throbber
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE
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`TRADEMARK TRIAL AND APPEAL BOARD
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`'
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`(
`«
`1
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`OPPOSITION NO.
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`Ol%lQel;l\lA.l.
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`§
`§
`§
`§
`§
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`§§
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`NOTICE OF OPPOSITION:
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`MINI MELTS, INC.,
`Opposer,
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`V.
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`DIPPIN’ DOTS, INC.,
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`Opposer, MINI MELTS, Inc., a Florida Corporation (formerly Frosty Bites, Inc.)
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`with a business address of 126 S.E. 5”‘ Street, Deerfield Beach, FL 33441, hereby
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`opposes registration of the trade dress configuration that is the subject of Application
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`Serial No. 76137546, published in the Official Gazette of April 1, 2003, and requests that
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`registration to Applicant be refused.
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`As grounds in support of its opposition, Opposer asserts as follows:
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`1.
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`Opposer is in the business of manufacturing cryogenically frozen ice
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`cream, yogurt and water particles. Opposer’s particles are in the shape of beads and
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`irregularly shaped particles. Applicant describes its mark as
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`[A] configuration of the goods which is in the shape of multiple spheres of
`Various sizes, in the color brown. The broken lines on the drawing indicate
`a container and are intended to show placement of" the mark, and are not a
`feature of the mark.
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`The configuration to be registered is for a cup sized grouping of particles. Opposer
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`believes it will be damaged by registration of the mark in the above identified application
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`upon the principal register.
`05/23/2003 BTHDHAS2 0000156 76137546
`300.00 09
`
`01 FC:6402
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`

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`
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`4'5
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`2.
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`Opposer asserts that the configuration sought to be registered by Applicant
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`is functional and therefore carmot be registered under 15 U..S.C. § l052(e)(5).
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`3.
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`Applicant claims to be the owner of United States Patent 5,126,156 issued
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`to Curt D. Jones for a method of cyrogenically freezing and serving frozen beads of ice
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`cream and other compositions. The prosecution history of the ‘I56 patent, including a
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`declaration by Curt D. Jones, demonstrates the configuration depicted in the trade dress
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`registration application is fimctionalr
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`4.
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`Together with Curt D. Jones, Applicant has sued Opposer and others in
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`MDL 1377, In Re Dippin ’ Dots, Inc. Patent Litigation, in the United States District Court
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`for the Northern District of Georgia, for patent infringement based upon allegations that
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`Opposer and others made and served beads of ice cream. Opposer and others have
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`counter-sued for declaratory judgments of non infringement of the ‘I56 patent and DDI’s
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`claimed trade dress, patent invalidity, and for damages for anti-trust violations. On
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`March 31, 2003, the MDL 1377 Court granted summary judgment to Opposer and others
`that DDI’s product trade dress, claimed as “small round beads or pieces of colorful ice
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`cream,” was functional and not entitled to trade dress protection (3/31/03 Order, p. 48,
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`attached as Exhibit 1).
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`5.
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`In addition, Opposer and others have sued Dippin’ Dots, Inc. in Frosty
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`Bites,
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`Inc. et al. v. Dippin’ Dots,
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`Inc. 3:01:CV-1532-M (N .D. Tex) for,
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`inter alia,
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`declaratory judgments that the Dippin’ Dots, Inc. product trade dress is functional.
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`Motions for Summary Judgments by both sides have been filed in this proceeding and
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`these motions for summary judgment are ripe for judicial determination.
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`Wherefore, Opposer prays that the opposition be sustained and that registration to
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`

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`
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`Applicant be refused.
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`Date: ggzrgo ?
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`Respectfully submitted,
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`RUDOlE O. SIEGESMUND
`
`0. M
`
`Texas State Bar No. 18324570
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`Suite 2000
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`4627 N. Central Expressway
`Dallas, Texas 75205-4022
`Tel. 214.528.2407
`
`Fax. 214.528.2434
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`ROBERT G. OAKE, JR.
`Texas State Bar No. 15154300
`
`Law Office of Robert G. Oake, Jr.
`Suite 109
`101 W. McDerrnott
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`Allen, Texas 75013
`Tel. 972.727.7490
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`Fax. 972.727.7496
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`ATTORNEYS FOR MINI MELTS,
`INC.
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`Certificate of Filing by “Express Mail”
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`“Express Mail” mailing label number: 5U43 8°.7‘A’3 7 3 7 U S
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`I hereby certify that this correspondence is being deposited with the United States
`Postal Service “Express Mail Post Office to Addressee” service in an envelope addressed
`to the Assistant. Co
`iss'
`oner for Trademarks, 2900 Crystal Drive, Arlington, Virginia
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`22202-3513, on 42.1.? 0 3
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`. f
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`iégagg. %m--<9
`
`Rudolf O. Siegesm d
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`

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`
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`C)I
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`A
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`I
`
`IN THE UNITED STATES DISTRICT COURT A
`I FOR THE-NORTHERN DISTRICT OF GEORGIA»
`ATLANTA DIVISION
`
`A In Re: DIPPIN’ DOTS PATENT ‘
`LITIGATION
`
`CIVIL ACTION FILE ‘
`NO. l:O0-CV-907-'TWT
`
`FILED lN CHAMBEl?tS_~
`T”‘Z,'f”§SDW¢T“,fig§;““'
`I
`
`MAR 5 I 2003
`
`LUTH
`By:
`
`D.THOMAS,
`
`Ierk'
`1/
`
`°‘*‘’“‘’ C”
`
`ALL CASES
`
`. ORDER N
`
`‘These are related actions brought by the Plaintiffs for ‘patent infiingement
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`pursuant to the”Patent A'ct,V (35 U.S.C. § 100 :31 §€.C1.),
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`trade dress and ‘trademark
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`infringement pursuant to the Lanharn Act, (15 U.S.C. §§ 1125), alleged violations of
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`the Uniform Trade Secrets Act (18vU.S.C. § 1905), and breach of contract.‘ The
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`M“—.Defendanfs s”ee1E_’ dclaratory judgment"_that 'thepaterIt_ in question is" invalid and
`‘ unenforceable._.,. The actions‘ are pending in this CO-urt forconsolidated pretrial
`V proceedings pursuant to 28'U. S. C.
`1407. Theyarebefore this'Court on multiple ..
`motions for summary judgment filed by all parties. The manufacturers and
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`N
`
`frozen ice creamiknown as Frosty ‘Bites,referred to" herein as I
`distributors of a
`the Defendants, filed the folloxiving motions for summary judgInent:_ (1) Mo't_:ion'for
`Judgment on Invalidity ofU';$. Patent No. 5,126,156 [1 :01"-CV—i9i07 Doc.
`
`No. 245; 1 :01 —CV-262'DOc. No. 662; 1:01-CV.—357 DOC. No. 3()8;¢l I01—CV—202 Doc.’
`
`

`
`
`
`331
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`I No. 185],'(2) Motion for Summary Judgment on Non-infiringement ofUS. l’atent No. —
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`-5,126,156 [l:01—CV—907 Doc. No. 246; 1:01-CV-262 Doc. No. 663; 1:01-CV—357
`
`Doc. No. 309; 1:01-CV-202 Doc. No. 186], (3) Motion for Summary Judgment on
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`_ Unenforceability ofU.S. Patent No. 5,126,156 [11:01-CV--907 Doc.‘ No. 247; 1:01 -CV-
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`262 Doc. No. 664; 1:01-_CV-3257 Doc. No. 310; 1:01-CV-202 Doc. No. 187], (4)
`Motion for Summary Judgment on Plaintiffs Violation ofthe UniformTrade Secrets
`Act and Breach ofCJontract'Claims [1 :01-CV—907 Doc. No. 248; 1:01-CV-262 Doc.
`No. 665; 1:01—icv-S357 Doc.‘ No. 311; 1:01—CV--202 Doc. No. 188]; (5) Motion for
`
`Summary Judgment on Plaintiff’s Trade Dress Infringement Claims [1 :01-CV—907
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`I Doc.No. 249; 1:01-CV-262 Doc.No. 666; 1:011-CV-357 Doc. No. 312; 1:01-CV-202
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`Doc. No. 189].
`
`Dip[)in’ l)ots, Inc. andflurt Jones, referred to herein as theVl3laintiffs, filed the
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`following Motions for Summary Judgment: 1) Motion for Summary Judgment ofNo
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`Antitrust Violation. for DDI’s Enforcement ofPatent ghts, [1 :01 -‘CV-907 Doc. No.
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`250; 1:01-CV-262 Doc. No. 667; 1:01-CV-357 Doc; No, 315; 1.:O1—CV-202iDoc. No;
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`I
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`190]; (2) Motion for Summary Judgment for Breach ofContract, [1 :'O1—CV-357 Doc. _
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`No. 313]; Motion for Summary Judgment of Trademark Infringement and Lanham"
`
`Act Violations, [1:01-C_V-3157 Doc. No. 314]. For the reasons set forth below,
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`

`
`
`
`cl):
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`Defendants’. motions are granted in part and denied in part, and Plaintiffs’ motions
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`are granted in part and denied in part.
`
`ii
`I. BACKGROUND
`This action was filed by Plaintiffs Dippin’ Dots, Inc. (“Dippin’ Dots”), and its
`founder, Ci3urtJones (“Jones”)._ Dippin’ Dots is an Illinois corporation with its
`principal place ofbusiness in. Paducah,_Kentucky. Dippin’ Dots is engaged: inthe
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`business of manufacturing and distributing flash frozen novelty ice cream. The
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`Defendants in this action are corporations and individuals engaged _in either the _
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`manufacture or distribution of"a competing flash frozen novelty ice cream product 5
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`known as‘ Frosty Bites.
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`Jones, the Dippin’ Dots founder, applied for and received‘ a patent for the
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`method Dippin’ Dots uses to make flashtfrozen ice cream. (Def..’s .Ex._.34,.Unit'ed
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`ifltates Patent No. 5,126,156 (“the ‘I56 patent”).) Jones firstbegan vvorking "with
`
`methods to produce flash frozen novelty ice cream in -1987.
`
`(Declar'ation.of'Cur't'
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`Jones, 1] 2.) In June of 1987 he started keeping notebooks on his progress. ''(Def.’s '5
`
`Ex. 44 Vol. I at
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`IAIOOOS.) These notebooks track Jones’ progress with making _
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`flash frozen ice cream, business and marketing ideas, as well. as contacts for?’
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`investment and distribution. (Def.’.s Ex.'44 Vol. I - IV.)
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`

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`
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`According to his notebooks, Jones was successful in making a flash frozen ice —
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`cream product in June. of 1987. The product consisted of frozen beads and nuggets
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`produced by streaming and dripping an ice cream mixture into liquid nitrogen.
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`_
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`V
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`(Deposition ofCurt Jones at'444.) On June. 17, 1987, Jones served between fifty and
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`one hundred cups of this product to -the public ‘at a picnic sponsored by Alltech, his
`employer at that time. (E) Jones did not place ‘any ofthe people at this company '
`picnic under a confidentiality agreement, and he does not recall ever telling them the
`product was e)rp_erimental.' (Jones Dep. at 448, 489.) .
`
`Later on in July, Jones’ work led to an ice cream product consistingiof one
`hundred percent" beads of flash frozen ice cream, which were free flowing when
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`served. (I_d. at DDI 10056-57; Dep. ofCurt Jones at 49_0-504). Jones served his free
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`flowing flash frozen...ice cream. beadsflto '.officia1s_.ofathe-Festival -Market,-a§retai1v
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`n.
`
`A
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`development, on July 13, 1 Jonesinoted that the officials were potential,investors _
`in his product, and that the Festival" Market couldprovide an outlet for selling his new
`ice cream. (Def.’s Ex.
`Vol. I at DDI 10056-57; ones Dep. at 497-500.) Some of -
`the people at this meeting took samples of Jones’ product with them and did not
`consume the ice cream in Jones’ presence. Jones told them to wait tento. fifteen:-‘
`minutesbefore eating the product. (Jones Dep. at 504-05...) These individuals werg .
`not placed under a confidentiality agreement. (Jones Dep. at 497.)
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`In
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`-4- _'
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`

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`(}'|
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`Jones also took his completelybeaded product to ‘Rally’s, a fast food chain,_ and
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`to International Desserts. There, Jones allowed people from the establishments to
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`sample his free flowing ice cream beads. (Def.’s
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`44 Vol. I at DDI 10137; Jones
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`Dep. at 668-69.) Jones would sometimes leave his product at Rally’s for further '
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`service after he left. (Jones Dep. at 662.) Jonesdoes not recall placing anyone at
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`Rally’s or International Desserts under a confidentiality agreement, and he does not
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`recall informing them that the product was experimental. (Jones Dep. at 669.) I
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`As contemplated, the Festival Market did provide an outlet for Jones” ice _
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`cream. Jones sold a flash frozen, free flowing ice cream product there in August and I
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`September of 1987. (Jones Dep. at 535-39.) This product differed, however, from A
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`''
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`what he took to Rally’s, International Desserts, and what he originally presented to '
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`A the officials of the._F.estival _Market..%Jones_made-.thisgproduct_.by.:dripping and .
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`streaming his ice cream) mixture into liquid nitrogen.
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`at 536.) This process
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`resulted in a frozen nugget—like ice cream as opposed to a completely beaded product.
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`(Id, at 536,- 539.) The product was similar to what he served at the Alltech picnic in .3
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`June of 1987. Jones gave small samples ofhis Festival Marketproduct to the public,
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`.
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`and then sold the product in larger quantities.
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`(I_d. at 558.) Jones considered the:. '
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`Festival Market to be a test—market for the flash frozen ice cream, and he informed his
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`Festival Market patrons accordingly. (Jones Dep. at 547, 552.) No one, however,
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`-5-
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`

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`
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`()1
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`.
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`_
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`i was placed undera confidentiality agreement. _
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`at552).» -Though Jones did not.
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`make a profit from his Festival Market sales, he was encouraged by the results. (1;
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`_at 547, 559.) _
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`I
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`The freezing agent "used in flash freezing ice cream, liquid nitrogen, has a
`temperature of320° below zero Fahrenheit. (Jones Dep. at 457.) Jones knew that the
`flash frozen ice cream was too cold to be consumed right after it was made’ or.‘
`removed from the cooler used for transport. Itconsumed while too ‘cold, the product
`would burn the mouth of the person eating the ice cream. '7 (Jones Dep. at 501.)‘
`Accordingly, Jones advised those to whom he served his product to warm it before _
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`.
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`_
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`consumption. (Def.’s Ex. 44 Vol. I at DDI 10057.) When he served his ice crearnnat
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`his company picnic in July of 1987, and at the Festival Market in August and
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`, _ Sep_tern_l3e_r ofthat year, Jon_es_,__di,d, notknow the specific temp_eraturc.range.to_wh_ic_l1-z_.___
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`did not serve the ice
`the ice cream should beflwannedi preventlburning, he
`cream until it stopped “smoking” or would tellpeople not to consumeit until the i
`“smoking” stopped:T(Jones Dep. at 450-5 1, 485, 549, 555.) Jones believed that at the 3
`time theice cream stopped smoking, it would havebeen somewhere around 5O'°i-‘H
`below zero‘Fahrenheit.
`(_I_cL at 485.)
`7
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`I
`
`A
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`Flash freezing food products tomake them free flowing wasflnot a novel idea».
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`when Curt Jones began using it as a method to produce ice cream. Fo1:eXample,
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`-5-
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`

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`
`
`AH‘).
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`- Moustafa M. Aref and Gordon B; Timbers appl.ied for and receiveda patent fora
`process wherein they flash froze an alimentary solution of egg product (“Aref
`Reference”). (Pl.’s Ex. 2 at P0056-P0060, Canadian l?atent;# 1,376,972.) The .Aref
`reference taught amethod forflash freezing an egg substance into free flowingpellets-'
`between 3mm and 7mm in diameter. .(_I_c_l, at P0060.) Otherrelatedpatents include the
`Vitkovsky and Liggett references.__ The Vitkovsky patent taught a method offlash
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`freezing a food product such that it becomes frangible.
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`(Pl.’s Ex. 3,» U.S. Patent" #
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`4,687,672.) Once frozen, Vitkovsky- teaches that sending the frangible substance .
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`through a fracturing mill results in a frozen free flowing food product.
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`(I_d,) The" A
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`'
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`Liggett reference teaches that by dripping an alimentary solution into a cryogenic '
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`freezing apparatus, one can turn the alimentary solution into frozen spheres.‘ (Pl.’s
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`EX-_Z .a.t£0_0,3.5...). _The pa.ten_t ¢Xanii.neI_co,r.1.S;ideredialflwthfeez,of.thes_efreferencesi when bf? ._
`
`-
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`*
`
`evaluating Jones’ patent application.
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`2 PlaintiffCurt Jones first applied .for a patent on a method to make flash frozen
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`ice cream on March 6, 1989. (Pl.’s Ex. l,U.S. PatentNo. 5,l26,l56). The patent was I
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`issued on June 30, 1992. (1gl_.) The first claim of the patent contains six steps for _
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`making flash frozen free flowing beads of ice cream. The steps include: in
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`[1]
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`preparing
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`alirnentary composition for freezing;
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`.
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`[2].
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`dripping said alimentary composition in_to a freezing chamber;
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`-7-
`
`

`
`
`
`0-
`
`[3]
`[4]
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`[5]
`
`[6]
`
`_ freezing said dripping alimentary composition into_beads;
`so as to ‘
`storing said beadstat a temp_erature at least as low as -20“
`maintain said. beads free-flowing for an extended period oftime;
`bringing said beads to a temperature? between substantially -1(.)° F.Iand_‘
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`-20‘. F. prior to serving; and
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`for consumption at. a temperature between T ‘
`serving said‘ beads
`substantially —l0° F. and'—20° F. so that beads are free flowingwhen
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`served.
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`(I_cL, Col. 6, 1. 41-57.) It is this patent claim which Plaintiffs contend Defendants
`infringed.‘
`A
`
`The ‘l56 patent did not issue as originally filed.
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`In his original patent
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`-* -
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`______;_i::
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`' ' applicationflones claimed only five ofthe‘six steps listed abo.v.e,tfailing. to claim the .
`sixth step of serving the iceicrearn. (E Pl.’s
`patent
`examiner found that Jones’ original claims were obvious in light-of%the Aref"
`reference, considered with the Liggett and Vitkovsky references. (lg at p. Pl_)032f V
`P0037). The BoardofPatentAppealsupheldthe finding ofobviousnessbased on I
`Aref reference alone, because that reference literally satisfied all ‘five of .lonesl:"
`original claims. (LL at p. P0l l6—POl 17.) Alternatively, the Board ofPatent Appeals
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`

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`
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`:1)c
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`upheld the determination that ones’ first five claims wereiobvious-considering the
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`Aref reference with the Liggett and Vitkovsky references.
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`(I_(L at p. P01 l7-P01 19.)
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`After the Board ofPatent Appeals’ decision, Jones amended his application to
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`claim an additional step. This additional step was the sixth and taught‘ serving the ice ’
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`'
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`cream while in a free flowing state.
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`(Pl.’.s Ex. 2 at P0130-P0132.) The patent
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`examiner again rejected this application, noting that though the previous art did- not-
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`specifically teachserving ice cream in a free flowing state, to do so was obvious
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`depending on the food product being served. (I_d._ at P01 38.) Instead ofappealing this" _
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`decision, Jones filed an affidavit ofcommercial success to supplement his application A
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`for a patent on the six-step process.
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`(I_cL at P0140—POl65.)
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`In response to this _
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`'
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`_
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`affidavit, the examiner dropped the objections to the patent, and ‘allowed it as“
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`presented irrlits‘
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`gs -— f
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`A
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`i J’ i U
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`Dippin’ Dots is the exclusive licensee of the ’ 1 56» patent for making flash
`fiozen ice cream beads‘. "l‘he ice creambeads are small:color'ful spheres'o'f>i‘ce'creani,“
`capable ofbeing poured into a container.because oftheir free flowing characteristic.
`I
`(Special Master’s Report RegardingClaimConstruction,@ , ,
`Civ. Action No. 3:961-CV-l959—X at 49 (N.D. Tex. Feb. 24, l998))'. Dippin’ Dots."
`primarily sells itsproduct fromcolorful kiosks orstands at amusementiparks, sporting I
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`.
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`_
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`venues and shopping malls. (Jones Dep. at 78~86i.) To identify itself at these
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`-9-
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`

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`
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`1)c
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`locations, Dippin’ Dots" has a distinctive logo made up of several elements. First,’ a. -
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`circle of round spheres of different sizes frames the logo.’ (Def.’s iMotion for
`
`Summary Judgment on Trade Dress -Infringement Ex. F.) The spheres are blue, V
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`yellow and pink.
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`(I_d,) Through the middle of the circle of spheres runs the product
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`name, “dippin’ “dots,” in blue letters.
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`(I_d_,) The word “dots” falls below andito the
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`right of the word “dippin’.” (I_c_l_.) Below this circle of spheres lies a tag line touting."
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`Dippin’ Dots as the “Ice Cream ofthe Future.” (1c_L) Onboth sides "ofthe tag line lie
`three spheres, which are also blue, yellow and pink.- (I_d_.)
`I
`Defendants produce and distribute a flash frozenice cream product made up
`ofa mixture ofbeads and irregularly shaped nuggets ofice cream. (Def. ’s El{.39, 40,
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`41.) Several steps go into" making their ice cream product. A solution is streamed
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`and drippedfintoi liquid nitrogenwhereit freezes» and forms beadsand large clusters-.
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`offrozen ice cream.
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`(LCL) The frozen product then passes through a “cluster buster,”
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`where the larger clusters are broken downinto smallef°piecesMoif ice ereamist (I_d_.') ‘
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`T
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`”
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`Aftermoving through a system of conveyor belts, where the ice cream is further V
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`_
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`broken down, the beads and small clusters of ice cream are transferred to coolers.-_'
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`(LCL) The product stays in the coolers until it is scooped by the gallon and placed into
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`bags for distribution. (LL) The final product that is shipped by Frosty Bites consists
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`of both beads and small irregularly shaped pieces of ice cream.
`
`(L1,)
`
`’-lO-
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`

`
`
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`Defendants principally sell theirice creamproduct frombooths and kiosks. To
`identify itself, Frosty Bites has a distinctive logowhich is placed where the product
`is sold and on the product containers. The logo consists ofan ice like background,
`with the word" “Frosty Bites” written on the ice in a blue letters shadowed in pink.
`
`(Declaration ofVictor Bauer, Ex. 1.) The word “Bites” is centered under the word
`“Frosty,” (1d_.) The “o” in the word frosty is the torso of a cartoon caricature-of a
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`portly penguin, holding a cup of what is intended to be Defendants’ p_roduct.. (1fi_._)
`The penguinwears a red scarf and a green hat.
`(Ld_.)i The product in the penguin’s _
`cup consists of yellow, green, blue and red nuggets of ice cream.
`(IQ) A person
`dressed like the penguin has appeared at Frosty Bites venues to promote the product.
`(Bauer Dep. 1] 6.) Below the words “Frosty'Bites” in the logo is a tag line touting
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`_'
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`Frosty Bites as “The Ultimate Ice Cream Sensationl”. (Bauer Dep.
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`,
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`i1. SUMMARY JUDGMENT STANDARD
`
`Summary judgment is appropriate onlywhen the pleadings,idepositionisij
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`V
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`D
`
`affidavits submitted by the parties show that no genuine issue ofmaterial fact exists if
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`and that the movant is entitled to judgment has a matter oflaw.‘ Fed. R. Civ. P.i.56(c).
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`.
`
`An issue is genuine “if the evidence is such that a reasonable jury couldreturn a‘
`verdict for the nonmovingparty.” Anderson v. Liber_ty'_lmbby'_Ing_., 4_77 U.S. 242, 248.
`
`(1986). An issue is material if it “might affect the outcome of the suitiunder the
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`-11-
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`

`
`
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`' governing law.” Id, The court should view the evidence and anyinferences that may
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`be drawn in the light most favorable to the nonrnovant. Adickes V. S.H. Kress & C0,,
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`398 U.S. 144, 158-159 (1970). The party seeking summary judgment must" first
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`identify grounds that show the absence of a genuine issue of material fact. Celotex
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`Corp. v. Catrett, 477 U-.S. 317, 323-24 (1986)., The burden ‘then shifts to the
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`nonmovant, who must go beyond the pleadings and present affirmative evidence to.‘
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`I show that a genuine issue of material fact does exist. Anderson V. Liber_ty Lobby‘,
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`11_ae,, 477
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`at 257 (1986).
`
`“Apatent shall be presumed valid.” 35 U. S. C. §
`
`A party challenging the
`
`validity of ‘a patent must establish facts, by clear and convincing evidence, which
`persuasively lead to the conclusion of invalidity.
`I_ra_r_1_scl_ean Com. v. Bridgewood
`
`
`Services 1he., 290 F.3d 1364," 1370 (Fed. Cir. 2002).
`
`“The presumption‘ _is a
`
`‘procedural device, vvhich assigns the burden ofIgoing forward as well as the burden
`
`of proof of facts to the challenger. Avia Grou Intern. Inc. v. iL.A‘.’ Gear California "3
`
`
`' 5
`
`l11_C_., 853 F.2d 1557, 1562 (Fed._ Cir. 1988). However, the presumption is one oflaw,
`
`.
`
`not fact, and does not constitute "evidence" to be weighed against a challenger's-
`
`evidence. Id,
`
`-12-
`
`

`
`
`
`III. DISCUSSION
`
`Both sides in this dispute have filed motions for summary judgment. _
`Defendants seek summary judgment that there was no infringement of' Plaintiffs’
`
`patent by the Frosty Bites’ process, that Plaintiffs’ patent is invalid, that Plaintiffs’
`patent isnot enforceable, that there isno trade dress infringement, that there were no
`
`'
`
`violations ofthe Uniform Trade Secrets Act and that there was no breach ofcontract.‘-
`Plaintiffs seek a summaryjudgmentruling thatthere wasno antitrustviolation in their
`
`enforcement of patent rights, that there was trade markinfringement and that there" _
`
`I was breach of contract. To facilitate discussion, each of these issues is addressed A
`
`separately below.
`
`_A. Patent Invalidity
`
`Defendantsncontend that the ‘ 156 patent is invalididue to the “on-sale” bar of ..
`
`35 U.S.C. § 102(b), as well its failure to meet the nonobviousness requirement of 35
`
`U,S.C. § 103. Defendants’ argument is that the prior art for the ‘l56_ patent should’
`
`‘include certain pre—critical date (March 6, 1988) activities ofPlaintiffCurt Jones, and In
`
`that theinclusion ofthose activities will establish that the method patented in the ‘ 156 .
`
`patent was on—sale prior to the critical date, and that it was obvious under section 103.
`
`_&§_ D.L'. Auld Co. v. Chroma Graphics Co1;p., 714 F.2d. 1 144, l 148 (Fed. Cir. 1983')
`
`,
`
`-1.3-
`
`

`
`
`
`cl
`
`. i(h.'olding sale of product puts method used to make product on sale for purposes ofx
`
`’
`
`on-sale bar).
`
`As for thesection 102 on-sale bar, Plaintiffs contend that their patent is not _
`
`»
`
`invalid because Curt Jones’ pre-critical date activities did not satisfy all of thelclaim
`
`limitations in the ‘ 156 patent. With respect to obviousness, Plaintiffs argue that the
`
`prior art should not -be enlarged, and that even if it is, secondary evidence’ of '5
`
`nonobviousness makes the ‘156 patent valid. For the purposes of this order, the
`
`section 102 on-sale bar, and the section 103 nonobviousness requirement are"
`
`discussed separately below.
`
`1. Nonobviousness Requirement of 35 U.S.C.‘ § 1031;)
`
`A patent will not issue ifthe subject ofthe patent would be obvious to one who
`
`possesses ordinary skill in the art of the invention, at the time the invention was-
`
`made. 35 U.S.C. § l03(a). Obviousness is a question of law, resolved based upon
`
`fouriunderlying factual Hquestions. These underlying factual questions are (1) the
`
`scope and content of the prior art; (2) the differences between the prior art and the ~
`
`subject matter ofthe patent at issue; (3) the level ofordinary skill in the pertinent art;-
`
`and'(4) secondary considerations which bear on the issue of nonobviousness. . I
`
`1 Goodrich Co. v. Aircraft Braking Systems Corp, 72 F.3d 1577, l582i(Fed. Cir.
`
`_ 1996). This Court will discuss each of these factors in turn.
`
`-14-
`
`

`
`‘
`
`-an!‘
`
`“There are genuine issues ofmaterial fact regarding the scope and content o_fthe
`
`prior art, and therefore, summary judgment is not proper. When discussing this
`
`question, “scope” refers to the different references which are included in the prior art,
`
`while “content” refers to what" those references teach. Defendants contend that certain '
`
`l
`
`.
`
`pre-critical date activities ofPlaintiff Curt ones should be included in the scope of
`the prior
`tSpecif1cally, Defendants wish to include evidence that on July 13, l987,
`Curt Jones served a frozen, free flowing ice creamproduct to officials ofthe Festival
`Market, that he served a similarproductat the Festival Market for aperi_od of 10 days p
`in August and September of 1987, and that he again served a similar product at
`Rally’s and International Desserts on September 1, 1987. Defendants argue that those
`
`referencesmake the ‘ 1 56 patent invalid forobviousness. Plaintiffs do not dispute that
`
`Jonesiserved a frozen free flowing product before the critical date, but they ‘do .
`
`challenge whether it is proper to include those activities in the prior art.
`m."'P1aintiffsalliegethat the plre-critical date activities ofCurt Jones 'shouldriotbe’
`included in the prior art, becausethey were experimental instead ofpublic uses. ‘The is
`
`experimental use doctrine allows an inventor “to refine his or her invention or to _.
`
`assess its value relative to the time and expense ofprosecuting a patent application.” "
`
` Baxter Intern. Inc. v. COBB Laboratories Inc., 88 F.3d 1054, 1060 (Fed. Cir. 1996).
`
`_
`
`Whether a pre-critical date activity was experimental is determined by the Court as
`
`-15—_
`
`

`
`
`
`.
`
`I a matter of law, based on several factors. Petrolite cam. v. Baker Hughes Inc., 96
`
`F.3d 1423, 1426 (Fed. Cir. 1996). Among the factors commonly examined are
`
`whether testing was reasonably needed to demonstrate the efficacy of the invention, _
`
`-
`
`, whetherrecords were kept ofthe experimentation, whether testing was systemaitically
`
`performed, the length‘ of the evaluation period in light of the nature of the invention,
`
`whether there were secrecy agreements, whether therewas compensation paid to the ‘
`
`inventor,
`
`the control maintained over
`
`the putative experiment, and other
`
`circumstances bearing on the nature of activities prior to the critical date. Lough v.
`
`Brunswick Com, 86 F.3d 1113,» 11203 (Fed. Cir. 1996); Petrolite Corp. v. Baker -
`
`Hughes Inc., 96 F.3d at 1427-28. Viewing the evidence in the light most favorable
`
`to Plaintiffs, there are genuine issues of material fact which prevent this Court from
`
`saying the pre-critical date activities were not experimental as a matter of law.’
`
`The notebooks keptby. PlaintiffJones leave genuine issues ofmaterial fact as
`
`to the primary purpose ofhis pre-critical date activities. While collecting information
`
`on marketing and receiving payment will not automatically make a use public, the A
`
`primary purpose ofthe inventor, in using his product must be to further the invention’s-
`
`qualities for the use to be experimental. Omark Industries Inc. v. Carlton Co., 652 '
`
`-_ F.2d 783, 786 (9“‘-‘Cir. _1980). Defendants correctly point out that the notebooks
`
`contain references to marketing practices, that Jones received payment for his.
`
`-16-
`
`

`
`
`
`product, that experiments were not systematic, that there were no secrecy agreements,
`
`and that the notebooks had no detailed logs of results. However, other pieces of
`
`evidence prevent this Court from ruling on experimental use without atrial. Jones’_
`log contains entries which indicate each ofthe uses Defendants complain about may
`
`have been experimental instead ofpublic.
`Though they did not contain detailed results of experiments, on multiple
`
`occasions Jones’ notebooks recorded changes inhis productionmethod and how
`
`"those changes affected the resulting product. (Def. ’s Ex. 44 at DDI l005_6 (noting use
`
`of blue dropper and very cold nature of mix produced perfect spheres of ice cream);
`
`DDI 1005.71 (telling those sampling product to warm in microwave or wait ten to
`
`‘fifteen minutesbefore consuming); DDI 10137 (noting Flav-o-Rich mix produced
`
`__“g‘dodTc1uAa_lityVuniformibeads”); Jones Dep. at 5360-39. (noting Jones dripped and
`
`streamed a solution producing a product "with some spheres and some irregularly
`
`shaped particles of ice cream.)) Eachnof those recorded alterations and results
`
`correspond with thetirnes Defendants claim Jones’ use of his methodwas public. A
`
`These method alterations and'recorded¢resu1ts during pre—critica1 date uses suggest
`
`Jones was conducting experiments on his method, instead ofcommercially exploiting.‘
`
`it prematurely. Viewing the evidence inthe light most favorable to Plaintiffs, there
`
`-17-
`
`

`
`
`
`6,
`
`o
`
`are genuine issues of material fact as to the purpos-e of Jones’ pre-critical date
`
`activities.
`
`Next, Jones’ pre-critical date activities may have led to method changes that
`
`are present in the final form of the ‘ 156 patent which ‘indicates that the pre-critical
`
`date activities were experimental and not public. The Federal Circuit has held that
`
`“when an inventor can show changes during experimentation that result in features
`
`later claimed in the patent application, this evidence is a strong indication that the
`
`activities ofthe inventor negated any evidence ofpremature commercial exploitation
`
`of an invention ready for patenting.” EZ Dock Inc. v. Schafer Systems, Inc., 276
`
`
`
`F.3d 1347, 1353 (Fed. Cir. 2002). In EZ Dock the inventor sold a floating dock built
`
`on rectangular shaped pylons, and then patented a floating dock built on frustoconical
`
`shaped pylons.
`
`I_cL The court found the evidence of changes in the invention
`
`persuasive on the issue of experimental use, and vacated a district court ruling that
`
`the patent was invalid. Lc_l_. at 1354. The same type of evidence is present in this case.
`
`The evidence in the instant dispute, viewed in the light most favorable to the
`
`Plaintiffs, indicates that during the pre-critical date activities, Jones had not yet
`
`developed the long term storage and tempering practices which ultimately found their
`
`way into the ‘ 156 patent. (Def.’s Ex. 44 at DDI l0057 (noting Jones made ice cream, A
`
`placed it in a cooler, drove it to allow others to sample, and then told them to warm
`
`-18-
`
`

`
`
`
`‘rJ
`
`6
`
`the product because it was too cold for direct consumption);
`
`Jones Dep. at 662
`
`(describing how Jones made ice cream and thereafter delivered it to Ral1y’s and
`
`International Desserts for sampling); Jones Dep. at 535-46 (recounting Jones’
`
`preparation of a mix of beads and particles of ice cream at the Festival Market and
`
`serving it without long term storage as soon as the ice cream stopped smoking.)) In
`
`contrast, Jones’ patent was much more detailed, teaching specific temperature ranges
`
`for long term storage and tempering. Such advances between pre—critical date
`
`practices and the ultimate patent are similar to what the Federal Circuit in EZ Dock
`
`called “strong evidence” of experimental use.
`
`In addition to advances in long term storage and tempering, Jones’ pre—critical
`
`date activities varied between production of an all spherical product, and one that
`
`contained both spheres and irregular shaped pieces of ice cream. (Def.’s Ex. 44‘at
`
`DDIl0O57 (discussing use of small blue dropper for making spheres on July 13,
`
`1987); Def.’s Ex. 44 at DDIl0137 (discussing dripping of Flav-O-Rich ice cream
`
`mixture which made “good quality uniform beads” on September 1, 1987); Jones
`
`Dep. at 547-48 (noting Jones used various methods to stream and drip ice cream
`
`while at the Festival Market in August and September of 1987, which made beads and
`
`irregularly shaped pieces of ice cream.))
`
`It is noteworthy that the last of the pre-
`
`critical date sales pointed to by the Defendants was a mixed product, and Jones
`
`-19-
`
`

`
` 0
`
`6
`
`ultimately patented an all beaded product.
`
`(Compare, Jones Dep. at 547-48 with
`
`Def.’s Ex. 34, United States Patent No. 5,126,156.) Like the patented advances in
`
`long term storage and tempering, this change to an all beaded product is consi

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