Tone Bros., Inc. v. Sysco Corp., s. 92-1347

• Decision Date: 07 July 1994
• Docket Number: 92-1379,Nos. 92-1347,s. 92-1347
• Parties: 1994 Copr.L.Dec. P 27,288, 31 U.S.P.Q.2d 1321 TONE BROTHERS, INC., Plaintiff-Appellant, v. SYSCO CORPORATION, Defendant/Cross-Appellant.
• Court: U.S. Court of Appeals — Federal Circuit

Page 1192

28 F.3d 1192

1994 Copr.L.Dec. P 27,288, 31 U.S.P.Q.2d 1321

TONE BROTHERS, INC., Plaintiff-Appellant, v. SYSCO CORPORATION, Defendant/Cross-Appellant.

Nos. 92-1347, 92-1379.

United States Court of Appeals,

Federal Circuit.

July 7, 1994.

Rehearing Denied; Suggestion for Rehearing In Banc Declined

Sept. 15, 1994. ^*

Edmund J. Sease, Zarley, McKee, Thomte, Voorhees & Sease, Des Moines, IA, argued for plaintiff-appellant. With him on the brief were Kirk M. Hartung and Heidi E. Sease.

Steve Rosenblatt, Rosenblatt & Associates, P.C., Houston, TX, argued for defendant/cross-appellant. With him on the brief was Paula Morris.

Before PLAGER, CLEVENGER, and SCHALL, Circuit Judges.

SCHALL, Circuit Judge.

Tone Brothers, Inc. ("Tone") appeals from the judgment of the United States District Court for the Southern District of Iowa granting summary judgment for Sysco Corporation ("Sysco") and dismissing the case. Tone Bros., Inc. v. Sysco Corp., 23 USPQ2d 1184, 1992 WL 200128 (S.D.Iowa Mar. 17, 1992). In its complaint, Tone had sought damages and injunctive relief against Sysco for (1) design patent infringement; and (2) trade dress infringement, in violation of section 43(a) of the Lanham Act, 15 U.S.C. Sec. 1125(a) (Supp. IV 1992), and Iowa state law.

The patent-in-suit is United States Design Patent No. 277,363 for "[t]he ornamental design for a jar or similar article, as shown and described," which issued on January 29, 1985, to Archie G. Drummond, Jr. et al. and is assigned to Tone (the " '363 patent"). Tone claims as its trade dress the shape and appearance of its own clear plastic container which it has used for its spices since 1982. Tone has not alleged that it has registered its trade dress as a trademark under either state or federal law.

The district court granted summary judgment for Sysco on the patent claim, holding the '363 patent invalid under the public use bar of 35 U.S.C. Sec. 102(b) (1988). 23 USPQ2d at 1186-88. The district court also granted summary judgment for Sysco on the Lanham Act claim, holding that Tone's trade dress was neither inherently distinctive nor had acquired secondary meaning so as to support an action under section 43(a). Id. at 1188-92. Because the district court's pendent jurisdiction over Tone's state law claims was no longer supported by federal claims, the district court dismissed the state law claims for lack of subject matter jurisdiction. Id. at 1193. Tone appeals both the patent and the Lanham Act rulings.

Sysco cross-appeals the district court's denial of its application for attorney fees under 15 U.S.C. Sec. 1117(a) (1988), and under 35 U.S.C. Sec. 285 (1988). Tone Bros., Inc. v. Sysco Corp., No. 4:90-CV-60011, 1992 WL 211078 (S.D.Iowa Apr. 28, 1992). Further, Sysco seeks to recover its attorney fees incurred in this appeal, either under 35 U.S.C. Sec. 285 (1988) or on the ground that Tone's appeal is frivolous. ¹

Because we find that there are genuine issues of material fact in dispute, we reverse the grant of summary judgment of patent invalidity, as well as the grant of summary judgment of the non-protectability of Tone's trade dress. The judgment in favor of Sysco dismissing the case is therefore vacated, and the case is remanded for further proceedings consistent with this opinion. ² In

light of these rulings, we need not address Sysco's cross-appeal on the matter of attorney fees, and we deny Sysco's application for attorney fees in connection with this appeal.

BACKGROUND

Tone processes and packages bulk herbs and spices. It sells these goods to distributors, who resell them under a wide variety of brand names. Sometime about 1981, Tone conceived the idea, new at that time, of using a container made of clear plastic rather than the traditional tin spice package or an opaque plastic container. In due course, Tone's designers came forward with a large, clear container in the basic shape of a tall box with an oval depression in each side that serves as a hand grip. The container also has a plastic screw-on lid which has a flip-up opening for spooning or shaking out the contents of the container. In September of 1982, Tone's designers filed an application for a design patent on the new container. At about the same time, Tone began selling herbs and spices in the container. As noted above, the application issued as the '363 patent on January 29, 1985.

Sysco is a wholesale distributor of food products, including spices. Prior to March of 1988, Sysco was one of the distributors of Tone's spices, which it resold under the Sysco private label. Sysco, however, began developing its own container in 1985. The Sysco container which resulted from this development project, and which is now alleged to infringe, is generally similar to the Tone container in that both are made of clear plastic, are about the same height, have the same general shape, and have the same kind of flip-up, screw-on lid.

Sysco began using the allegedly infringing container after its private label arrangement with Tone ended in March of 1988. In May of 1989, through its lawyers, Tone informed Sysco that Tone believed the Sysco container infringed Tone's design patent and trade dress. Sysco denied the alleged infringement and refused to cease using the container. On January 10, 1990, Tone filed its district court action, alleging (1) design patent infringement and (2) trade dress infringement under both section 43(a) of the Lanham Act and Iowa state law. As noted above, the district court granted summary judgment for Sysco and dismissed the case, but denied Sysco's application for attorney fees. This appeal and cross-appeal followed.

DISCUSSION

I. STANDARD OF REVIEW

Summary judgment is appropriate when "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); Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S.Ct. 2548, 2552, 91 L.Ed.2d 265 (1986). We undertake plenary review of a grant of summary judgment. Keystone Retaining Wall Sys., Inc. v. Westrock, Inc., 997 F.2d 1444, 1449, 27 USPQ2d 1297, 1301 (Fed.Cir.1993).

A material fact is one that may affect the decision, so that the finding of that fact is relevant and necessary to the proceedings. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 2510, 91 L.Ed.2d 202 (1986). A genuine issue is shown to exist if sufficient evidence is presented such that a reasonable fact finder could decide the question in favor of the nonmoving party. Id. The evidence submitted by the nonmovant, in opposition to a motion for summary judgment, "is to be believed, and all justifiable inferences are to be drawn in [its] favor." Id. at 255, 106 S.Ct. at 2513. In ruling on a motion for summary judgment, the court must bear in mind the actual quantum and quality of proof necessary to support liability under the applicable law. Id. at 254, 106 S.Ct. at 2513. The court must assess the adequacy of the nonmovant's response and must determine whether the showing the nonmovant asserts it will make at trial would be sufficient to carry its burden of proof. See Celotex, 477 U.S. at 322, 106 S.Ct. at 2552.

II. CLAIM FOR DESIGN PATENT INFRINGEMENT

The district court held that the patented design was in public use within the The following facts pertinent to the alleged public use--as set forth in deposition testimony and uncontested documents--are either undisputed or represent Tone's version. James M. Degen, a consultant, was hired by Tone in 1979, initially to develop a long-range business plan for Tone, and later to do various other projects. One such task, which Degen was assigned on May 14, 1981, was to do the following: "[D]evelop a proposal to test the new one-pound plastic container, versus the existing Tone package versus one-pound tin. This test should cover handling, shaking, spooning positions/satisfaction, etc."

                meaning of section 102(b), title 35, by virtue of the fact that the design was shown to a group of college students more than one year before the filing of the patent application.  23 USPQ2d at 1188. 3  In so holding, the court concluded, as a matter of law, that Tone could not counter Sysco's prima facie case of public use with evidence that tended to demonstrate the showing to the students was for an experimental purpose.  Id. at 1187-88. 4  We hold that this was error
                

Degen accordingly set up a study of a type he said was referred to in the marketing research business as a "disaster check," in order to get feedback from people who might actually use the container. Degen testified in his deposition that the study was a chance for users to help a manufacturer to improve a product, and to prevent the mistake of introducing a wrong product or one that did not fit the users' needs. He further testified that the purpose of the study was to evaluate the feel, the hold, and the handling of three spice containers: (1) an existing Tone tin container, (2) an existing Tone plastic container, and (3) a prototype of a new plastic container of Tone's. As participants in the study, Degen randomly selected ten students who were dietetics majors at the college where he was teaching, Mundelein College, in Chicago, Illinois.

An interview guide prepared by Degen for the study outlined the study methodology, wherein: (1) the students were to pick up the containers and describe how they felt (e.g., comfortable, awkward, easy to grip, balanced, etc.); (2) the students were asked which container they liked best, and why; and (3) the students were asked how the containers felt when shaking out their contents. Thus, the new container was given to the students to see if it worked properly. Put another way, the students were not shown the new container and asked whether it was pleasing to the eye. Rather, they were asked to test the...