What is the leading Circuit ruling on patent law in 2006, not authored by the Federal Circuit? Fuji Kogyo Co., Ltd. v. Pacific Bay Int’l. (6th Cir. 8/23/2006).The alleged infringement concerned the shape of guides on fishing poles, which after the utility patents expired, were registered as trademarks. The Circuit agreed with the finding after a bench trial that the configuration of the fishing line guides was functional, and so, not protectible under the Lanham Act. It affirmed “based solely on our understanding of patent law,” and the trademarks were cancelled, and the counts for unregistered trade dress were dismissed.Clearly, the 6th Circuit learned from Trafix Devices, where it gave little weight to expired patents that claimed the component later asserted as a trademark. The Supreme Court reversed, stating that a “utility patent is strong evidence” of functionality. 523 U.S. at 29-30. In Fuji Kogyo repeated mention is made, and substantial weight given to, the expired utility patents and to design patents that claim or show “nearly identical” guides. The decsion runs through the best mode, the two-step assessment for literal infringement, intrinsic evidence, and the doctrine of equivalents. (The doctrine of equivalents is alive, at least in the 6th Circuit.)The case turns on evidentiary standards, and the clearly erroneous rule. The parties offered conflicting evidence as to whether the “curved legs” of the guides were an arbitrary choice or a functional feature. The district court sided with functionality, and the 6th Circuit agreed, because that was not clearly erroneous.
While some other commentator can compare all the cases, I had doubts whether all Circuits agree with the 6th Circuit’s fundamental proposition in Fuji Kogyo, that the functionality defense is “a factual determination” and as such, is “reviewed only for clear error.” What earlier was meant when reviewing a district court ruling “that, as a matter of law, Antioch’s trade dress was functional,” in Antioch Co. v. Western Trimming, (6th Cir. 10/20/2003)? Consider too trade dress being “functional as a matter of law,” in Eppendorf-Netheler, Ritter, 289 F.3d 351 (5th Cir. 2002), or that “as a matter of law, that Tie Tech’s product configuration is functional,” in Tie Tech v. Kinedyne, 296 F.3d 778 (9th Cir. 2002), or that applying the “functionality doctrine to a trademark that is …incontestible …is a question of law,” in Wilhelm Pudenz GmbH v. Littlefuse, 177 F.3d 1204 (11th Cir. 1999).
Overall, the Circuit sticks with the leading concepts of patent law, using those as a foil to slice apart the claim for trademark protection.