Continental Lab. Products, Inc. v. Medax Intern.

• Decision Date: 18 September 2000
• Docket Number: No. 97-CV-0359 W JAH.,97-CV-0359 W JAH.
• Citation: 114 F.Supp.2d 992
• Court: U.S. District Court — Southern District of California
• Parties: CONTINENTAL LABORATORY PRODUCTS, INC., Plaintiff, v. MEDAX INTERNATIONAL, INC., Alma A. Timpson, Paul M. Jessop, Defendants.

114 F.Supp.2d 992

CONTINENTAL LABORATORY PRODUCTS, INC., Plaintiff, v. MEDAX INTERNATIONAL, INC., Alma A. Timpson, Paul M. Jessop, Defendants.

No. 97-CV-0359 W JAH.

United States District Court, S.D. California.

September 18, 2000.

COPYRIGHT MATERIAL OMITTED

Kathleen A. Pasulka, Edward C. Schewe, Brown, Martin, Haller & McClain, San Diego, CA, for Plaintiff.

Thomas J. Rossa, Holme Roberts & Owen LLP, Salt Lake City, UT, for Defendants.

CORRECTED MEMORANDUM OPINION RE: TRADE DRESS CLAIMS

WHELAN, District Judge.

Defendants Medax International, Inc. and individual Defendants Alma A. Timpson, Jr. and Paul M. Jessop filed a motion for summary judgment against Plaintiff's claims for trade dress infringement and unfair competition.¹

I. BACKGROUND

Medical and research laboratories perform large numbers of repetitive tests that require scientists to add precise amounts of certain chemical or biological materials to hundreds of test tubes. This process involves injecting the material through a disposable pipette tip that is attached to a pipetting tool. Pipette tips are typically discarded after use. To facilitate use, disposable pipette tips are sold in trays with the tips arranged for connection to a multi-headed pipetting tool. Empty trays may be reused by reloading them with pipette tips.

In the past, manufacturers of disposable pipette tips distributed them in large packages with 10 trays per box, each tray holding 96 tips. The trays and packaging were usually discarded after use, producing significant quantities of solid waste. In recent years, research laboratories have sought to reduce this solid waste by developing systems to package and arrange pipette tips to enable laboratory researchers to reuse the trays and to purchase additional pipette tips without incurring the expense of buying additional trays.

A. THE PARTIES' PRODUCTS

Plaintiff Continental Laboratory Products, Inc. ("Continental") manufactures and sells biomedical research products. In 1992, Larry G. Scaramella invented an environmentally friendly and space-efficient pipette tip packaging system. On June 28, 1994 the Patent and Trademark Office awarded Scaramella U.S.Patent No. 5,324,482 ("the '482 Patent"), which he assigned to David A. White, president of Continental. The '482 Patent, entitled "Pipette Tip Packaging System," teaches an efficient pipette storage and distribution system that cuts down on packaging materials, reduces the amount of solid waste and uses space more efficiently.

Continental's primary product, the esp® pipette tip system, implements the invention disclosed in the '482 Patent. The esp® system stores pipette tips within an outer box that slips off to reveal a separate white cardboard container ("card-holding container").² The container holds two stacks of five plastic pipette tip holder cards. Each card is filled with 96 pipette tips, and the cards are stacked and nested vertically. To facilitate the removal and transfer of the pipette tips from the container, the product includes a transfer plate that secures itself atop the holder cards and permits the user to successively remove and transport the holder cards. The sides of the container have four V-shaped openings, two along each side. The openings enable the user to successively engage and lift each holder card from the stack using the transfer plate. Continental claims the design of its card-holding container comprises protectable trade dress.

Defendant Medax International, Inc. ("Medax") manufactures and sells TRANSAX, a pipette tip packaging system remarkably similar to the Continental esp® system. As with the Continental product, TRANSAX stores pipette tips inside a white card-holding container with V-shaped openings to facilitate removal of the holder cards. (See Decl. of David A. White ("White Decl."), Exs. 11-13.) Defendants have produced TRANSAX with three different interior box designs: (1) four V-shaped openings similar in appearance to Continental's esp® system, (2) four U-shaped openings and (3) two U-shaped openings. (Defs.' Exs. 10, 31, 12.)

B. RELEVANT PROCEDURAL HISTORY

On March 4, 1997 Continental commenced this action against Defendant Medax, alleging claims for patent infringement, contributory infringement, trade dress infringement and unfair competition. On December 30, 1998 Continental filed the currently operative First Amended Complaint that added individual Defendants Alma A. Timpson, Jr., president of Medax ("Timpson") and Paul M. Jessop, vice president and general manager of Medax ("Jessop"). Continental's First Amended Complaint accuses Defendants of infringing the '482 Patent and of copying the esp® system's allegedly distinctive trade dress.

Continental's patent infringement and trade dress claims have dominated several pretrial motions in this matter, including a motion to dismiss, three summary judgment motions filed by Defendants and one by Continental. Despite this long procedural history, only two previously entered orders have significant relevance to this litigation. The first order, issued August 12, 1999, granted Defendants' motion for summary judgment against Continental's claims for patent infringement and contributory infringement, and found as a matter of law that Continental could not establish infringement of the '482 Patent. (See Memorandum Opinion and Order, 1999 U.S.Dist. LEXIS 15383, 1999 WL 33116499.)

The second order, issued September 21, 1999, denied Defendants' previous motion for summary judgment as to Continental's claims for trade dress infringement and unfair competition. The Court noted that Defendants' motion devoted a mere three pages to addressing the elements of trade dress infringement and did not adequately present the relevant legal or evidentiary issues. (See Order Denying Defendants' Motion for Summary Judgment re: Trade Dress Claim at 6:16-17.) Because the motion appeared to have underlying merit, however, the Court granted Defendants "leave to file a broad and comprehensive motion for summary judgment that attacks each and every element of trade dress infringement, both from a legal and evidentiary standpoint." (Id. at 20:12-14.) The Court advised Continental that in the event Defendants filed such a motion, Continental "must come forward with all evidence supporting the elements of secondary meaning and likelihood of confusion." (Id. at 20 n. 8.) On October 25, 1999 Defendants filed a new motion for summary judgment against the trade dress claims.³

II. LEGAL STANDARD

Rule 56 of the Federal Rules of Civil Procedure mandates entry of summary judgment where the moving party demonstrates the absence of a genuine issue of material fact and entitlement to 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). A fact is "material" when, under the governing substantive law, it could affect the outcome of the case. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 2510, 91 L.Ed.2d 202 (1986). A "genuine issue" of material fact arises if "the evidence is such that a reasonable jury could return a verdict for the nonmoving party." Id.

The party moving for summary judgment always bears the initial burden of establishing the absence of a genuine issue of material fact. Celotex, 477 U.S. at 323, 106 S.Ct. at 2553. The moving party can satisfy this burden by affirmatively presenting evidence that negates an essential element of the nonmoving party's case, or by demonstrating that the nonmoving party cannot provide evidence to support an essential element upon which it will bear the burden of proof at trial. Id. at 322-23, 106 S.Ct. at 2552-53.

Once the moving party meets this initial burden, the nonmoving party cannot defeat summary judgment by merely demonstrating "that there is some metaphysical doubt as to the material facts." Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 586, 106 S.Ct. 1348, 1356, 89 L.Ed.2d 538 (1986); Triton Energy Corp. v. Square D Co., 68 F.3d 1216, 1221 (9th Cir.1995) (citing Anderson, 477 U.S. at 252, 106 S.Ct. at 2512) ("The mere existence of a scintilla of evidence in support of the non-moving party's position is not sufficient."). Rather, the nonmoving party must "go beyond the pleadings and by her own affidavits, or by `the depositions, answers to interrogatories, and admissions on file,' designate `specific facts showing that there is a genuine issue for trial.'" Celotex, 477 U.S. at 324, 106 S.Ct. at 2553 (quoting Fed.R.Civ.P. 56(e)).

When making this determination, all inferences drawn from the underlying facts must be viewed in the light most favorable to the party opposing the motion. Matsushita Elec. Indus., 475 U.S. at 587, 106 S.Ct. at 1356. "Credibility determinations, the weighing of the evidence, and the drawing of legitimate inferences from the facts are jury functions, not those of a judge, [when] he [or she] is ruling on a motion for summary judgment." Anderson, 477 U.S. at 255, 106 S.Ct. at 2513.

III. DISCUSSION

Defendants move for summary judgment on the ground that Continental cannot come forward with evidence to support its claims for trade dress infringement.

A. TRADE DRESS

Continental's trade dress claims arise under Section 43(a) of the Lanham Act, which provides a cause of action against any person who uses "any symbol or device ... likely to cause confusion ... as to the origin ... of his or her goods." 15 U.S.C. § 1125(a). This provision protects not only words and symbols, but also "trade dress," a category that includes the packaging and design of a product. Wal-Mart Stores, Inc. v. Samara Bros. Inc., 529 U.S. 205, ___, 120 S.Ct. 1339, 1342, 146 L.Ed.2d 182 (2000).

In the Ninth Circuit,⁴ trade dress "refers to the `total image of a product' and may include features such as size, shape, color, color combinations, texture or graphics." International Jensen, Inc. v. Metrosound U.S.A., Inc., 4 F.3d 819,...