United States Court of Appeals 

for the Federal Circuit 

__________________________ 

ERBE ELEKTROMEDIZIN GMBH and ERBE USA, 

INC., 

Plaintiffs-Appellants, 

and 

CONMED CORPORATION, 

Plaintiff-Appellee, 

v. 

CANADY TECHNOLOGY LLC, AND DR. JEROME 

CANADY, 

Defendants-Cross Appellants. 

__________________________ 

2008-1425, -1426 

__________________________ 

Appeals from the United States District Court for the 

Western District of Pennsylvania in case no. 05-CV-1674, 

Chief Judge Donetta W. Ambrose. 

__________________________ 

Decided: December 9, 2010 

__________________________ 

PHILIP G. HAMPTON, II, Dickstein Shapiro, LLP, of 

Washington, DC, argued for plaintiffs-appellants. With 
ERBE ELEKTROMEDIZIN v. CANADY TECHNO 2

him on the brief was LAURENCE E. FISHER. Of counsel 

was STEVEN M. WAR. 

JOHN G. POWERS, Hancock & Estabrook, LLP, of Syracuse, New York, argued for plaintiff-appellee. With him 

on the brief was ASHLEY D. HAYES. Of counsel was ERIC 

C. NORDBY. 

TIMOTHY R. DEWITT, 24IP Law Group USA, PLLC, of 

Annapolis, Maryland, argued for defendants-cross appellants. 

__________________________ 

Before RADER, NEWMAN, and PROST, Circuit Judges. 

Opinion for the court filed by Circuit Judge PROST. 

Opinion concurring-in-part, dissenting-in-part filed by 

Circuit Judge NEWMAN. 

PROST, Circuit Judge. 

Appellants ERBE Elektromedizin GmbH and ERBE 

USA, Inc. (collectively, “ERBE”) appeal from a final 

decision of the United States District Court for the Western District of Pennsylvania. Following the parties’ 

various motions for summary judgment, the district court 

granted summary judgment of non-infringement of U.S. 

Patent No. 5,720,745 (“’745 patent”) in favor of CrossAppellants Dr. Jerome Canady and Canady Technology 

LLC (collectively, “Canady”). The court also granted 

summary judgment on ERBE’s trademark and trade 

dress claims in Canady’s favor based on the lack of a 

legally protectable mark. Canady cross-appeals the 

court’s grant of summary judgment on its antitrust counterclaims in favor of ERBE and Plaintiff-Appellee ConMed Corporation (“ConMed”). We affirm. 
3 ERBE ELEKTROMEDIZIN v. CANADY TECHNO

BACKGROUND

This is a patent infringement case involving three 

competitor companies that create argon gas-enhanced 

electrosurgical products for electrosurgery. Argon gasenhanced electrosurgery is typically performed with an 

electrosurgical generator to which various surgical accessories, including endoscopic probes, are attached. The 

generator delivers a high frequency current to the human 

tissue through a stream of argon gas to create uniform 

hemostasis of bleeding tissue, which enhances surgical 

effects by limiting blood loss. Three different patents are 

implicated here. 

ConMed is the owner by assignment of U.S. Patent 

No. 4,781,175 (“’175 patent”), issued in 1988. The ’175 

patent is directed at argon gas-assisted electrosurgical 

products used in argon beam coagulation (“ABC”), where 

the gas molecules move substantially parallel to one 

another long enough to strike the target tissue. It discloses an electrosurgical instrument that aims a directed, 

laminar stream of argon gas. ’175 patent col.8 ll.10–14. 

Dr. Canady is the named inventor of U.S. Patent No. 

5,207,675 (“’675 patent”), issued in 1993, and is Canady 

Technology’s founder, CEO, and partial owner. The ’675 

patent discloses a “surgical tissue coagulator” that includes a “flexible tube” with a handle that is used to 

maneuver the tube within an endoscope for argon gasassisted electrosurgery.1 

ERBE is the owner by assignment of the ’745 patent, 

issued in 1998. The ’745 patent was filed in 1995 as 

Continuation-in-Part Application Serial No. 08/579,879 

 1 The ’675 patent is not directly at issue here, but is 

relevant prior art. 
ERBE ELEKTROMEDIZIN v. CANADY TECHNO 4

(“’879 CIP”) of U.S. Patent Application Serial No. 981,009 

(“’009 application”) from 1992. The ’879 CIP application 

added forty-eight new claims and disclosures of argon gas 

rates and a not directed, non-laminar stream of argon gas. 

The patent examiner issued an Office Action, dated 

March 28, 1997, rejecting nearly all of the pending claims 

as indefinite and obvious in light of the prior art. J.A. 

1068–77. The examiner noted that the Canady ’675 

patent disclosed argon flow rates ranging from 1 to 12 

liters per minute, but did not disclose argon flow rates of 

“less than 1 liter per minute.” J.A. 1073. On June 27, 

1997, in response to that Office Action, the applicants 

filed an amendment to overcome the deficiencies in which 

it argued for the patentability of its pending claims over 

the Canady ’675 patent because of the invention’s claimed 

low gas flow rate. J.A. 1088–99. The examiner then 

issued its notice of allowance of the ’745 patent. The ’745 

patent is directed to electrosurgical systems and methods 

for coagulating biological tissue with a high frequency 

current using argon plasma, i.e., ionized argon gas, 

through flexible endoscopic probes. This is known as 

argon plasma coagulation (“APC”). 

ERBE unsuccessfully tried to register the color blue 

as applied to these “flexible endoscopic probes for use in 

argon plasma coagulation” on the U.S. Patent and 

Trademark Office’s (“PTO’s”) Principal Register. J.A. 

3848–59. Thereafter, in 2002, ERBE did register the color 

blue as applied to the tube portion of the APC probes on 

the PTO Supplemental Register as U.S. Trademark 

Registration No. 2,637,630 (“’630 trademark”). J.A. 3846. 

The patents have been the subject of a variety of litigation since their issuance. First, Dr. Canady sued ERBE 

in the United States District Court for the District of 

Columbia for infringement of the ’675 patent in 1996 
5 ERBE ELEKTROMEDIZIN v. CANADY TECHNO

based on ERBE’s importation of its APC probes. The 

district court held that the accused ERBE APC probes do 

not infringe the ’675 patent because they do not have 

handles. This court affirmed. During the pendency of 

that action, in 2005, Dr. Canady also sued ERBE in the 

United Kingdom (“U.K.”) on its European foreign counterpart to the ’675 patent, European Patent No. 0595967. 

J.A. 2480–97. The U.K. court similarly found no infringement because of the absence of handles in the 

ERBE APC probes and ordered Dr. Canady to pay ERBE’s 

attorneys fees. 

Meanwhile, in 2000, ConMed granted ERBE a nonexclusive license to manufacture products under the ’175 

patent, such as argon gas-enhanced electrosurgical generators and flexible probes, in consideration for specified 

royalty payments. Under this agreement, ERBE also 

received the right to sue for infringement of the ’175 

patent. 

Also in 2000, ConMed filed a lawsuit against ERBE in 

the United States District Court for the Northern District 

of New York, seeking a declaratory judgment that the 

’745 patent was invalid and that ConMed’s ABC probes 

did not infringe the ’745 patent. ERBE answered that the 

asserted patent was valid and infringed. In 2003, upon 

motion for summary judgment by ConMed, the district 

court construed the claims of the ’745 patent and found 

that ConMed’s ABC probes did not infringe. ERBE appealed, but in accordance with a subsequent settlement 

agreement, the district court vacated its summary judgment decision upon remand from this court. Under the 

settlement agreement, ERBE granted ConMed a nonexclusive license allowing ConMed to continue selling its 

ABC probes. 
ERBE ELEKTROMEDIZIN v. CANADY TECHNO 6

In 2005, Dr. Canady contracted with KLS Martin 

GmbH & Co. (“KLS Martin”) to manufacture blue 2.3 mm 

diameter probes (“Canady probes”) with black range 

marking rings along the tip end. In that year, Canady 

also filed a 510(k) application with the U.S. Food and 

Drug Administration (“FDA”) seeking approval to sell the 

Canady probes, which operated with ERBE APC generators to perform APC procedures. After receiving approval, 

Canady Technology began importing and selling the 

accused Canady probes that it identified as substantially 

similar to ERBE APC probes, having the same uses, color, 

and marking rings, to customers of the ERBE APC systems in the United States. In 2006, ERBE filed a complaint with the International Trade Commission (“ITC”), 

which initiated an investigation of Canady Technology 

and KLS Martin. The ITC determined that ERBE did not 

present evidence of direct infringement by Canady customers under the proper construction of the asserted 

claims, and therefore Canady could not have engaged in 

contributory or induced infringement. We affirmed the 

ITC decision in ERBE Elektromedizin GmbH v. International Trade Commission, 566 F.3d 1028 (Fed. Cir. 2009). 

In addition, on December 5, 2005, ERBE and ConMed 

brought the instant action against Dr. Canady and Canady Technology. ERBE and ConMed filed an amended 

complaint alleging, inter alia, contributory infringement 

and infringement by inducement of the ’745 and ’175 

patents based on Canady Technology’s flexible endoscopic 

argon gas-assisted electrosurgical probes. ERBE also 

alleged infringement of ’630 trademark under Section 32 

of the Lanham Act, 15 U.S.C. § 1114, because of the blue 

color on the Canady probes. Based on its purported trade 

dress, consisting of the blue tube with black markings at 

the end, ERBE further asserted a claim for unfair competition in violation of Section 43(a) of the Lanham Act, 15 
7 ERBE ELEKTROMEDIZIN v. CANADY TECHNO

U.S.C. § 1125. Canady denied all of plaintiffs’ claims and 

asserted, inter alia, antitrust counterclaims against 

ERBE and ConMed under Sections 1 and 2 of the 

Sherman Act, 15 U.S.C. §§ 1 and 2. 

The district court held a Markman hearing and construed the ’745 patent’s disputed claim terms, including 

“low flow rate,” which appears in independent claims 1 

and 35 and dependent claim 38 of the ’745 patent. ERBE 

Elektromedizin GmbH v. Canady Tech., LLC, 512 F. 

Supp. 2d 297 (W.D. Pa. 2007) (claim construction order). 

Claim 1 recites that the “gas flows from the source, 

through the tube and exits through the opening at the 

distal end of the tube at a low flow rate of less than about 

1 liter/minute.” ’745 patent col.11 ll.40–43 (emphasis 

added). Claim 35 states that “supplying the inert gas 

from the source of said gas through the tube to the distal 

end opening of said tube with such a low flow rate, that 

gas exiting through said distal end opening is a not directed, non laminar stream but forms an inert gas atmosphere.” Id. col.15 ll.52–57 (emphases added). Dependent 

claim 38 recites, “[t]he method as claimed in claim 35, 

whereby the stream of gas exits through said distal end 

opening with a flow rate of less than about one liter per 

minute.” Id. col.16 ll.21–23 (emphasis added). 

Both parties submitted a single definition for the construction of the disputed term “low flow rate” appearing 

in claims 1 and 35. ERBE proposed “a flow rate that 

causes the gas exiting through the opening at the distal 

end of the flexible tube to be a not directed, non laminar 

stream that forms an inert gas atmosphere.” Canady 

proposed that the term means “much smaller than one 

liter per minute and producing flow velocities less than 19 

km/hour.” After considering the claim language, the 

specification, and the prosecution history, the court 
ERBE ELEKTROMEDIZIN v. CANADY TECHNO 8

construed the disputed claim term “low flow rate” to mean 

“a rate of flow less than about 1 liter/minute and producing flow velocities less than 19 km/hour such that the gas 

exiting through the distal end opening forms a nonlaminar inert gas temperature.” ERBE, 512 F. Supp. 2d 

at 309. As the court explained, in the March 28, 1997 

Office Action, the examiner rejected ERBE’s amended 

claims based on two prior art references, one being Canady’s ’675 patent. J.A. 1073. ERBE responded to that 

action arguing for patentability based on the “low flow 

rate” being less than 1 liter per minute and producing a 

flow velocity of less than 19 m/hr. J.A. 1089. When 

ERBE failed to respond to Canady’s argument that this 

was a prosecution disclaimer, the court determined that 

ERBE indeed distinguished and thus disclaimed the 1 to 

12 liters per minute flow rates disclosed in the prior art to 

obtain the ’745 patent. 

The district court then granted Canady’s motion for 

summary judgment of non-infringement as to the asserted claims of the ’745 patent. Based on the court’s 

construction of the disputed claim term “low flow rate,” 

ERBE could not show direct infringement because ERBE 

failed to present evidence that the accused Canady 2.3 

mm probes exhibited argon flow velocities less than 19 

km/hr. ERBE Electromedizin GmbH v. Canady Tech., 

LLC, 529 F. Supp. 2d 577, 599 (W.D. Pa. 2007) (summary 

judgment opinion).2 In the alternative, the court found 

summary judgment proper as to ERBE’s contributory 

infringement claim because ERBE failed to raise a genuine issue of material fact that the accused Canady probes 

lacked substantial non-infringing uses. The court also 

granted Canady’s motion for summary judgment with 

 2 In this citation, ERBE Elektromedizin GmbH 

was spelled ERBE Electromedizin GmbH. 
9 ERBE ELEKTROMEDIZIN v. CANADY TECHNO

respect to ERBE’s trademark and trade dress claims 

because ERBE failed to establish a genuine issue of 

material fact that the blue color and black markings were 

nonfunctional and the trademark and trade dress acquired secondary meaning. After the court denied Canady’s motion for summary judgment of non-infringement 

of ERBE’s and ConMed’s ’175 patent infringement claims 

and set them for trial before a jury, the parties settled 

and jointly moved to dismiss the claim. 

Finally, the district court granted ERBE’s and ConMed’s motions for summary judgment as to Canady 

Technology’s antitrust counterclaims. The court determined that Canady failed to raise a genuine issue of 

material fact that the instant action was a sham excepting ERBE and ConMed from immunity under the NoerrPennington doctrine. 

The district court denied the parties’ motions for reconsideration and entered final judgment on May 9, 2008. 

ERBE timely appeals and Canady Technology crossappeals. We have jurisdiction over these consolidated 

appeals pursuant to 28 U.S.C. § 1295(a)(1). 

DISCUSSION

On appeal, ERBE challenges the court’s construction 

of certain disputed claim terms and subsequent grant of 

summary judgment of non-infringement as to the asserted claims of the ’745 patent. ERBE also objects to the 

court’s grant of summary judgment as to its ’630 trademark and trade dress claims. In its cross-appeal, Canady 

Technology contests the court’s grant of summary judgment as to its antitrust counterclaims against ERBE and 

ConMed. We address each challenge in turn. 
ERBE ELEKTROMEDIZIN v. CANADY TECHNO 10

I 

We first address ERBE’s challenge to the court’s construction of certain disputed claim terms in the ’745 

patent and subsequent finding of non-infringement. 

As a preliminary matter, Canady asserts that ERBE 

waived its right to challenge the district court’s grant of 

summary judgment of non-infringement because ERBE 

did not contest the court’s alternative holding that the 

accused products have substantial non-infringing uses. 

The problem with Canady’s waiver argument, however, is 

that the district court’s alternative holding only implicates the contributory infringement claim, which requires 

a successful plaintiff to prove that the accused product 

has no substantial non-infringing uses. See 35 U.S.C. 

§ 271(c). No such requirement, however, exists for induced infringement. See id. § 271(b). Therefore, ERBE 

did not have to challenge the court’s alternative ground to 

avoid waiving its right to appeal the court’s judgment of 

non-infringement with regard to its inducement of infringement claim. 

Turning to the merits of the ’745 patent infringement 

claim, on appeal ERBE takes issue with the court’s construction of the disputed claim term “low flow rate” arguing that it violates several canons of claim construction. 

Specifically, ERBE submits that by construing “low flow 

rate” to mean “a rate of flow less than 1 liter/minute and 

producing flow velocities less than 19 km/hr such that the 

gas exiting through the distal end opening forms a nonlaminar inert gas temperature,” the court failed to give 

the term its ordinary and customary meaning, ignored the 

doctrine of claim differentiation, assumed disclaimers, 

and erroneously imported quantitative limitations. 

Canady responds that the court properly construed this 
11 ERBE ELEKTROMEDIZIN v. CANADY TECHNO

claim term in light of the intrinsic evidence, namely the 

claim language, the patent specification, and the prosecution history. We agree with Canady. 

Claim construction is a question of law that is reviewed de novo. Ortho-McNeil Pharm., Inc. v. Caraco 

Pharm. Labs., Ltd., 476 F.3d 1321, 1326 (Fed. Cir. 2007). 

We begin our claim construction analysis with the words 

of the claim. Phillips v. AWH Corp., 415 F.3d 1303, 1312 

(Fed. Cir. 2005) (en banc). Claim terms are generally 

construed in accordance with the ordinary and customary 

meaning they would have to one of ordinary skill in the 

art. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 

1582 (Fed. Cir. 1996). “[T]he person of ordinary skill in 

the art is deemed to read the claim term not only in the 

context of the particular claim in which the disputed term 

appears, but in the context of the entire patent, including 

the specification.” Phillips, 415 F.3d at 1313. In addition 

to considering the specification, courts should consider the 

relevant prosecution history of an asserted patent. Id. at 

1317. “[T]he prosecution history can often inform the 

meaning of the claim language by demonstrating how the 

inventor understood the invention and whether the inventor limited the invention in the course of the prosecution, 

making the claim scope narrower than it would otherwise 

be.” Id. Mindful of these principles, we turn to the disputed claim term “low flow rate.” 

We begin with the claim language. Notably, though 

both claims 1 and 35 contain the term “low flow rate,” 

claim 1 describes it as being “less than about 1 liter/minute,” ’745 patent col.11 ll.42–43, while claim 35 

explains it is “a not directed, non laminar stream.” Id.

col.16 ll.14. In their Markman briefs, however, the parties submitted one, albeit different, definition for “low 

flow rate.” The specification explains that directed gas 
ERBE ELEKTROMEDIZIN v. CANADY TECHNO 12

flow could injure the patient. The invention sought to 

overcome this problem by disclosing and claiming low 

argon gas flows that produce a low, not directed, nonlaminar stream of gas exiting the tube. The specification 

further provides an exemplary flow rate of about less than 

1 liter per minute. 

ERBE asserts that the specification’s exemplary flow 

rates are not quantitative limitations and cannot be 

imported into the claims because the specification uses a 

clear qualitative description for the term “low flow rate.” 

ERBE similarly contends that the court’s construction 

erroneously imports a “19 km/hr” limitation from the 

prosecution history into claims 1 and 35. According to 

ERBE, the prosecution history here does not limit the 

invention because there is no express disclaimer. In the 

alternative, ERBE argues that any disclaimer during 

prosecution was only qualitative and related to high flow 

rates. For support, ERBE directs this court to the specification’s explanation of the ’175 prior art reference where 

the laminar jet can be directed to the tissue to be coagulated with a gas flow rate “sufficient to clear natural 

fluids from the tissue.” Id. col.6 ll.26–31. 

We reject ERBE’s arguments based on the language of 

claim 1, the specification, and the prosecution history. 

The inventors distinguished its low flow rate from the 

Canady ’675 patent prior art reference in order to obtain 

its invention. Specifically, the patent examiner issued a 

March 28, 1997 Office Action rejecting the pending claims 

as obvious in light of Canady’s endoscopes “disclos[ing] 

the use of very low flow rates (i.e. about 1 liter per minute) . . . [where t]he specific flow rate may be adjusted 

from 1-12 liters per minute . . . [but not] less than 1 liter 

per min.” J.A. 1073. On June 27, 1997, patent applicants 

responded to that Office Action describing the invention’s 
13 ERBE ELEKTROMEDIZIN v. CANADY TECHNO

“low gas flow rate, which allows the area of the tissue 

being treated to be surrounded by the plasma atmosphere.” J.A. 1088. Applicants explained that the claimed 

flow rate avoids the production of laminar jets to prevent 

patient injuries. J.A. 1089. Specifically, they stated: 

This flow rate avoids the production of laminar 

jets of ionized gas directed with high impact onto 

the tissue. The problems of laminar jets are to be 

avoided, since the ionized gas can enter the bloodstream and have toxic effects on the patient. According to Canady [the ’675 patent], column 4 

lines 3-5, a flow rate of 1 to 12 litres per minute is 

foreseen there. Taking the outer diameter of the 

tube to be 3 mm (column 2, line 68) would lead to 

an inner diameter of the tube of about 2 mm. This 

corresponds to a cross-section of 3.14 mm. A flow 

rate of 1 litre per minute leads to a flow velocity of 

19 m/h. Taking the higher value of 12 litres per 

minute gives an outlet gas speed of 229 km/h. 

Such velocities in Canady would certainly be classified as laminar jets and would likely lead to the 

above problems. 

Id. (footnote omitted) (emphasis added). After the inventors distinguished the flow rates of 1 to 12 liters per 

minute disclosed in the Canady ’675 patent—whose 

disclosed tubes produced flow rates of 1 to 12 liters per 

minute leading to laminar jet gas flow velocities of 19 m/h 

to 229 km/h—the examiner issued its notice of allowance 

of the amended claims in the application. 

We do not agree with ERBE that “such velocities” referred to the “229 km/h” alone. Oral Argument 6:04-37, 

http://oralarguments.cafc.uscourts.gov/mp3/2010-

1425.mp3. As Canady’s counsel explained, such a reading 
ERBE ELEKTROMEDIZIN v. CANADY TECHNO 14

is illogical. The examiner had rejected the pending claims 

with a low flow rate in light of the prior art until the 

applicants distinguished their invention. The examiner 

would not have allowed an otherwise unpatentable invention based on the higher of the two numbers in the range 

set forth in the prior art. Rather, the prosecution history 

clearly and unambiguously demonstrates that the applicants unequivocally disclaimed flow rates from 1 to 12 

liters per minute that lead to “such velocities” of 19 

through 229 km/h disclosed in the ‘675 patent prior art 

reference, referred to by applicants as laminar jets. 

Accordingly, as the district court concluded, the claimed 

flow rates were limited to less than 1 liter per minute and 

produced velocities less than 19 km/hr, which avoided the 

production of laminar jets and produced only nonlaminar, inert gas atmospheres. 

Further, we are not persuaded by ERBE’s argument 

that the district court’s construction improperly reads the 

narrow quantitative claim limitation of dependent claim 

38 into broader claim 35, resulting in the two claims 

having the same scope in violation of the canon of claim 

differentiation. ERBE’s argument that the court’s construction improperly renders the express limitation “less 

than about 1 liter/minute” in claims 1 and 38 mere surplusage is also unavailing. 

Generally, “[a]ll the limitations of a claim must be 

considered meaningful.” Unique Concepts, Inc. v. Brown, 

939 F.2d 1558, 1562 (Fed. Cir. 1991) (citing Perkin-Elmer 

Corp. v. Westinghouse Elec. Corp., 822 F.2d 1528, 1532–33 

(Fed. Cir. 1987)). However, “no canon of [claim] construction is absolute in its application.” Renishaw PLC v. 

Marposs Societa’ Per Azioni, 158 F.3d 1243, 1248 (Fed. 

Cir. 1998). Claim differentiation may be helpful in some 

cases, but it is just one of many tools used by courts in the 
15 ERBE ELEKTROMEDIZIN v. CANADY TECHNO

analysis of claim terms. See, e.g., Nystrom v. Trex Co., 

Inc., 424 F.3d 1136, 1142–43 (Fed. Cir. 2005). Similarly, 

surplusage may exist in some claims. See, e.g., Pickholtz 

v. Rainbow Tech., Inc., 284 F.3d 1365, 1373 (Fed. Cir. 

2002). As we have stated, “[a]ll rules of construction must 

be understood in terms of the factual situations that 

produced them, and applied in fidelity to their origins.” 

Modine Mfg. Co. v. U.S. Int’l Trade Comm., 75 F.3d 1545, 

1551 (Fed. Cir. 1996). 

We thus reject ERBE’s arguments with respect to 

“claim differentiation” and “surplusage.” In this case, the 

prosecution history establishes that the Canady prior art 

patent was distinguished based on this “low flow rate” 

limitation and thus this term as it appears in the asserted 

claims is limited. See PODS, Inc. v. Porta Stor, Inc., 484 

F.3d 1359, 1366–67 (Fed. Cir. 2007) (concluding arguments distinguishing the prior art patent suggested 

meaning of disputed claim terms when applying Southwall Technologies, Inc. v. Cardinal IG Co., 54 F.3d 1570, 

1579 (Fed. Cir. 1995)); Southwall Techs., 54 F.3d at 1579 

(“[A]rguments made during prosecution regarding the 

meaning of a claim term are relevant to the interpretation 

of that term in every claim of the patent absent a clear 

indication to the contrary.”). Because the inventors 

clearly and unambiguously disclaimed such flow rates 

that produced laminar jets and limited the claims to flow 

velocities less than 19 km/hr to overcome unpatentability, 

we agree with the district court’s claim construction with 

respect to “low flow rate.” 

We review “a district court’s grant of summary judgment without deference.” Perricone v. Medicis Pharm. 

Corp., 432 F.3d 1368, 1372 (Fed. Cir. 2005). Summary 

judgment is proper if the record shows that there is no 

genuine issue of material fact, drawing all reasonable 
ERBE ELEKTROMEDIZIN v. CANADY TECHNO 16

inferences in favor of the nonmovant. Fed. R. Civ. P. 

56(c)(2); see Geneva Pharms., Inc. v. GlaxoSmithKline 

PLC, 349 F.3d 1373, 1377 (Fed. Cir. 2003). The district 

court determined that ERBE failed to present evidence of 

direct infringement under the court’s construction of “low 

flow rate.” ERBE does not contest that it failed to present 

evidence that the accused 2.3 mm Canady probes exhibit 

velocities less than 19 km/hr. Because we affirm the 

district court’s construction of “low flow rate” and there is 

no evidence that the accused probes infringe the asserted 

claims in the ’745 patent, we also affirm the court’s judgment of non-infringement.3 

II 

We next address ERBE’s challenge to the district 

court’s grant of summary judgment as to its trademark 

and trade dress claims based on the court’s determination 

that the color blue is functional and has not acquired the 

requisite secondary meaning. When reviewing Lanham 

Act claims, we look to the law of the regional circuit 

where the district court sits, here the Third Circuit. See

Tone Bros., Inc. v. Sysco Corp., 28 F.3d 1192, 1200 (Fed. 

Cir. 1994). Our review of a district court’s grant of summary judgment that a trademark and trade dress is not 

infringed is plenary. See id. at 1196. We review the 

evidence in the light most favorable to the non-moving 

party. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255 

(1986). Federal Rule of Civil Procedure 56(c) requires the 

nonmoving party to adduce more than a mere scintilla of 

evidence in its favor, id. at 252, and that party cannot 

simply reassert factually unsupported allegations con-

 3 In light of our conclusion on the construction of 

“low flow rate,” we need not reach ERBE’s challenge to 

the construction of other claim terms. 
17 ERBE ELEKTROMEDIZIN v. CANADY TECHNO

tained in its pleadings, see Celotex Corp. v. Catrett, 477 

U.S. 317, 323–24 (1986). 

The Third Circuit analyzes federal trademark infringement and federal unfair competition under identical 

standards. A & H Sportswear, Inc. v. Victoria's Secret 

Stores, Inc., 237 F.3d 198, 210 (3d Cir. 2000). To prove 

either Lanham Act violation, “a plaintiff must demonstrate that (1) it has a valid and legally protectable mark; 

(2) it owns the mark; and (3) the defendant’s use of the 

mark to identify goods or services causes a likelihood of 

confusion.” Id. A mark is afforded trademark protection 

if it is descriptive and has acquired secondary meaning. 

E.T. Browne Drug Co. v. Cococare Prods., Inc., 538 F.3d 

185, 191 (3d Cir. 2008). 

In this case, the examiner determined that ERBE 

could not register the color blue on its APC probes on the 

Principal Register because the color blue was ornamental 

and ERBE failed to show evidence of secondary meaning, 

whether competitors used the color for its products, and 

whether the color was functional. J.A. 3848–59. Thereafter, ERBE registered the mark on the Supplemental 

Register. J.A. 3846. 

Federal registration on the Principal Register provides a presumption of the mark’s validity. 15 U.S.C. 

§§ 1057(b), 1115(a). Registration of a mark on the Supplemental Register, however, does not. 15 U.S.C. § 1094. 

As § 1094 explains, marks registered on the Supplemental 

Register do not receive the advantages of §§ 1057(b) and 

1115(a). Since the ’630 trademark is on the Supplemental 

Register, and not the Principal Register, the parties agree 

that, under the authoritative statutory language and 

Third Circuit case law, ERBE bears the burden of proving 

that it owns a valid mark. See 15 U.S.C. § 1094; E.T. 
ERBE ELEKTROMEDIZIN v. CANADY TECHNO 18

Browne Drug Co., 538 F.3d at 191 (explaining that the 

party seeking enforcement of trademark laws has the 

burden of proving the existence of a protectable trademark when the mark does not appear on the PTO’s Principal Register); Def./Cross-Appellant Br. 34; Appellant 

Reply Br. 54. 

On appeal, ERBE argues that the court improperly 

granted summary judgment on its trademark and trade 

dress claims because it misapplied the proper case law 

and failed to consider the evidence in the light most 

favorable to ERBE, the non-moving party. Specifically, 

ERBE contends that it proffered evidence that raises a 

genuine issue of material fact that the color blue is not 

functional for APC probes and that it has acquired secondary meaning. Canady responds that ERBE’s conclusory 

and unsupported allegations do not preclude summary 

judgment in this case, where the uncontroverted evidence 

demonstrates that the color blue is functional and lacks 

secondary meaning. 

To survive summary judgment here, ERBE would 

have to establish a genuine issue of material fact that 

both the color blue is non-functional and has acquired 

secondary meaning. See, e.g., Qualitex Co. v. Jacobson 

Prods. Co., 514 U.S. 159, 166–67 (1995); L.D. Kichler Co., 

v. Davoil, Inc., 192 F.3d 1349, 1352 (Fed. Cir. 1999); 

Duraco Prods., Inc. v. Joy Plastic Enters., Ltd., 40 F.3d 

1431, 1445 (3d Cir. 1994). It fails to do either. 

We first look to functionality. A mark is functional if 

it “‘is essential to the use or purpose of the article or if it 

affects the cost or quality of the article, that is,’ if exclusive use of the feature would put competitors at a significant non-reputation-related disadvantage.” L.D. Kichler 

Co., 192 F.3d at 1352 (quoting Qualitex, 514 U.S. at 165). 
19 ERBE ELEKTROMEDIZIN v. CANADY TECHNO

Some factors courts use to determine functionality include 

whether the design yields a utilitarian advantage, alternative designs are available in order to avoid hindering 

competition, and the design achieves economies in manufacture or use. See, e.g., In re Owens-Corning Fiberglas 

Corp., 774 F.2d 1116, 1121 (Fed. Cir. 1985). 

Color may not be granted trademark protection if the 

color performs a utilitarian function in connection with 

the goods it identifies or there are specific competitive 

advantages for use. Brunswick Corp. v. British Seagull 

Ltd., 35 F.3d 1527, 1530–33 (Fed. Cir. 1994), cert. denied, 

514 U.S. 1050 (1995) (color black for outboard engines 

was functional and could not be protected where black 

offered the advantage of being compatible with a wider 

variety of boat colors); Keene Corp. v. Paraflex Indus., 

Inc., 653 F.2d 822, 824 (3d Cir. 1981). However, “[m]ere 

taste or preference cannot render a color—unless it is ‘the 

best, or at least one, of a few superior designs’—de jure

functional.” L.D. Kichler Co., 192 F.3d at 1353; see

Brunswick Corp., 35 F.3d at 1531 (explaining that de jure 

functional features, which rest on utility and the foundation of effective competition, are not entitled to trademark 

protection). The Third Circuit has explained that the 

policy behind the functionality doctrine invokes the 

inquiry of whether prohibiting the mark’s imitation by 

others will deprive those others of something that will 

substantially hinder them in competition. Keene, 653 

F.3d at 827. As a result, the existence of other, equally 

usable colors is relevant to determine whether a particular color is functional. Qualitex, 514 U.S. at 166. 

ERBE asserts that there is a genuine issue of material fact whether the color blue is functional because the 

evidence demonstrates that blue is not uniquely superior 

for APC probes, has no competitive advantage because it 
ERBE ELEKTROMEDIZIN v. CANADY TECHNO 20

is not essential to the use or purpose of the APC probes, 

does not have an aesthetic function, and that many other 

colors are equally visible against human tissue and are 

available for selection. For support, ERBE offers the 

declaration of Managing Director Christian Erbe. In this 

declaration, Mr. Erbe explained that “[b]lue is one of the 

many colors available for APC probes. Any color, other 

than beige or red, would be clearly visible during endoscopic procedures.” J.A. 4938. 

We reject ERBE’s argument that the district court 

misapplied Keene. In Keene, the Third Circuit explained 

that the “functionality doctrine stems from the public 

interest in enhancing competition” and avoiding improper 

hindrance of competition in the marketplace. 653 F.2d at 

827. ERBE fails to present a genuine issue of material 

fact that the color blue does not make the probe more 

visible through an endoscopic camera or that such a color 

mark would not lead to anti-competitive effects. Cf. In re 

Owens-Corning Fiberglas Corp., 774 F.2d at 1122 (holding 

that the color pink for fiber glass insulation was not 

functional because it did “not deprive competitors of any 

reasonable right or competitive need”). The evidence in 

the record is that the color blue is prevalent in the medical field, the blue color enhances identification of the 

endoscopic tip, and several companies use blue endoscope 

probes. See, e.g., J.A. 3876 (Biosearch Medical Products 

Inc. advertisement explaining that “[b]lue color enhances 

positive Endoscopic identification of the tip.”). There is no 

evidentiary support that other colors are as visible 

through an endoscopic camera as the color blue other 

than a conclusory, self-serving statement by Mr. Erbe. 

Because the record evidence demonstrates that appropriation by ERBE alone would place others at a competitive disadvantage, we conclude that the district court 
21 ERBE ELEKTROMEDIZIN v. CANADY TECHNO

properly found that there is no genuine issue of material 

fact that the color blue is functional. 

Moreover, even if the color blue is non-functional, we 

would still affirm the district court’s grant of summary 

judgment because ERBE fails to present a genuine issue 

of material fact that there is secondary meaning for the 

mark. A manufacturer may obtain trademark protection 

for a color mark where it acts as a symbol that distinguishes a firm’s goods and identifies its source. Qualitex, 

514 U.S. at 166. In considering whether there is secondary meaning, in that there is an association formed in 

the minds of the consumers between the mark and the 

source or origin of the product, the Third Circuit looks to 

the following non-exhaustive list of factors: 

(1) the extent of sales and advertising leading to 

buyer association; (2) length of use; (3) exclusivity 

of use; (4) the fact of copying; (5) customer surveys; (6) customer testimony; (7) the use of the 

mark in trade journals; (8) the size of the company; (9) the number of sales; (10) the number of 

customers; and (11) actual confusion. 

E.T. Browne Drug Co., 538 F.3d at 199 (quoting Commerce Nat’l Ins. Servs., Inc. v. Commerce Ins. Agency, Inc., 

214 F.3d 432, 438 (3d. Cir. 2000)). 

On appeal, ERBE argues that the district court did 

not properly consider evidence that ERBE’s trademark 

has secondary meaning. Specifically, ERBE directs us to 

Mr. Erbe’s declaration for support that ERBE used this 

particular blue on its APC probes for several years in 

marketing materials, on giveaways at tradeshows, and 

ERBE advertised its slogan, “True Blue Probe for Argon 

Plasma Coagulation.” J.A. 4938–39. Canady responds, 
ERBE ELEKTROMEDIZIN v. CANADY TECHNO 22

and the district court agreed, “that while ERBE may have 

been using the color blue for over 30 years, there is no 

evidence that, in the minds of the public, the primary 

significance of the color blue is to identify ERBE as the 

source of the product.” ERBE, 529 F. Supp. 2d at 603. 

ERBE does not offer any evidence—such as sales and 

advertising leading to buyer association, customer surveys, customer testimony, the number of sales, the number of customers, the use of the mark in trade journals, or 

actual confusion—that creates a genuine issue of material 

fact with regard to whether the color blue on its flexible 

endoscopic probes has secondary meaning. E.T. Browne 

Drug Co., 538 F.3d at 199. Indeed, ERBE failed to present any evidence that consumers associate the color blue 

on its flexible endoscopic probes with ERBE.4 Viewing all 

of the evidence in the light most favorable to ERBE, 

 4 Further, as Canady argues, ERBE’s only competitor, ConMed, has been using blue on its probes since 

January 2002. ERBE acknowledged that ConMed uses 

blue flexible endoscopic probes during the prosecution of 

the ’630 trademark. J.A. 3862. There, ERBE noted that 

there was a pending lawsuit in the Northern District of 

New York against ConMed for “selling similar looking 

tubes as part of its flexible endoscopic probes for use in 

argon plasma coagulation, in apparent infringement of 

the ’745 patent.” Id. ERBE, however, admits that the 

’745 patent “does not disclose or claim the color blue for 

the tube portions of the probes.” Id. ERBE does not 

demonstrate that the lawsuit in the Northern District of 

New York involved trademark or trade dress claims, or 

that the resulting settlement licensed this color blue to 

ConMed. ERBE also fails to present evidence that it 

licensed the ’630 trademark to ConMed. Rather, the 

record evidence shows that at least one of ERBE’s competitors, ConMed, uses blue flexible endoscopic probes for 

use in argon plasma coagulation and thus ERBE does not 

maintain exclusive use. E.T. Browne Drug Co., 538 F.3d 

at 199. 
23 ERBE ELEKTROMEDIZIN v. CANADY TECHNO

ERBE fails to establish a genuine issue of material fact 

with respect to secondary meaning.5 Accordingly, we 

affirm the district court’s grant of summary judgment as 

to ERBE’s trademark infringement claims. 

On appeal, ERBE generally refers to its “trade dress” 

claims, which includes the color blue of the APC probe 

with black rings at the end of the tube. It is undisputed 

that ERBE’s purported trade dress is not registered. The 

district court granted summary judgment on these claims 

because ERBE failed to present any argument that the 

black rings at the end of the probe were non-functional. 

ERBE similarly fails to present any evidence relating to 

its trade dress claims on appeal. We, therefore, also 

affirm the district court’s grant of summary judgment as 

to ERBE’s trade dress claims. 

III 

We now turn to Canady Technology’s cross-appeal. 

The issue is whether the district court properly granted 

summary judgment on Canady Technology’s antitrust 

counterclaims in favor of ERBE and ConMed. Generally, 

when reviewing a district court’s judgment involving 

federal antitrust law, we apply the law of the regional 

circuit in which that court sits. See C.S.U., L.L.C. v. 

Xerox Corp., 203 F.3d 1322, 1325 (Fed. Cir. 2000). How-

 5 The dissent does not identify any evidence that 

ERBE presents relating to the required association 

formed in the minds of consumers between the mark and 

the source or origin of the product. The dissent further 

ignores the evidence demonstrating that at least one of 

ERBE’s competitors uses blue flexible endoscopic 

probes—and thus the requisite secondary meaning is 

missing here. 
ERBE ELEKTROMEDIZIN v. CANADY TECHNO 24

ever, we apply our own law when resolving issues that 

involve our exclusive jurisdiction. Id. 

Canady Technology first argues that the district court 

applied the wrong standard for determining whether the 

Noerr-Pennington doctrine immunizes ERBE and ConMed 

from antitrust liability. The Noerr-Pennington doctrine 

generally immunizes a party from antitrust liability based 

on its filing of a lawsuit unless the narrow “sham litigation” exception applies. See Prof’l Real Estate Investors, 

Inc. v. Columbia Pictures Indus., Inc. (“PRE”), 508 U.S. 

49, 56 (1998). In PRE, the Supreme Court explained that 

sham litigation is present where the lawsuit is objectively 

baseless and subjectively motivated by a desire to impose 

anticompetitive harm from the judicial process rather 

than obtain judicial relief. 508 U.S. at 60–61; Nobelpharma AB v. Implant Innovations, Inc., 141 F.3d 1059, 

1071 (Fed. Cir. 1998). Because PRE, however, only looks 

to whether a single lawsuit is a sham, two circuit courts 

have applied a different standard where there is a “whole 

series of legal proceedings.” Primetime 24 Joint Venture 

v. Nat’l Broad. Co., Inc., 219 F.3d 92 (2d Cir. 2000); USSPOSCO Indus. v. Contra Costa Cnty. Bldg. & Const. 

Trades Council, AFL-CIO, 31 F.3d 800 (9th Cir. 1994). 

The dispute here is whether we should consider just 

the instant action or all prior litigation in determining 

whether the sham litigation exception applies to the 

Noerr-Pennington immunity doctrine. This dispute 

implicates two different lines of cases. Canady Technology urges us to follow the Ninth-Second Circuit precedent 

here because ERBE and ConMed have filed multiple 

lawsuits. On these particular facts, however, we need not 

determine whether to adopt the test of our sister courts 

because there is no “series” of legal proceedings. The 

other proceedings Canady Technology directs us to are 
25 ERBE ELEKTROMEDIZIN v. CANADY TECHNO

against Dr. Canady, as an individual, who is admittedly 

not asserting the antitrust counterclaims with Canady 

Technology. 

In Amarell v. Connell, 102 F.3d 1494, 1519–20 (9th 

Cir. 1997), the Ninth Circuit held that only two lawsuits 

is not a “series” or “pattern” of litigation implicating the 

standard in USS-POSCO for “a whole series of legal 

proceedings.” In this case, the three relevant lawsuits 

ERBE filed to which Canady Technology directs our 

attention are not “simultaneous and voluminous” and do 

not implicate a test for “a whole series of legal proceedings.” Cf. Primetime 24, 219 F.3d at 101; USS-POSCO, 

31 F.3d at 811. Therefore, like the district court, we 

analyze Canady Technology’s antitrust counterclaims 

under the PRE sham litigation exception to the NoerrPennington immunity doctrine. 

At oral argument, Canady’s counsel conceded that if 

we analyze its antitrust counterclaims under PRE, summary judgment with respect to ConMed is appropriate. 

Oral Argument 24:11-32, 

http://oralarguments.cafc.uscourts.gov/mp3/2010-

1425.mp3. So we are left now with only resolving Canady 

Technology’s antitrust counterclaims relating to ERBE. 

To prove that the instant action is a sham and the 

plaintiff is not entitled to immunity, the suit must be 

“both objectively baseless and subjectively motivated by a 

desire to impose collateral, anti-competitive injury rather 

than to obtain a justifiable legal remedy.” Nobelpharma, 

141 F.3d at 1071 (citing PRE, 508 U.S. at 60–61). We 

first look to whether the plaintiff had probable cause to 

institute the action. The existence of probable cause—

e.g., where the law is unsettled, the action is arguably 

warranted by existing law, or there is an objectively good 
ERBE ELEKTROMEDIZIN v. CANADY TECHNO 26

faith argument for extending existing law—precludes a 

sham litigation finding. PRE, 508 U.S. at 62, 65. We 

shall only reach the litigant’s subjective motivation if the 

challenged litigation is objectively meritless. Id. at 60. 

Canady Technology argues that it has presented a 

genuine issue of material fact that ERBE’s patent infringement, trademark, and trade dress claims were 

objectively baseless and warrant an exception to the 

Noerr-Pennington immunity doctrine. Specifically, Canady Technology argues that no reasonable person could 

have expected success on these claims. We disagree. 

The record demonstrates that ERBE had probable 

cause to bring this patent enforcement litigation. As 

evident from our claim construction analysis in Section I, 

supra, Canady Technology fails to present a genuine issue 

of material fact that ERBE’s ’745 patent infringement 

claim was so objectively “baseless that no reasonable 

litigant could realistically expect to secure favorable 

relief.” Carroll Touch, Inc. v. Electro Mech. Sys., Inc., 15 

F.3d 1573, 1583 (Fed. Cir. 1993) (quoting PRE, 508 U.S. 

at 62)). Although ERBE’s arguments were not winning 

ones, our analysis demonstrates that ERBE presented 

non-frivolous arguments for its proposed construction of 

the disputed claim term “low flow rate.” Merely because 

our construction of this term is the same as that of the 

vacated decision of the Northern District of New York, 

this does not create a genuine issue of material fact that 

ERBE’s instant suit was objectively baseless. Therefore, 

the “sham litigation” exception to the Noerr-Pennington

doctrine is not warranted here. 

Canady Technology also argues that the district court 

improperly failed to consider whether ERBE’s alleged 

predatory acts other than sham litigation violated anti-
27 ERBE ELEKTROMEDIZIN v. CANADY TECHNO

trust law. The other alleged predatory acts include 

interfering with and inhibiting the development and 

marketing of dual mode argon probes, and interfering 

with Canady Technology’s contracts and business expectations. Canady Technology blames ERBE for its failure 

to present any genuine issue of material fact with respect 

to these allegations. Specifically, Canady Technology 

contends that “ERBE elected to forego the discovery 

process rather than using it to more clearly define the 

issues and evidence.” Def./Cross-Appellant Br. 41. Canady Technology, however, has it backwards. It is Canady Technology, and not ERBE, who bears the burden of 

seeking discovery on its antitrust claims and establishing 

some genuine issue of material fact as to the other predatory acts it argues the district court ignored. Canady 

Technology failed to do either. 

Sections 1 and 2 of the Sherman Act protect against 

unreasonable restraints of trade and monopolization of 

trade or commerce. 15 U.S.C. §§ 1, 2. To survive summary judgment, plaintiff must show, inter alia, illegal 

action and antitrust injury. Canady Technology fails to 

show that ERBE engaged in illegal activity resulting in 

prohibited antitrust injury. Rather, Canady Technology 

concedes that the warranties ERBE purportedly would 

“void” or “not honor” had already expired. On this record, 

we conclude that ERBE fails to establish a genuine issue 

of material fact that ERBE engaged in predatory acts in 

violation of antitrust law that preclude summary judgment. Therefore, we affirm the district court’s grant of 

summary judgment on Canady Technology’s antitrust 

counterclaims. 

CONCLUSION

For the reasons set forth above, we affirm the district 
ERBE ELEKTROMEDIZIN v. CANADY TECHNO 28

court’s grant of summary judgment of non-infringement 

as to ERBE’s ’745 patent infringement claim, and summary judgment of ERBE’s ’630 trademark and trade dress 

claims based on functionality and lack of secondary 

meaning. We also affirm the district court’s grant of 

summary judgment of Canady Technology’s antitrust 

counterclaims. 

AFFIRMED
United States Court of Appeals 

for the Federal Circuit 

__________________________ 

ERBE ELEKTROMEDIZIN GMBH AND ERBE USA, 

INC., 

Plaintiffs-Appellants, 

and 

CONMED CORPORATION, 

Plaintiff-Appellee, 

v. 

CANADY TECHNOLOGY LLC, AND DR. JEROME 

CANADY, 

Defendants-Cross Appellants. 

__________________________ 

2008-1425,-1426 

__________________________ 

Appeals from the United States District Court for the 

Western District of Pennsylvania in Case No. 05-CV-1674, 

Chief Judge Donetta W. Ambrose. 

__________________________ 

NEWMAN, Circuit Judge, concurring in part, dissenting in 

part. 

I respectfully dissent from the grant of summary judgment whereby the court holds, summarily, that there can be 

neither patent nor trademark nor trade dress infringement 
ERBE ELEKTROMEDIZIN v. CANADY TECHNO 2

of ERBE’s proprietary rights. I write separately with respect particularly to the trademark and trade dress issues, 

for the court has departed from established law and precedent. Canady does not dispute that it copied the blue color 

and the particular shade of blue of the ERBE probe; that is, 

that it copied the trade dress. The public interest in avoidance of deception or confusion looms particularly large in 

the medical/surgical field, where the surgeon’s experience of 

quality and performance, on recognition of the surgical 

device by its unique color, is a matter of public concern. 

Common law property rights are of practical significance, and their sustenance is as much a judicial responsibility as are statutory rights. This court’s cursory 

authorization to a competitor to copy the distinctive color of 

this surgical probe, despite the evidence of likelihood of 

confusion as to the source and identity of the probe, is surely 

not subject to summary disposition in favor of the copier. 

ERBE suggests that there is deception and free-riding, for it 

was not disputed that the blue probes with black markings, 

manufactured by KLS Martin GmbH & Co. and imported by 

Canady for use with the ERBE equipment, are intended to 

mirror the blue color and black markings of the ERBE 

probes. Canady represented to the FDA that its imported 

probes are “the same as” the ERBE probes, and obtained 

expedited FDA approval based on that representation. 

Indeed, Canady’s probes are compatible only with ERBE’s 

electrosurgical equipment. 

The district court held, on summary judgment, that the 

blue color is “functional.” However, ERBE established at 

least a genuine issue as to this question. Registration of the 

blue color for these products on the Supplemental Register 

required the applicant to show that the color is not functional. Trademark Manual of Examining Procedure 

§1202.05(b) states: 
3 ERBE ELEKTROMEDIZIN v. CANADY TECHNO

A color mark is not registrable on the Principal Register under §2(f), or the Supplemental Register, if 

the color is functional. Brunswick Corp. v. British 

Seagull Ltd., 35 F.3d 1527, 32 USPQ2d 1120 (Fed. 

Cir. 1994), cert. denied, 514 U.S. 1050 (1995); In re 

Owens-Corning Fiberglas Corp., 774 F.2d 1116, 227 

USPQ 417 (Fed. Cir. 1985). 

Thus the color mark passed the test of non-functionality, 

upon agency examination. 

The difference with respect to registration of a color on 

the Supplemental Register and the Principal Register does 

not relate to functionality, but to the need to establish 

secondary meaning for the particular color. Nonfunctionality does not of itself establish secondary meaning. 

See In re Owens-Corning Fiberglas Corp., 774 F.2d 1116 

(Fed. Cir. 1985) (criteria for registration on the Principal 

Register of the color pink for fiberglass insulation material); 

Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 166 

(1995) (holding that the existence of other, equally usable 

colors is relevant to whether a particular color is functional). 

 In Qualitex the Court explained that a mark is functional 

“‘if it is essential to the use or purpose of the article or if it 

affects the cost or quality of the article,’ that is, if exclusive 

use of the feature would put competitors at a significant 

non-reputation-related disadvantage.” 514 U.S. at 165 

(quoting Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 

850 n.10 (1982)). 

In accordance with the review procedures of the Administrative Procedure Act, the holding of the Patent and 

Trademark Office of non-functionality of the color blue for 

“flexible endoscopic probes for use in argon plasma coagulation,” receives administrative deference. Although ERBE 

had not obtained registration on the Principal Register, 
ERBE ELEKTROMEDIZIN v. CANADY TECHNO 4

ERBE was not required to do so in order to rely on its Supplemental registration for its statutory benefits, as well as 

to assert its common law trademark and trade dress rights, 

see Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205 

(2000) (holding that a product’s unregistered trade dress in 

the form of product design is protectable upon a showing of 

secondary meaning). 

The district court improperly granted summary judgment on the trademark and trade dress issues. Precedent 

does not support this judgment. Canady’s argument that 

blue, this shade of blue, is the only color that can be distinguished from body fluids was directly contradicted by the 

expert declaration of Christian Erbe, Chairman of ERBE, 

USA, who declared that “Blue is one of many colors available for APC Probes. Any color, other than beige or red, 

would be clearly visible during endoscopic procedures.” 

Decl. of Christian O. Erbe ¶4, July 17, 2007 (J.A. 4938). At 

the summary judgment stage, the factual issue of whether 

blue, or this shade of blue, is the only color of the spectrum 

that contrasts with bodily fluids was fairly placed into 

dispute. For this factual question to be decided in favor of 

Canady at the summary judgment stage, Canady must 

establish that it is entitled to judgment in its favor, even on 

ERBE’s factual position. See Anderson v. Liberty Lobby, 

Inc., 477 U.S. 242, 255 (1986) (“The evidence of the nonmovant is to be believed, and all justifiable inferences are to 

be drawn in his favor.”). 

My colleagues criticize Mr. Erbe’s declaration as “conclusory,” Maj. Op. 20. However, his statement about the 

visibility of other colors is straightforward and in accord 

with common sense, and its correctness is unchallenged by 

Canady. The evidence offered by Canady in support of 

functionality is that one company advertises that its coagulation probe’s “blue color enhances positive endoscopic 
5 ERBE ELEKTROMEDIZIN v. CANADY TECHNO

identification of the tip.” This advertisement was cited by 

the PTO during examination, and registration on the Supplemental Register was nonetheless granted. A reasonable 

jury could decide—as did the PTO—that the color blue for 

argon plasma coagulation tubes is not functional, and is 

capable of serving as a trademark. 

The court also errs in its summary judgment that ERBE 

cannot establish secondary meaning. In addition to the 

evidence of copying of the blue color, Mr. Erbe declared: 

5. ERBE has advertised and promoted the Blue 

Probe Mark in various marketing materials including brochures, giveaways at tradeshows and 

through use of the TRUE BLUE PROBE FOR 

ARGON PLASMA COAGULATION mark, Registration No. 2,852,359, which issued on June 15, 2004. 

6. The color of the ERBE APC probes (“ERBE 

Blue”) is the corporate color of ERBE Elektromedizin GmbH. ERBE has used ERBE blue as 

part of its corporate identity, as part of its trade 

dress for medical devices, for various promotional 

items and in its literature and advertisements for 

more than thirty (30) years. 

Decl. of Christian O. Erbe ¶¶5–6, July 17, 2007 (J.A. 4938). 

As to copying, which the majority acknowledges in its 

list of factors relevant to secondary meaning but does not 

discuss, ERBE raises significant issues of possible passing 

off and consumer deception. The laws of trademark and 

trade dress are designed to protect the consumer as well as 

the purveyor. It does not serve the consuming public to 

eliminate legal protection of indicia of source and quality. 

See Qualitex, 514 U.S. at 164 (“The law thereby ‘encour-
ERBE ELEKTROMEDIZIN v. CANADY TECHNO 6

age[s] the production of quality products,’ and simultaneously discourages those who hope to sell inferior products by 

capitalizing on a consumer’s inability quickly to evaluate 

the quality of an item offered for sale.” (internal citation 

omitted)). 

ERBE states that its blue color serves to protect the 

consumer/user, for it is a conspicuous identification of its 

particular probe for argon plasma coagulation. ERBE states 

that of the many colors that could be used, Canady selected 

the ERBE shade of blue for the sole purpose of profiting 

from the reputation established for ERBE’s product. The 

panel majority discounts this unrebutted evidence, and 

observes only the absence of other possible types of evidence 

relating to secondary meaning. However, the Third Circuit, 

like other circuits, does not set rigid rules for all forms of 

trademark and trade dress. See E.T. Browne Drug Co. v. 

Conocare Prods. Inc., 538 F.3d 185, 200 n.15 (3d Cir. 2008) 

(“We do not suggest that a party attempting to establish 

secondary meaning always must show that marketing 

materials succeeded in creating buyer association or that 

the term contributed to sales growth.”). 

My colleagues state that there is “evidence . . . that the 

color blue is prevalent in the medical field . . . and several 

companies use blue endoscope probes,” Maj. Op. 20, apparently drawing this conclusion from the advertisement 

considered by the PTO and plaintiff ConMed’s authorized 

blue probe. Whether secondary meaning was established is 

a question of fact, not subject to adverse inferences on 

summary judgment. The factual issue of likelihood of 

confusion, upon the undisputed intentional copying of this 

shade of blue, must be considered. ERBE has created at 

least a genuine issue of material fact as to whether its trade 

dress, as well as its trademark, is protectable. My col-
7 ERBE ELEKTROMEDIZIN v. CANADY TECHNO

leagues err in finding these facts adversely, on summary 

judgment. 

The judicial obligation is more complex than simply to 

facilitate “competition,” as the panel majority asserts. The 

avoidance of deception of the consumer is a purpose of trade 

dress law. At the summary judgment stage, ERBE provided 

sufficient evidence to negate the movant’s arguments with 

respect to the functionality and distinctiveness of its trade 

dress. Summary judgment that ERBE has no protectable 

right in its blue endoscopic argon probe was improperly 

granted. From my colleagues’ contrary holding, I must, 

respectfully, dissent.