow rate. J.A. 1088–99. The examiner then
issued its notice of allowance of the ’745 patent. The ’745
patent is directed to electrosurgical systems and methods
for coagulating biological tissue with a high frequency
current using argon plasma, i.e., ionized argon gas,
through flexible endoscopic probes. This is known as
argon plasma coagulation (“APC”).
ERBE unsuccessfully tried to register the color blue
as applied to these “flexible endoscopic probes for use in
argon plasma coagulation” on the U.S. Patent and
Trademark Office’s (“PTO’s”) Principal Register. J.A.
3848–59. Thereafter, in 2002, ERBE did register the color
blue as applied to the tube portion of the APC probes on
the PTO Supplemental Register as U.S. Trademark
Registration No. 2,637,630 (“’630 trademark”). J.A. 3846.
The patents have been the subject of a variety of liti-
gation since their issuance. First, Dr. Canady sued ERBE
in the United States District Court for the District of
Columbia for infringement of the ’675 patent in 1996
5 ERBE ELEKTROMEDIZIN v. CANADY TECHNO
based on ERBE’s importation of its APC probes. The
district court held that the accused ERBE APC probes do
not infringe the ’675 patent because they do not have
handles. This court affirmed. During the pendency of
that action, in 2005, Dr. Canady also sued ERBE in the
United Kingdom (“U.K.”) on its European foreign coun-
terpart to the ’675 patent, European Patent No. 0595967.
J.A. 2480–97. The U.K. court similarly found no in-
fringement because of the absence of handles in the
ERBE APC probes and ordered Dr. Canady to pay ERBE’s
attorneys fees.
Meanwhile, in 2000, ConMed granted ERBE a non-
exclusive license to manufacture products under the ’175
patent, such as argon gas-enhanced electrosurgical gen-
erators and flexible probes, in consideration for specified
royalty payments. Under this agreement, ERBE also
received the right to sue for infringement of the ’175
patent.
Also in 2000, ConMed filed a lawsuit against ERBE in
the United States District Court for the Northern District
of New York, seeking a declaratory judgment that the
’745 patent was invalid and that ConMed’s ABC probes
did not infringe the ’745 patent. ERBE answered that the
asserted patent was valid and infringed. In 2003, upon
motion for summary judgment by ConMed, the district
court construed the claims of the ’745 patent and found
that ConMed’s ABC probes did not infringe. ERBE ap-
pealed, but in accordance with a subsequent settlement
agreement, the district court vacated its summary judg-
ment decision upon remand from this court. Under the
settlement agreement, ERBE granted ConMed a non-
exclusive license allowing ConMed to continue selling its
ABC probes.
ERBE ELEKTROMEDIZIN v. CANADY TECHNO 6
In 2005, Dr. Canady contracted with KLS Martin
GmbH & Co. (“KLS Martin”) to manufacture blue 2.3 mm
diameter probes (“Canady probes”) with black range
marking rings along the tip end. In that year, Canady
also filed a 510(k) application with the U.S. Food and
Drug Administration (“FDA”) seeking approval to sell the
Canady probes, which operated with ERBE APC genera-
tors to perform APC procedures. After receiving approval,
Canady Technology began importing and selling the
accused Canady probes that it identified as substantially
similar to ERBE APC probes, having the same uses, color,
and marking rings, to customers of the ERBE APC sys-
tems in the United States. In 2006, ERBE filed a com-
plaint with the International Trade Commission (“ITC”),
which initiated an investigation of Canady Technology
and KLS Martin. The ITC determined that ERBE did not
present evidence of direct infringement by Canady cus-
tomers under the proper construction of the asserted
claims, and therefore Canady could not have engaged in
contributory or induced infringement. We affirmed the
ITC decision in ERBE Elektromedizin GmbH v. Interna-
tional Trade Commission, 566 F.3d 1028 (Fed. Cir. 2009).
In addition, on December 5, 2005, ERBE and ConMed
brought the instant action against Dr. Canady and Ca-
nady Technology. ERBE and ConMed filed an amended
complaint alleging, inter alia, contributory infringement
and infringement by inducement of the ’745 and ’175
patents based on Canady Technology’s flexible endoscopic
argon gas-assisted electrosurgical probes. ERBE also
alleged infringement of ’630 trademark under Section 32
of the Lanham Act, 15 U.S.C. § 1114, because of the blue
color on the Canady probes. Based on its purported trade
dress, consisting of the blue tube with black markings at
the end, ERBE further asserted a claim for unfair compe-
tition in violation of Section 43(a) of the Lanham Act, 15
7 ERBE ELEKTROMEDIZIN v. CANADY TECHNO
U.S.C. § 1125. Canady denied all of plaintiffs’ claims and
asserted, inter alia, antitrust counterclaims against
ERBE and ConMed under Sections 1 and 2 of the
Sherman Act, 15 U.S.C. §§ 1 and 2.
The district court held a Markman hearing and con-
strued the ’745 patent’s disputed claim terms, including
“low flow rate,” which appears in independent claims 1
and 35 and dependent claim 38 of the ’745 patent. ERBE
Elektromedizin GmbH v. Canady Tech., LLC, 512 F.
Supp. 2d 297 (W.D. Pa. 2007) (claim construction order).
Claim 1 recites that the “gas flows from the source,
through the tube and exits through the opening at the
distal end of the tube at a low flow rate of less than about
1 liter/minute.” ’745 patent col.11 ll.40–43 (emphasis
added). Claim 35 states that “supplying the inert gas
from the source of said gas through the tube to the distal
end opening of said tube with such a low flow rate, that
gas exiting through said distal end opening is a not di-
rected, non laminar stream but forms an inert gas atmos-
phere.” Id. col.15 ll.52–57 (emphases added). Dependent
claim 38 recites, “[t]he method as claimed in claim 35,
whereby the stream of gas exits through said distal end
opening with a flow rate of less than about one liter per
minute.” Id. col.16 ll.21–23 (emphasis added).
Both parties submitted a single definition for the con-
struction of the disputed term “low flow rate” appearing
in claims 1 and 35. ERBE proposed “a flow rate that
causes the gas exiting through the opening at the distal
end of the flexible tube to be a not directed, non laminar
stream that forms an inert gas atmosphere.” Canady
proposed that the term means “much smaller than one
liter per minute and producing flow velocities less than 19
km/hour.” After considering the claim language, the
specification, and the prosecution history, the court
ERBE ELEKTROMEDIZIN v. CANADY TECHNO 8
construed the disputed claim term “low flow rate” to mean
“a rate of flow less than about 1 liter/minute and produc-
ing flow velocities less than 19 km/hour such that the gas
exiting through the distal end opening forms a non-
laminar inert gas temperature.” ERBE, 512 F. Supp. 2d
at 309. As the court explained, in the March 28, 1997
Office Action, the examiner rejected ERBE’s amended
claims based on two prior art references, one being Ca-
nady’s ’675 patent. J.A. 1073. ERBE responded to that
action arguing for patentability based on the “low flow
rate” being less than 1 liter per minute and producing a
flow velocity of less than 19 m/hr. J.A. 1089. When
ERBE failed to respond to Canady’s argument that this
was a prosecution disclaimer, the court determined that
ERBE indeed distinguished and thus disclaimed the 1 to
12 liters per minute flow rates disclosed in the prior art to
obtain the ’745 patent.
The district court then granted Canady’s motion for
summary judgment of non-infringement as to the as-
serted claims of the ’745 patent. Based on the court’s
construction of the disputed claim term “low flow rate,”
ERBE could not show direct infringement because ERBE
failed to present evidence that the accused Canady 2.3
mm probes exhibited argon flow velocities less than 19
km/hr. ERBE Electromedizin GmbH v. Canady Tech.,
LLC, 529 F. Supp. 2d 577, 599 (W.D. Pa. 2007) (summary
judgment opinion). 2 In the alternative, the court found
summary judgment proper as to ERBE’s contributory
infringement claim because ERBE failed to raise a genu-
ine issue of material fact that the accused Canady probes
lacked substantial non-infringing uses. The court also
granted Canady’s motion for summary judgment with
2 In this citation, ERBE Elektromedizin GmbH
was spelled ERBE Electromedizin GmbH.
9 ERBE ELEKTROMEDIZIN v. CANADY TECHNO
respect to ERBE’s trademark and trade dress claims
because ERBE failed to establish a genuine issue of
material fact that the blue color and black markings were
nonfunctional and the trademark and trade dress ac-
quired secondary meaning. After the court denied Ca-
nady’s motion for summary judgment of non-infringement
of ERBE’s and ConMed’s ’175 patent infringement claims
and set them for trial before a jury, the parties settled
and jointly moved to dismiss the claim.
Finally, the district court granted ERBE’s and Con-
Med’s motions for summary judgment as to Canady
Technology’s antitrust counterclaims. The court deter-
mined that Canady failed to raise a genuine issue of
material fact that the instant action was a sham except-
ing ERBE and ConMed from immunity under the Noerr-
Pennington doctrine.
The district court denied the parties’ motions for re-
consideration and entered final judgment on May 9, 2008.
ERBE timely appeals and Canady Technology cross-
appeals. We have jurisdiction over these consolidated
appeals pursuant to 28 U.S.C. § 1295(a)(1).
DISCUSSION
On appeal, ERBE challenges the court’s construction
of certain disputed claim terms and subsequent grant of
summary judgment of non-infringement as to the as-
serted claims of the ’745 patent. ERBE also objects to the
court’s grant of summary judgment as to its ’630 trade-
mark and trade dress claims. In its cross-appeal, Canady
Technology contests the court’s grant of summary judg-
ment as to its antitrust counterclaims against ERBE and
ConMed. We address each challenge in turn.
ERBE ELEKTROMEDIZIN v. CANADY TECHNO 10
I
We first address ERBE’s challenge to the court’s con-
struction of certain disputed claim terms in the ’745
patent and subsequent finding of non-infringement.
As a preliminary matter, Canady asserts that ERBE
waived its right to challenge the district court’s grant of
summary judgment of non-infringement because ERBE
did not contest the court’s alternative holding that the
accused products have substantial non-infringing uses.
The problem with Canady’s waiver argument, however, is
that the district court’s alternative holding only impli-
cates the contributory infringement claim, which requires
a successful plaintiff to prove that the accused product
has no substantial non-infringing uses. See 35 U.S.C.
§ 271(c). No such requirement, however, exists for in-
duced infringement. See id. § 271(b). Therefore, ERBE
did not have to challenge the court’s alternative ground to
avoid waiving its right to appeal the court’s judgment of
non-infringement with regard to its inducement of in-
fringement claim.
Turning to the merits of the ’745 patent infringement
claim, on appeal ERBE takes issue with the court’s con-
struction of the disputed claim term “low flow rate” argu-
ing that it violates several canons of claim construction.
Specifically, ERBE submits that by construing “low flow
rate” to mean “a rate of flow less than 1 liter/minute and
producing flow velocities less than 19 km/hr such that the
gas exiting through the distal end opening forms a non-
laminar inert gas temperature,” the court failed to give
the term its ordinary and customary meaning, ignored the
doctrine of claim differentiation, assumed disclaimers,
and erroneously imported quantitative limitations.
Canady responds that the court properly construed this
11 ERBE ELEKTROMEDIZIN v. CANADY TECHNO
claim term in light of the intrinsic evidence, namely the
claim language, the patent specification, and the prosecu-
tion history. We agree with Canady.
Claim construction is a question of law that is re-
viewed de novo. Ortho-McNeil Pharm., Inc. v. Caraco
Pharm. Labs., Ltd., 476 F.3d 1321, 1326 (Fed. Cir. 2007).
We begin our claim construction analysis with the words
of the claim. Phillips v. AWH Corp., 415 F.3d 1303, 1312
(Fed. Cir. 2005) (en banc). Claim terms are generally
construed in accordance with the ordinary and customary
meaning they would have to one of ordinary skill in the
art. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576,
1582 (Fed. Cir. 1996). “[T]he person of ordinary skill in
the art is deemed to read the claim term not only in the
context of the particular claim in which the disputed term
appears, but in the context of the entire patent, including
the specification.” Phillips, 415 F.3d at 1313. In addition
to considering the specification, courts should consider the
relevant prosecution history of an asserted patent. Id. at
1317. “[T]he prosecution history can often inform the
meaning of the claim language by demonstrating how the
inventor understood the invention and whether the inven-
tor limited the invention in the course of the prosecution,
making the claim scope narrower than it would otherwise
be.” Id. Mindful of these principles, we turn to the dis-
puted claim term “low flow rate.”
We begin with the claim language. Notably, though
both claims 1 and 35 contain the term “low flow rate,”
claim 1 describes it as being “less than about 1 li-
ter/minute,” ’745 patent col.11 ll.42–43, while claim 35
explains it is “a not directed, non laminar stream.” Id.
col.16 ll.14. In their Markman briefs, however, the par-
ties submitted one, albeit different, definition for “low
flow rate.” The specification explains that directed gas
ERBE ELEKTROMEDIZIN v. CANADY TECHNO 12
flow could injure the patient. The invention sought to
overcome this problem by disclosing and claiming low
argon gas flows that produce a low, not directed, non-
laminar stream of gas exiting the tube. The specification
further provides an exemplary flow rate of about less than
1 liter per minute.
ERBE asserts that the specification’s exemplary flow
rates are not quantitative limitations and cannot be
imported into the claims because the specification uses a
clear qualitative description for the term “low flow rate.”
ERBE similarly contends that the court’s construction
erroneously imports a “19 km/hr” limitation from the
prosecution history into claims 1 and 35. According to
ERBE, the prosecution history here does not limit the
invention because there is no express disclaimer. In the
alternative, ERBE argues that any disclaimer during
prosecution was only qualitative and related to high flow
rates. For support, ERBE directs this court to the specifi-
cation’s explanation of the ’175 prior art reference where
the laminar jet can be directed to the tissue to be coagu-
lated with a gas flow rate “sufficient to clear natural
fluids from the tissue.” Id. col.6 ll.26–31.
We reject ERBE’s arguments based on the language of
claim 1, the specification, and the prosecution history.
The inventors distinguished its low flow rate from the
Canady ’675 patent prior art reference in order to obtain
its invention. Specifically, the patent examiner issued a
March 28, 1997 Office Action rejecting the pending claims
as obvious in light of Canady’s endoscopes “disclos[ing]
the use of very low flow rates (i.e. about 1 liter per min-
ute) . . . [where t]he specific flow rate may be adjusted
from 1-12 liters per minute . . . [but not] less than 1 liter
per min.” J.A. 1073. On June 27, 1997, patent applicants
responded to that Office Action describing the invention’s
13 ERBE ELEKTROMEDIZIN v. CANADY TECHNO
“low gas flow rate, which allows the area of the tissue
being treated to be surrounded by the plasma atmos-
phere.” J.A. 1088. Applicants explained that the claimed
flow rate avoids the production of laminar jets to prevent
patient injuries. J.A. 1089. Specifically, they stated:
This flow rate avoids the production of laminar
jets of ionized gas directed with high impact onto
the tissue. The problems of laminar jets are to be
avoided, since the ionized gas can enter the blood-
stream and have toxic effects on the patient. Ac-
cording to Canady [the ’675 patent], column 4
lines 3-5, a flow rate of 1 to 12 litres per minute is
foreseen there. Taking the outer diameter of the
tube to be 3 mm (column 2, line 68) would lead to
an inner diameter of the tube of about 2 mm. This
corresponds to a cross-section of 3.14 mm. A flow
rate of 1 litre per minute leads to a flow velocity of
19 m/h. Taking the higher value of 12 litres per
minute gives an outlet gas speed of 229 km/h.
Such velocities in Canady would certainly be clas-
sified as laminar jets and would likely lead to the
above problems.
Id. (footnote omitted) (emphasis added). After the inven-
tors distinguished the flow rates of 1 to 12 liters per
minute disclosed in the Canady ’675 patent—whose
disclosed tubes produced flow rates of 1 to 12 liters per
minute leading to laminar jet gas flow velocities of 19 m/h
to 229 km/h—the examiner issued its notice of allowance
of the amended claims in the application.
We do not agree with ERBE that “such velocities” re-
ferred to the “229 km/h” alone. Oral Argument 6:04-37,
http://oralarguments.cafc.uscourts.gov/mp3/2010-
1425.mp3. As Canady’s counsel explained, such a reading
ERBE ELEKTROMEDIZIN v. CANADY TECHNO 14
is illogical. The examiner had rejected the pending claims
with a low flow rate in light of the prior art until the
applicants distinguished their invention. The examiner
would not have allowed an otherwise unpatentable inven-
tion based on the higher of the two numbers in the range
set forth in the prior art. Rather, the prosecution history
clearly and unambiguously demonstrates that the appli-
cants unequivocally disclaimed flow rates from 1 to 12
liters per minute that lead to “such velocities” of 19
through 229 km/h disclosed in the ‘675 patent prior art
reference, referred to by applicants as laminar jets.
Accordingly, as the district court concluded, the claimed
flow rates were limited to less than 1 liter per minute and
produced velocities less than 19 km/hr, which avoided the
production of laminar jets and produced only non-
laminar, inert gas atmospheres.
Further, we are not persuaded by ERBE’s argument
that the district court’s construction improperly reads the
narrow quantitative claim limitation of dependent claim
38 into broader claim 35, resulting in the two claims
having the same scope in violation of the canon of claim
differentiation. ERBE’s argument that the court’s con-
struction improperly renders the express limitation “less
than about 1 liter/minute” in claims 1 and 38 mere sur-
plusage is also unavailing.
Generally, “[a]ll the limitations of a claim must be
considered meaningful.” Unique Concepts, Inc. v. Brown,
939 F.2d 1558, 1562 (Fed. Cir. 1991) (citing Perkin-Elmer
Corp. v. Westinghouse Elec. Corp., 822 F.2d 1528, 1532–33
(Fed. Cir. 1987)). However, “no canon of [claim] construc-
tion is absolute in its application.” Renishaw PLC v.
Marposs Societa’ Per Azioni, 158 F.3d 1243, 1248 (Fed.
Cir. 1998). Claim differentiation may be helpful in some
cases, but it is just one of many tools used by courts in the
15 ERBE ELEKTROMEDIZIN v. CANADY TECHNO
analysis of claim terms. See, e.g., Nystrom v. Trex Co.,
Inc., 424 F.3d 1136, 1142–43 (Fed. Cir. 2005). Similarly,
surplusage may exist in some claims. See, e.g., Pickholtz
v. Rainbow Tech., Inc., 284 F.3d 1365, 1373 (Fed. Cir.
2002). As we have stated, “[a]ll rules of construction must
be understood in terms of the factual situations that
produced them, and applied in fidelity to their origins.”
Modine Mfg. Co. v. U.S. Int’l Trade Comm., 75 F.3d 1545,
1551 (Fed. Cir. 1996).
We thus reject ERBE’s arguments with respect to
“claim differentiation” and “surplusage.” In this case, the
prosecution history establishes that the Canady prior art
patent was distinguished based on this “low flow rate”
limitation and thus this term as it appears in the asserted
claims is limited. See PODS, Inc. v. Porta Stor, Inc., 484
F.3d 1359, 1366–67 (Fed. Cir. 2007) (concluding argu-
ments distinguishing the prior art patent suggested
meaning of disputed claim terms when applying South-
wall Technologies, Inc. v. Cardinal IG Co., 54 F.3d 1570,
1579 (Fed. Cir. 1995)); Southwall Techs., 54 F.3d at 1579
(“[A]rguments made during prosecution regarding the
meaning of a claim term are relevant to the interpretation
of that term in every claim of the patent absent a clear
indication to the contrary.”). Because the inventors
clearly and unambiguously disclaimed such flow rates
that produced laminar jets and limited the claims to flow
velocities less than 19 km/hr to overcome unpatentability,
we agree with the district court’s claim construction with
respect to “low flow rate.”
We review “a district court’s grant of summary judg-
ment without deference.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1372 (Fed. Cir. 2005). Summary
judgment is proper if the record shows that there is no
genuine issue of material fact, drawing all reasonable
ERBE ELEKTROMEDIZIN v. CANADY TECHNO 16
inferences in favor of the nonmovant. Fed. R. Civ. P.
56(c)(2); see Geneva Pharms., Inc. v. GlaxoSmithKline
PLC, 349 F.3d 1373, 1377 (Fed. Cir. 2003). The district
court determined that ERBE failed to present evidence of
direct infringement under the court’s construction of “low
flow rate.” ERBE does not contest that it failed to present
evidence that the accused 2.3 mm Canady probes exhibit
velocities less than 19 km/hr. Because we affirm the
district court’s construction of “low flow rate” and there is
no evidence that the accused probes infringe the asserted
claims in the ’745 patent, we also affirm the court’s judg-
ment of non-infringement. 3
II
We next address ERBE’s challenge to the district
court’s grant of summary judgment as to its trademark
and trade dress claims based on the court’s determination
that the color blue is functional and has not acquired the
requisite secondary meaning. When reviewing Lanham
Act claims, we look to the law of the regional circuit
where the district court sits, here the Third Circuit. See
Tone Bros., Inc. v. Sysco Corp., 28 F.3d 1192, 1200 (Fed.
Cir. 1994). Our review of a district court’s grant of sum-
mary judgment that a trademark and trade dress is not
infringed is plenary. See id. at 1196. We review the
evidence in the light most favorable to the non-moving
party. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255
(1986). Federal Rule of Civil Procedure 56(c) requires the
nonmoving party to adduce more than a mere scintilla of
evidence in its favor, id. at 252, and that party cannot
simply reassert factually unsupported allegations con-
3 In light of our conclusion on the construction of
“low flow rate,” we need not reach ERBE’s challenge to
the construction of other claim terms.
17 ERBE ELEKTROMEDIZIN v. CANADY TECHNO
tained in its pleadings, see Celotex Corp. v. Catrett, 477
U.S. 317, 323–24 (1986).
The Third Circuit analyzes federal trademark in-
fringement and federal unfair competition under identical
standards. A & H Sportswear, Inc. v. Victoria's Secret
Stores, Inc., 237 F.3d 198, 210 (3d Cir. 2000). To prove
either Lanham Act violation, “a plaintiff must demon-
strate that (1) it has a valid and legally protectable mark;
(2) it owns the mark; and (3) the defendant’s use of the
mark to identify goods or services causes a likelihood of
confusion.” Id. A mark is afforded trademark protection
if it is descriptive and has acquired secondary meaning.
E.T. Browne Drug Co. v. Cococare Prods., Inc., 538 F.3d
185, 191 (3d Cir. 2008).
In this case, the examiner determined that ERBE
could not register the color blue on its APC probes on the
Principal Register because the color blue was ornamental
and ERBE failed to show evidence of secondary meaning,
whether competitors used the color for its products, and
whether the color was functional. J.A. 3848–59. Thereaf-
ter, ERBE registered the mark on the Supplemental
Register. J.A. 3846.
Federal registration on the Principal Register pro-
vides a presumption of the mark’s validity. 15 U.S.C.
§§ 1057(b), 1115(a). Registration of a mark on the Sup-
plemental Register, however, does not. 15 U.S.C. § 1094.
As § 1094 explains, marks registered on the Supplemental
Register do not receive the advantages of §§ 1057(b) and
1115(a). Since the ’630 trademark is on the Supplemental
Register, and not the Principal Register, the parties agree
that, under the authoritative statutory language and
Third Circuit case law, ERBE bears the burden of proving
that it owns a valid mark. See 15 U.S.C. § 1094; E.T.
ERBE ELEKTROMEDIZIN v. CANADY TECHNO 18
Browne Drug Co., 538 F.3d at 191 (explaining that the
party seeking enforcement of trademark laws has the
burden of proving the existence of a protectable trade-
mark when the mark does not appear on the PTO’s Prin-
cipal Register); Def./Cross-Appellant Br. 34; Appellant
Reply Br. 54.
On appeal, ERBE argues that the court improperly
granted summary judgment on its trademark and trade
dress claims because it misapplied the proper case law
and failed to consider the evidence in the light most
favorable to ERBE, the non-moving party. Specifically,
ERBE contends that it proffered evidence that raises a
genuine issue of material fact that the color blue is not
functional for APC probes and that it has acquired secon-
dary meaning. Canady responds that ERBE’s conclusory
and unsupported allegations do not preclude summary
judgment in this case, where the uncontroverted evidence
demonstrates that the color blue is functional and lacks
secondary meaning.
To survive summary judgment here, ERBE would
have to establish a genuine issue of material fact that
both the color blue is non-functional and has acquired
secondary meaning. See, e.g., Qualitex Co. v. Jacobson
Prods. Co., 514 U.S. 159, 166–67 (1995); L.D. Kichler Co.,
v. Davoil, Inc., 192 F.3d 1349, 1352 (Fed. Cir. 1999);
Duraco Prods., Inc. v. Joy Plastic Enters., Ltd., 40 F.3d
1431, 1445 (3d Cir. 1994). It fails to do either.
We first look to functionality. A mark is functional if
it “‘is essential to the use or purpose of the article or if it
affects the cost or quality of the article, that is,’ if exclu-
sive use of the feature would put competitors at a signifi-
cant non-reputation-related disadvantage.” L.D. Kichler
Co., 192 F.3d at 1352 (quoting Qualitex, 514 U.S. at 165).
19 ERBE ELEKTROMEDIZIN v. CANADY TECHNO
Some factors courts use to determine functionality include
whether the design yields a utilitarian advantage, alter-
native designs are available in order to avoid hindering
competition, and the design achieves economies in manu-
facture or use. See, e.g., In re Owens-Corning Fiberglas
Corp., 774 F.2d 1116, 1121 (Fed. Cir. 1985).
Color may not be granted trademark protection if the
color performs a utilitarian function in connection with
the goods it identifies or there are specific competitive
advantages for use. Brunswick Corp. v. British Seagull
Ltd., 35 F.3d 1527, 1530–33 (Fed. Cir. 1994), cert. denied,
514 U.S. 1050 (1995) (color black for outboard engines
was functional and could not be protected where black
offered the advantage of being compatible with a wider
variety of boat colors); Keene Corp. v. Paraflex Indus.,
Inc., 653 F.2d 822, 824 (3d Cir. 1981). However, “[m]ere
taste or preference cannot render a color—unless it is ‘the
best, or at least one, of a few superior designs’—de jure
functional.” L.D. Kichler Co., 192 F.3d at 1353; see
Brunswick Corp., 35 F.3d at 1531 (explaining that de jure
functional features, which rest on utility and the founda-
tion of effective competition, are not entitled to trademark
protection). The Third Circuit has explained that the
policy behind the functionality doctrine invokes the
inquiry of whether prohibiting the mark’s imitation by
others will deprive those others of something that will
substantially hinder them in competition. Keene, 653
F.3d at 827. As a result, the existence of other, equally
usable colors is relevant to determine whether a particu-
lar color is functional. Qualitex, 514 U.S. at 166.
ERBE asserts that there is a genuine issue of mate-
rial fact whether the color blue is functional because the
evidence demonstrates that blue is not uniquely superior
for APC probes, has no competitive advantage because it
ERBE ELEKTROMEDIZIN v. CANADY TECHNO 20
is not essential to the use or purpose of the APC probes,
does not have an aesthetic function, and that many other
colors are equally visible against human tissue and are
available for selection. For support, ERBE offers the
declaration of Managing Director Christian Erbe. In this
declaration, Mr. Erbe explained that “[b]lue is one of the
many colors available for APC probes. Any color, other
than beige or red, would be clearly visible during endo-
scopic procedures.” J.A. 4938.
We reject ERBE’s argument that the district court
misapplied Keene. In Keene, the Third Circuit explained
that the “functionality doctrine stems from the public
interest in enhancing competition” and avoiding improper
hindrance of competition in the marketplace. 653 F.2d at
827. ERBE fails to present a genuine issue of material
fact that the color blue does not make the probe more
visible through an endoscopic camera or that such a color
mark would not lead to anti-competitive effects. Cf. In re
Owens-Corning Fiberglas Corp., 774 F.2d at 1122 (holding
that the color pink for fiber glass insulation was not
functional because it did “not deprive competitors of any
reasonable right or competitive need”). The evidence in
the record is that the color blue is prevalent in the medi-
cal field, the blue color enhances identification of the
endoscopic tip, and several companies use blue endoscope
probes. See, e.g., J.A. 3876 (Biosearch Medical Products
Inc. advertisement explaining that “[b]lue color enhances
positive Endoscopic identification of the tip.”). There is no
evidentiary support that other colors are as visible
through an endoscopic camera as the color blue other
than a conclusory, self-serving statement by Mr. Erbe.
Because the record evidence demonstrates that appro-
priation by ERBE alone would place others at a competi-
tive disadvantage, we conclude that the district court
21 ERBE ELEKTROMEDIZIN v. CANADY TECHNO
properly found that there is no genuine issue of material
fact that the color blue is functional.
Moreover, even if the color blue is non-functional, we
would still affirm the district court’s grant of summary
judgment because ERBE fails to present a genuine issue
of material fact that there is secondary meaning for the
mark. A manufacturer may obtain trademark protection
for a color mark where it acts as a symbol that distin-
guishes a firm’s goods and identifies its source. Qualitex,
514 U.S. at 166. In considering whether there is secon-
dary meaning, in that there is an association formed in
the minds of the consumers between the mark and the
source or origin of the product, the Third Circuit looks to
the following non-exhaustive list of factors:
(1) the extent of sales and advertising leading to
buyer association; (2) length of use; (3) exclusivity
of use; (4) the fact of copying; (5) customer sur-
veys; (6) customer testimony; (7) the use of the
mark in trade journals; (8) the size of the com-
pany; (9) the number of sales; (10) the number of
customers; and (11) actual confusion.
E.T. Browne Drug Co., 538 F.3d at 199 (quoting Com-
merce Nat’l Ins. Servs., Inc. v. Commerce Ins. Agency, Inc.,
214 F.3d 432, 438 (3d. Cir. 2000)).
On appeal, ERBE argues that the district court did
not properly consider evidence that ERBE’s trademark
has secondary meaning. Specifically, ERBE directs us to
Mr. Erbe’s declaration for support that ERBE used this
particular blue on its APC probes for several years in
marketing materials, on giveaways at tradeshows, and
ERBE advertised its slogan, “True Blue Probe for Argon
Plasma Coagulation.” J.A. 4938–39. Canady responds,
ERBE ELEKTROMEDIZIN v. CANADY TECHNO 22
and the district court agreed, “that while ERBE may have
been using the color blue for over 30 years, there is no
evidence that, in the minds of the public, the primary
significance of the color blue is to identify ERBE as the
source of the product.” ERBE, 529 F. Supp. 2d at 603.
ERBE does not offer any evidence—such as sales and
advertising leading to buyer association, customer sur-
veys, customer testimony, the number of sales, the num-
ber of customers, the use of the mark in trade journals, or
actual confusion—that creates a genuine issue of material
fact with regard to whether the color blue on its flexible
endoscopic probes has secondary meaning. E.T. Browne
Drug Co., 538 F.3d at 199. Indeed, ERBE failed to pre-
sent any evidence that consumers associate the color blue
on its flexible endoscopic probes with ERBE. 4 Viewing all
of the evidence in the light most favorable to ERBE,
4 Further, as Canady argues, ERBE’s only competi-
tor, ConMed, has been using blue on its probes since
January 2002. ERBE acknowledged that ConMed uses
blue flexible endoscopic probes during the prosecution of
the ’630 trademark. J.A. 3862. There, ERBE noted that
there was a pending lawsuit in the Northern District of
New York against ConMed for “selling similar looking
tubes as part of its flexible endoscopic probes for use in
argon plasma coagulation, in apparent infringement of
the ’745 patent.” Id. ERBE, however, admits that the
’745 patent “does not disclose or claim the color blue for
the tube portions of the probes.” Id. ERBE does not
demonstrate that the lawsuit in the Northern District of
New York involved trademark or trade dress claims, or
that the resulting settlement licensed this color blue to
ConMed. ERBE also fails to present evidence that it
licensed the ’630 trademark to ConMed. Rather, the
record evidence shows that at least one of ERBE’s com-
petitors, ConMed, uses blue flexible endoscopic probes for
use in argon plasma coagulation and thus ERBE does not
maintain exclusive use. E.T. Browne Drug Co., 538 F.3d
at 199.
23 ERBE ELEKTROMEDIZIN v. CANADY TECHNO
ERBE fails to establish a genuine issue of material fact
with respect to secondary meaning. 5 Accordingly, we
affirm the district court’s grant of summary judgment as
to ERBE’s trademark infringement claims.
On appeal, ERBE generally refers to its “trade dress”
claims, which includes the color blue of the APC probe
with black rings at the end of the tube. It is undisputed
that ERBE’s purported trade dress is not registered. The
district court granted summary judgment on these claims
because ERBE failed to present any argument that the
black rings at the end of the probe were non-functional.
ERBE similarly fails to present any evidence relating to
its trade dress claims on appeal. We, therefore, also
affirm the district court’s grant of summary judgment as
to ERBE’s trade dress claims.
III
We now turn to Canady Technology’s cross-appeal.
The issue is whether the district court properly granted
summary judgment on Canady Technology’s antitrust
counterclaims in favor of ERBE and ConMed. Generally,
when reviewing a district court’s judgment involving
federal antitrust law, we apply the law of the regional
circuit in which that court sits. See C.S.U., L.L.C. v.
Xerox Corp., 203 F.3d 1322, 1325 (Fed. Cir. 2000). How-
5 The dissent does not identify any evidence that
ERBE presents relating to the required association
formed in the minds of consumers between the mark and
the source or origin of the product. The dissent further
ignores the evidence demonstrating that at least one of
ERBE’s competitors uses blue flexible endoscopic
probes—and thus the requisite secondary meaning is
missing here.
ERBE ELEKTROMEDIZIN v. CANADY TECHNO 24
ever, we apply our own law when resolving issues that
involve our exclusive jurisdiction. Id.
Canady Technology first argues that the district court
applied the wrong standard for determining whether the
Noerr-Pennington doctrine immunizes ERBE and ConMed
from antitrust liability. The Noerr-Pennington doctrine
generally immunizes a party from antitrust liability based
on its filing of a lawsuit unless the narrow “sham litiga-
tion” exception applies. See Prof’l Real Estate Investors,
Inc. v. Columbia Pictures Indus., Inc. (“PRE”), 508 U.S.
49, 56 (1998). In PRE, the Supreme Court explained that
sham litigation is present where the lawsuit is objectively
baseless and subjectively motivated by a desire to impose
anticompetitive harm from the judicial process rather
than obtain judicial relief. 508 U.S. at 60–61; Nobel-
pharma AB v. Implant Innovations, Inc., 141 F.3d 1059,
1071 (Fed. Cir. 1998). Because PRE, however, only looks
to whether a single lawsuit is a sham, two circuit courts
have applied a different standard where there is a “whole
series of legal proceedings.” Primetime 24 Joint Venture
v. Nat’l Broad. Co., Inc., 219 F.3d 92 (2d Cir. 2000); USS-
POSCO Indus. v. Contra Costa Cnty. Bldg. & Const.
Trades Council, AFL-CIO, 31 F.3d 800 (9th Cir. 1994).
The dispute here is whether we should consider just
the instant action or all prior litigation in determining
whether the sham litigation exception applies to the
Noerr-Pennington immunity doctrine. This dispute
implicates two different lines of cases. Canady Technol-
ogy urges us to follow the Ninth-Second Circuit precedent
here because ERBE and ConMed have filed multiple
lawsuits. On these particular facts, however, we need not
determine whether to adopt the test of our sister courts
because there is no “series” of legal proceedings. The
other proceedings Canady Technology directs us to are
25 ERBE ELEKTROMEDIZIN v. CANADY TECHNO
against Dr. Canady, as an individual, who is admittedly
not asserting the antitrust counterclaims with Canady
Technology.
In Amarell v. Connell, 102 F.3d 1494, 1519–20 (9th
Cir. 1997), the Ninth Circuit held that only two lawsuits
is not a “series” or “pattern” of litigation implicating the
standard in USS-POSCO for “a whole series of legal
proceedings.” In this case, the three relevant lawsuits
ERBE filed to which Canady Technology directs our
attention are not “simultaneous and voluminous” and do
not implicate a test for “a whole series of legal proceed-
ings.” Cf. Primetime 24, 219 F.3d at 101; USS-POSCO,
31 F.3d at 811. Therefore, like the district court, we
analyze Canady Technology’s antitrust counterclaims
under the PRE sham litigation exception to the Noerr-
Pennington immunity doctrine.
At oral argument, Canady’s counsel conceded that if
we analyze its antitrust counterclaims under PRE, sum-
mary judgment with respect to ConMed is appropriate.
Oral Argument 24:11-32,
http://oralarguments.cafc.uscourts.gov/mp3/2010-
1425.mp3. So we are left now with only resolving Canady
Technology’s antitrust counterclaims relating to ERBE.
To prove that the instant action is a sham and the
plaintiff is not entitled to immunity, the suit must be
“both objectively baseless and subjectively motivated by a
desire to impose collateral, anti-competitive injury rather
than to obtain a justifiable legal remedy.” Nobelpharma,
141 F.3d at 1071 (citing PRE, 508 U.S. at 60–61). We
first look to whether the plaintiff had probable cause to
institute the action. The existence of probable cause—
e.g., where the law is unsettled, the action is arguably
warranted by existing law, or there is an objectively good
ERBE ELEKTROMEDIZIN v. CANADY TECHNO 26
faith argument for extending existing law—precludes a
sham litigation finding. PRE, 508 U.S. at 62, 65. We
shall only reach the litigant’s subjective motivation if the
challenged litigation is objectively meritless. Id. at 60.
Canady Technology argues that it has presented a
genuine issue of material fact that ERBE’s patent in-
fringement, trademark, and trade dress claims were
objectively baseless and warrant an exception to the
Noerr-Pennington immunity doctrine. Specifically, Ca-
nady Technology argues that no reasonable person could
have expected success on these claims. We disagree.
The record demonstrates that ERBE had probable
cause to bring this patent enforcement litigation. As
evident from our claim construction analysis in Section I,
supra, Canady Technology fails to present a genuine issue
of material fact that ERBE’s ’745 patent infringement
claim was so objectively “baseless that no reasonable
litigant could realistically expect to secure favorable
relief.” Carroll Touch, Inc. v. Electro Mech. Sys., Inc., 15
F.3d 1573, 1583 (Fed. Cir. 1993) (quoting PRE, 508 U.S.
at 62)). Although ERBE’s arguments were not winning
ones, our analysis demonstrates that ERBE presented
non-frivolous arguments for its proposed construction of
the disputed claim term “low flow rate.” Merely because
our construction of this term is the same as that of the
vacated decision of the Northern District of New York,
this does not create a genuine issue of material fact that
ERBE’s instant suit was objectively baseless. Therefore,
the “sham litigation” exception to the Noerr-Pennington
doctrine is not warranted here.
Canady Technology also argues that the district court
improperly failed to consider whether ERBE’s alleged
predatory acts other than sham litigation violated anti-
27 ERBE ELEKTROMEDIZIN v. CANADY TECHNO
trust law. The other alleged predatory acts include
interfering with and inhibiting the development and
marketing of dual mode argon probes, and interfering
with Canady Technology’s contracts and business expec-
tations. Canady Technology blames ERBE for its failure
to present any genuine issue of material fact with respect
to these allegations. Specifically, Canady Technology
contends that “ERBE elected to forego the discovery
process rather than using it to more clearly define the
issues and evidence.” Def./Cross-Appellant Br. 41. Ca-
nady Technology, however, has it backwards. It is Ca-
nady Technology, and not ERBE, who bears the burden of
seeking discovery on its antitrust claims and establishing
some genuine issue of material fact as to the other preda-
tory acts it argues the district court ignored. Canady
Technology failed to do either.
Sections 1 and 2 of the Sherman Act protect against
unreasonable restraints of trade and monopolization of
trade or commerce. 15 U.S.C. §§ 1, 2. To survive sum-
mary judgment, plaintiff must show, inter alia, illegal
action and antitrust injury. Canady Technology fails to
show that ERBE engaged in illegal activity resulting in
prohibited antitrust injury. Rather, Canady Technology
concedes that the warranties ERBE purportedly would
“void” or “not honor” had already expired. On this record,
we conclude that ERBE fails to establish a genuine issue
of material fact that ERBE engaged in predatory acts in
violation of antitrust law that preclude summary judg-
ment. Therefore, we affirm the district court’s grant of
summary judgment on Canady Technology’s antitrust
counterclaims.
CONCLUSION
For the reasons set forth above, we affirm the district
ERBE ELEKTROMEDIZIN v. CANADY TECHNO 28
court’s grant of summary judgment of non-infringement
as to ERBE’s ’745 patent infringement claim, and sum-
mary judgment of ERBE’s ’630 trademark and trade dress
claims based on functionality and lack of secondary
meaning. We also affirm the district court’s grant of
summary judgment of Canady Technology’s antitrust
counterclaims.
AFFIRMED
United States Court of Appeals
for the Federal Circuit
__________________________
ERBE ELEKTROMEDIZIN GMBH AND ERBE USA,
INC.,
Plaintiffs-Appellants,
and
CONMED CORPORATION,
Plaintiff-Appellee,
v.
CANADY TECHNOLOGY LLC, AND DR. JEROME
CANADY,
Defendants-Cross Appellants.
__________________________
2008-1425,-1426
__________________________
Appeals from the United States District Court for the
Western District of Pennsylvania in Case No. 05-CV-1674,
Chief Judge Donetta W. Ambrose.
__________________________
NEWMAN, Circuit Judge, concurring in part, dissenting in
part.
I respectfully dissent from the grant of summary judg-
ment whereby the court holds, summarily, that there can be
neither patent nor trademark nor trade dress infringement
ERBE ELEKTROMEDIZIN v. CANADY TECHNO 2
of ERBE’s proprietary rights. I write separately with re-
spect particularly to the trademark and trade dress issues,
for the court has departed from established law and prece-
dent. Canady does not dispute that it copied the blue color
and the particular shade of blue of the ERBE probe; that is,
that it copied the trade dress. The public interest in avoid-
ance of deception or confusion looms particularly large in
the medical/surgical field, where the surgeon’s experience of
quality and performance, on recognition of the surgical
device by its unique color, is a matter of public concern.
Common law property rights are of practical signifi-
cance, and their sustenance is as much a judicial responsi-
bility as are statutory rights. This court’s cursory
authorization to a competitor to copy the distinctive color of
this surgical probe, despite the evidence of likelihood of
confusion as to the source and identity of the probe, is surely
not subject to summary disposition in favor of the copier.
ERBE suggests that there is deception and free-riding, for it
was not disputed that the blue probes with black markings,
manufactured by KLS Martin GmbH & Co. and imported by
Canady for use with the ERBE equipment, are intended to
mirror the blue color and black markings of the ERBE
probes. Canady represented to the FDA that its imported
probes are “the same as” the ERBE probes, and obtained
expedited FDA approval based on that representation.
Indeed, Canady’s probes are compatible only with ERBE’s
electrosurgical equipment.
The district court held, on summary judgment, that the
blue color is “functional.” However, ERBE established at
least a genuine issue as to this question. Registration of the
blue color for these products on the Supplemental Register
required the applicant to show that the color is not func-
tional. Trademark Manual of Examining Procedure
§1202.05(b) states:
3 ERBE ELEKTROMEDIZIN v. CANADY TECHNO
A color mark is not registrable on the Principal Reg-
ister under §2(f), or the Supplemental Register, if
the color is functional. Brunswick Corp. v. British
Seagull Ltd., 35 F.3d 1527, 32 USPQ2d 1120 (Fed.
Cir. 1994), cert. denied, 514 U.S. 1050 (1995); In re
Owens-Corning Fiberglas Corp., 774 F.2d 1116, 227
USPQ 417 (Fed. Cir. 1985).
Thus the color mark passed the test of non-functionality,
upon agency examination.
The difference with respect to registration of a color on
the Supplemental Register and the Principal Register does
not relate to functionality, but to the need to establish
secondary meaning for the particular color. Non-
functionality does not of itself establish secondary meaning.
See In re Owens-Corning Fiberglas Corp., 774 F.2d 1116
(Fed. Cir. 1985) (criteria for registration on the Principal
Register of the color pink for fiberglass insulation material);
Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 166
(1995) (holding that the existence of other, equally usable
colors is relevant to whether a particular color is functional).
In Qualitex the Court explained that a mark is functional
“‘if it is essential to the use or purpose of the article or if it
affects the cost or quality of the article,’ that is, if exclusive
use of the feature would put competitors at a significant
non-reputation-related disadvantage.” 514 U.S. at 165
(quoting Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844,
850 n.10 (1982)).
In accordance with the review procedures of the Admin-
istrative Procedure Act, the holding of the Patent and
Trademark Office of non-functionality of the color blue for
“flexible endoscopic probes for use in argon plasma coagula-
tion,” receives administrative deference. Although ERBE
had not obtained registration on the Principal Register,
ERBE ELEKTROMEDIZIN v. CANADY TECHNO 4
ERBE was not required to do so in order to rely on its Sup-
plemental registration for its statutory benefits, as well as
to assert its common law trademark and trade dress rights,
see Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205
(2000) (holding that a product’s unregistered trade dress in
the form of product design is protectable upon a showing of
secondary meaning).
The district court improperly granted summary judg-
ment on the trademark and trade dress issues. Precedent
does not support this judgment. Canady’s argument that
blue, this shade of blue, is the only color that can be distin-
guished from body fluids was directly contradicted by the
expert declaration of Christian Erbe, Chairman of ERBE,
USA, who declared that “Blue is one of many colors avail-
able for APC Probes. Any color, other than beige or red,
would be clearly visible during endoscopic procedures.”
Decl. of Christian O. Erbe ¶4, July 17, 2007 (J.A. 4938). At
the summary judgment stage, the factual issue of whether
blue, or this shade of blue, is the only color of the spectrum
that contrasts with bodily fluids was fairly placed into
dispute. For this factual question to be decided in favor of
Canady at the summary judgment stage, Canady must
establish that it is entitled to judgment in its favor, even on
ERBE’s factual position. See Anderson v. Liberty Lobby,
Inc., 477 U.S. 242, 255 (1986) (“The evidence of the non-
movant is to be believed, and all justifiable inferences are to
be drawn in his favor.”).
My colleagues criticize Mr. Erbe’s declaration as “con-
clusory,” Maj. Op. 20. However, his statement about the
visibility of other colors is straightforward and in accord
with common sense, and its correctness is unchallenged by
Canady. The evidence offered by Canady in support of
functionality is that one company advertises that its coagu-
lation probe’s “blue color enhances positive endoscopic
5 ERBE ELEKTROMEDIZIN v. CANADY TECHNO
identification of the tip.” This advertisement was cited by
the PTO during examination, and registration on the Sup-
plemental Register was nonetheless granted. A reasonable
jury could decide—as did the PTO—that the color blue for
argon plasma coagulation tubes is not functional, and is
capable of serving as a trademark.
The court also errs in its summary judgment that ERBE
cannot establish secondary meaning. In addition to the
evidence of copying of the blue color, Mr. Erbe declared:
5. ERBE has advertised and promoted the Blue
Probe Mark in various marketing materials includ-
ing brochures, giveaways at tradeshows and
through use of the TRUE BLUE PROBE FOR
ARGON PLASMA COAGULATION mark, Registra-
tion No. 2,852,359, which issued on June 15, 2004.
6. The color of the ERBE APC probes (“ERBE
Blue”) is the corporate color of ERBE Elek-
tromedizin GmbH. ERBE has used ERBE blue as
part of its corporate identity, as part of its trade
dress for medical devices, for various promotional
items and in its literature and advertisements for
more than thirty (30) years.
Decl. of Christian O. Erbe ¶¶5–6, July 17, 2007 (J.A. 4938).
As to copying, which the majority acknowledges in its
list of factors relevant to secondary meaning but does not
discuss, ERBE raises significant issues of possible passing
off and consumer deception. The laws of trademark and
trade dress are designed to protect the consumer as well as
the purveyor. It does not serve the consuming public to
eliminate legal protection of indicia of source and quality.
See Qualitex, 514 U.S. at 164 (“The law thereby ‘encour-
ERBE ELEKTROMEDIZIN v. CANADY TECHNO 6
age[s] the production of quality products,’ and simultane-
ously discourages those who hope to sell inferior products by
capitalizing on a consumer’s inability quickly to evaluate
the quality of an item offered for sale.” (internal citation
omitted)).
ERBE states that its blue color serves to protect the
consumer/user, for it is a conspicuous identification of its
particular probe for argon plasma coagulation. ERBE states
that of the many colors that could be used, Canady selected
the ERBE shade of blue for the sole purpose of profiting
from the reputation established for ERBE’s product. The
panel majority discounts this unrebutted evidence, and
observes only the absence of other possible types of evidence
relating to secondary meaning. However, the Third Circuit,
like other circuits, does not set rigid rules for all forms of
trademark and trade dress. See E.T. Browne Drug Co. v.
Conocare Prods. Inc., 538 F.3d 185, 200 n.15 (3d Cir. 2008)
(“We do not suggest that a party attempting to establish
secondary meaning always must show that marketing
materials succeeded in creating buyer association or that
the term contributed to sales growth.”).
My colleagues state that there is “evidence . . . that the
color blue is prevalent in the medical field . . . and several
companies use blue endoscope probes,” Maj. Op. 20, appar-
ently drawing this conclusion from the advertisement
considered by the PTO and plaintiff ConMed’s authorized
blue probe. Whether secondary meaning was established is
a question of fact, not subject to adverse inferences on
summary judgment. The factual issue of likelihood of
confusion, upon the undisputed intentional copying of this
shade of blue, must be considered. ERBE has created at
least a genuine issue of material fact as to whether its trade
dress, as well as its trademark, is protectable. My col-
7 ERBE ELEKTROMEDIZIN v. CANADY TECHNO
leagues err in finding these facts adversely, on summary
judgment.
The judicial obligation is more complex than simply to
facilitate “competition,” as the panel majority asserts. The
avoidance of deception of the consumer is a purpose of trade
dress law. At the summary judgment stage, ERBE provided
sufficient evidence to negate the movant’s arguments with
respect to the functionality and distinctiveness of its trade
dress. Summary judgment that ERBE has no protectable
right in its blue endoscopic argon probe was improperly
granted. From my colleagues’ contrary holding, I must,
respectfully, dissent.