Leviton Mfg. Co., Inc. v. Universal Sec. Instruments
| Decision Date | 19 February 2004 |
| Docket Number | No. CIV. AMD 01-3855.,CIV. AMD 01-3855. |
| Citation | 304 F.Supp.2d 726 |
| Parties | LEVITON MANUFACTURING CO., INC., Plaintiff v. UNIVERSAL SECURITY INSTRUMENTS, INC., et al., Defendants |
| Court | U.S. District Court — District of Maryland |
D. Christopher Ohly, Brian J. Kelly, Blank Rome LLP, Washington, DC, Barry George Magidoff, Brad S. Needleman, Joseph G. Lee, Michael A. Nicodema, Greenberg Traurig LLP, New York, NY, for Plaintiff.
Maurice U. Cahn, William E. Bradley, Cahn and Samuels LLP, Washington, DC, for Defendants.
Plaintiff, Leviton Manufacturing Co., Inc., instituted this action against Universal Security Instruments, Inc., and USI Electric, Inc. (hereinafter referred to jointly as "USI") for patent infringement of Leviton's patent, U.S. Patent No. 4,595,894 (issued June 17, 1986) (the "'894 patent"), entitled "Ground Fault Circuit Interrupting System." Additionally, Leviton brought a claim for trade dress infringement. USI counterclaimed, seeking a declaratory judgment on several grounds. Now pending, inter alia, are the parties' cross motions for summary judgment.1 The issues have been exhaustively briefed and a hearing has been held. For the reasons stated herein, I shall grant the motions in part and deny them in part.
Leviton filed its complaint on December 13, 2001, asserting a claim of patent infringement of the '894 patent under 35 U.S.C. § 271 and for trade dress infringement of its Ground Fault Circuit Interrupter ("GFCI") product under section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a). Since June 17, 1986, Leviton has held the '894 patent as the assignee of co-inventors Richard C. Doyle and Lester Rivera. The patent expired on June 17, 2003. Unusual issues are presented in this case because the '894 patent's prosecution history is unavailable; the U.S. Patent and Trademark Office ("USPTO") lost its copy and Leviton's counsel's copy was destroyed in a fire.
The incorporated '945 patent "teaches a remote control system" that includes a "novel flip-flop cam arrangement which enables the making and breaking of a circuit." See '945 patent, Abstract. Similarly, the '338 parent patent teaches a remote control system with a flip-flop cam arrangement. See '338 patent, Abstract. The disclosures and drawings in the '945 and '338 patents are identical. The sole distinction between them is that the '945 patent claims the additional function of being able to close (in addition to the ability to open) an electrical connection. The extent to which the '945 and '338 patents are incorporated into the '894 patent and the consequences of such incorporation are hotly disputed issues in this case.
A further complication in this case arises from the fact that the USPTO issued the '894 patent with an error in claim 1, its only independent claim. The error consisted of an omission of claim language that described the invention's "plunger means." Specifically, claim 1 was issued without the italicized text below:
Switching apparatus for selectively interrupting an electrical connection between input and output conductors or the like, comprising, in combination: a housing; magnetizable plunger means disposed within a portion of said housing for movement between first and second positions; electromagnetic coils means disposed within said housing for moving said plunger means when energized from the first position to the second position '894 patent, col. 6, ll. 49-55. Leviton secured a certificate of correction to the '894 patent on July 12, 1988, but the certificate of correction also contained an error. That is, the certificate of correction inserted the missing text into claim 2 of the '894 patent instead of into claim 1, the claim with the omitted text.2 On December 11, 2001, the USPTO issued a second certificate of correction which inserted the missing text into claim 1 where it belonged. The present action was filed two days later.3
Summary judgment under Fed.R.Civ.P. 56 is appropriate in a patent case as in any other case. Becton Dickinson & Co. v. C.R. Bard, Inc., 922 F.2d 792, 795-96 (Fed.Cir.1990). Pursuant to Fed.R.Civ.P. 56(c), summary judgment is appropriate "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 judgment as a matter of law." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). A fact is material for purposes of summary judgment, if, when applied to the substantive law, it affects the outcome of the litigation. Id. at 248, 106 S.Ct. 2505. Summary judgment is also appropriate when a party "fails to make a showing sufficient to establish the existence of an element essential to that party's case, and on which that party will bear the burden of proof at trial." Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986).4
A party opposing a properly supported motion for summary judgment bears the burden of establishing the existence of a genuine issue of material fact. Anderson, 477 U.S. at 248-49, 106 S.Ct. 2505. "When a motion for summary judgment is made and supported as provided in [Rule 56], 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 affidavit or as otherwise provided in [Rule 56], must set forth specific facts showing that there is a genuine issue for trial." Fed.R.Civ.P. 56(e); see Celotex, 477 U.S. at 324, 106 S.Ct. 2548; Anderson, 477 U.S. at 252, 106 S.Ct. 2505; Shealy v. Winston, 929 F.2d 1009, 1012 (4th Cir.1991). Of course, the facts, as well as justifiable inferences to be drawn therefrom, must be viewed in the light most favorable to the nonmoving party. Matsushita Elec. Indust. Co. v. Zenith Radio Corp., 475 U.S. 574, 587-88, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986). The court, however, has an affirmative obligation to prevent factually unsupported claims and defenses from proceeding to trial. Felty v. Graves-Humphreys Co., 818 F.2d 1126, 1128 (4th Cir.1987).
Leviton brings a cause of action for trademark infringement, alleging that USI markets products that utilize the trade dress and appearance of Leviton's GFCI products. USI seeks summary judgment as to that claim. Having fully considered the parties' contentions, and viewing the evidence in the light most favorable to Leviton, the nonmovant, it is clear that Leviton has made a showing sufficient to establish all the elements of its trade dress claim and therefore USI's motion shall be denied. See Celotex, 477 U.S. at 322, 106 S.Ct. 2548.
Section 43(a) of the Lanham Act creates a cause of action for trade dress infringement. 15 U.S.C. § 1125(a). "Trade dress" is a product's total image and overall appearance. Trade dress may include features such as size, shape, color or color combinations, texture, graphics or particular sales techniques. Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 765 n. 1, 112 S.Ct. 2753, 120 L.Ed.2d 615 (1992).
Leviton alleges trade dress infringement by USI of the "well-known and non-functional appearance and arrangement of its ground fault circuit interrupter line." First. Am. Compl. ¶ 19.5 To prevail on its claim of trade dress infringement, Leviton must establish that: (1) its trade dress is primarily non-functional; (2) the alleged infringement creates a likelihood of confusion; and (3) the trade dress either (a) is inherently distinctive or (b) has acquired secondary meaning. Two Pesos, Inc., 505 U.S. at 769, 112 S.Ct. 2753; Ashley Furniture Indus. v. Sangiacomo N.A., 187 F.3d 363, 368 (4th Cir.1999).6
To avoid summary judgment on the issue of non-functionality, Leviton must project evidence sufficient to prove that: (1) its trade dress is not essential to the "use or purpose of the article" and (2) that its trade dress does not "affect the cost or quality of the article." See Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 850 n. 10, 102 S.Ct. 2182, 72 L.Ed.2d 606 (1982). A feature is functional "if exclusive use of the feature would put competitors at a significant nonreputation-related disadvantage." Tools USA & Equip. Co. v. Champ Frame Straightening Equip., Inc., 87 F.3d 654, 657 (4th Cir.1996) (quoting Qualitex Co. v. Jacobson Prods., 514 U.S. 159, 165, 115 S.Ct. 1300, 131 L.Ed.2d 248 (1995)).
Relying on TrafFix Devices Inc. v. Marketing Displays, Inc., 532 U.S. 23, 121 S.Ct. 1255, 149 L.Ed.2d 164 (2001), USI argues that the existence of the '894 utility patent precludes Leviton from establishing that the appearance...
To continue reading
Request your trial
-
Leviton Mfg. v. Universal Sec. Instruments
...and patent infringement based on U.S. Patent No. 4,595,894 (the "'894 patent"). See Leviton Mfg. Co., Inc. v. Universal Security Instruments, Inc., 304 F.Supp.2d 726 (D.Md.2004) ("Leviton I"). The trade dress claim from Leviton I is essentially identical to the trade dress claim asserted in......
-
Ramsey Group, Inc. v. Egs Intern., Inc.
...all of the information submitted in connection with the ' 728 application was before the examiner. Leviton Mfg. Co. v. Universal Sec. Inc., 304 F.Supp.2d 726, 753 (D.Md.2004). That application disclosed that the '728 patent was originally rejected due to the prior art of the Thomas patent w......
-
Myung GA, Inc. v. Myung GA of Md, Inc.
...769; Ashley Furniture Indus., Inc. v. Sangiacomo N.A. Ltd., 187 F.3d 363, 368 (4th Cir. 1999); Leviton Mfg. Co., Inc. v. Universal Sec. Instruments, Inc., 304 F.Supp.2d 726, 736-38 (D.Md. 2004). Plaintiff alleges that Defendants use its trade dress. Defendants argue that the trade dress inf......
-
CHAPTER 2 - § 2.02
...required standard of proof for inherent distinctiveness. --------Notes:[12] Leviton Mfg. Co. v. Universal Security Instruments, Inc., 304 F.Supp.2d 726 (D. Md. 2004).[13] Id. at 736-37.[14] Id. at 735 n.5.[15] Id. at 738.[16] Fiji Water Company LLC v. Fiji Mineral Water USA, LLC, 2010 U.S. ......