249 F. Supp. 3d 1210
D. Colo.2017Background
- CeramTec developed and patented ZTA ceramic hip components (notably BIOLOX Delta) claiming chromium in a specific molar ratio increases hardness; the ’816 patent (issued 1998) covered those claims and CeramTec practiced at least claim 3 in BIOLOX Delta.
- BIOLOX Delta is pink because of chromium; CeramTec controlled ~95% of the U.S. ceramic hip implant market and marketed chromium’s role in increasing hardness in patents, FDA submissions, marketing, and training over many years.
- C5 (later CoorsTek) entered the market in 2009 with pink (Cerasurf-p, chromium) and white (Cerasurf-w, no chromium) ceramics and was later sued; C5 filed this suit in March 2014 seeking to cancel CeramTec’s pink color registrations and to clear its right to sell its pink product.
- CeramTec sought trade dress/trademark protection for the pink color (supplemental registrations), asserting the color was nonfunctional; C5 challenged functionality of chromium and the color.
- The court found the ’816 patent and CeramTec’s contemporaneous statements constituted strong evidence that chromium is an essential, quality-affecting (functional) component of BIOLOX Delta, and thus the pink color (a natural byproduct of chromium) is functional.
- The court rejected CeramTec’s later scientific reversal (2014 White Paper and other data points) as insufficient to overcome the heavy TrafFix burden and also held CeramTec estopped from denying earlier representations that chromium was functional.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Functionality of chromium/color for trade dress | Chromium is functional (affects quality/hardness); therefore color is functional and not protectable | Chromium/color is non-functional; CeramTec says later data show chromium does not increase hardness | Court: Chromium is functional based on ’816 patent, other patents, and CeramTec’s long-standing representations; color is a natural byproduct and therefore functional |
| Effect of prior patent(s) on trade dress claim | Patent prosecution statements and claims show chromium is essential—bars trade dress | Patent disclosure does not automatically preclude trade dress if color is merely ornamental | Court: Under TrafFix, prior utility patents are strong evidence of functionality; CeramTec failed heavy burden to show non-functionality |
| Separability of color from functional component | C5: color is inseparable from chromium; if chromium functional, color is functional | CeramTec: can distinguish chromium’s functional role from the ornamental pink color | Court: Rejected semantic separation; pink is natural result of functional chromium and cannot be protected as trade dress |
| Estoppel based on prior assertions | C5: CeramTec is estopped from reversing its prior patent/FDA/marketing claims that chromium increased hardness | CeramTec: new data and experiments undermine old positions | Court: Even if later science suggested otherwise, CeramTec is estopped by its earlier claims made while enjoying patent monopoly; prior assertions bind CeramTec |
Key Cases Cited
- TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23 (2001) (utility patents are strong evidence that claimed features are functional; heavy burden on party seeking trade dress)
- Qualitex Co. v. Jacobson Prods. Co., Inc., 514 U.S. 159 (1995) (trade dress/color may be protected unless functional)
- In re Owens-Corning Fiberglas Corp., 774 F.2d 1116 (Fed. Cir. 1985) (color held nonfunctional where it bore no relationship to product quality)
- Disc Golf Ass’n, Inc. v. Champion Discs, Inc., 158 F.3d 1002 (9th Cir. 1998) (estoppel prevents party from contradicting earlier patent assertions of functionality)
- Leatherman Tool Grp., Inc. v. Cooper Indus., Inc., 199 F.3d 1009 (9th Cir. 1999) (court rejects artificial separation of overall appearance from functional elements)