3m Co. v. Mohan , 482 F. App'x 574 ( 2012 )

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
__________________________
3M COMPANY and
3M INNOVATIVE PROPERTIES COMPANY,
Plaintiffs-Appellees,
v.
PRADEEP MOHAN,
Defendant-Appellant.
__________________________
2011-1328
__________________________
Appeal from the United States District Court for the
District of Minnesota in Case No. 09-CV-1413, Judge Ann
D. Montgomery.
_________________________
Decided: May 29, 2012
_________________________
ALLEN W. HINDERAKE, Merchant & Gould, P.C., of
Minneapolis, Minnesota, for plaintiffs-appellees. Of
counsel on the brief was HILDY BOWBEER, 3M Innovative
Properties Company, of St. Paul, Minnesota.
PRADEEP MOHAN, Santa Cruz, California, pro se.
__________________________
3M COMPANY v. MOHAN 2
Before RADER, Chief Judge, LOURIE and REYNA, Circuit
Judges.
RADER, Chief Judge.
Defendant-Appellant Pradeep Mohan (“Mohan”) ap-
peals the district court’s grant of partial summary judg-
ment, finding of trademark infringement, and award of
attorneys’ fees and costs in favor of Plaintiffs-Appellees
3M Company and 3M Innovative Properties Company
(collectively “3M”). Because this court finds no error in
the decision of the district court, this court affirms.
I
Before the district court, 3M alleged trademark in-
fringement, counterfeiting, and unfair competition under
the Lanham Act, 15 U.S.C. § 1051 et seq., related state
law causes of action, and patent infringement of U.S.
Patent No. 5,449,865 (“the ’865 patent”). 3M manufac-
tures and sells stethoscopes under and in association with
the following marks: LITTMANN, LITTMANN
QUALITY Stylized L, Stylized L, CARDIOLOGY III,
MASTER CARDIOLOGY, 3M, and MASTER
CARDIOLOGY configuration mark. The ’865 patent is
titled “Ear Tips Having Molded-In Recesses for Attach-
ment to a Stethoscope,” which is assigned to 3M Com-
pany.
3M alleged that Mohan was doing business under the
names “Kila Labs” and “Lauteen Stethoscopes,” that he
sold stethoscopes which infringed both the ’865 patent
and 3M’s trademarks, and that he sold these stethoscopes
over the Internet via the following websites: kila.com,
amazon.com, cardioglobal.com, and eBay.com. As of
October 31, 2008, Mohan’s Kila Labs website contained
images and words that were either identical to or similar
to the following trademarks owned by 3M: 1) the 3M
3 3M COMPANY v. MOHAN
Corporate logo; 2) the LITTMANN word mark; 3) the
LITTMANN QUALITY Stylized L; 4) the CARDIOLOGY
III word mark; and 5) the MASTER CARDIOLOGY
configuration mark. 3M also argued that the intentional
nature of Mohan’s actions caused this to be an “excep-
tional case” warranting award of attorneys’ fees under 15
U.S.C. § 1117(a). 3M initially sought preliminary and
permanent injunctions of Mohan, statutory damages, lost
profits, and pre-judgment interest under 28 U.S.C. § 1961.
Mohan counterclaimed, alleging tortious interference with
contract, deceptive trade practices, unfair competition,
and antitrust violations. Mohan subsequently withdrew
his antitrust counterclaim.
3M moved for a partial summary judgment that (i)
the ’865 patent was not invalid; (ii) Mohan infringed
claims 8, 9 and 12 of the ’865 patent; and (iii) Mohan’s
counterclaims be dismissed. Mohan moved for partial
summary judgment that 3M’s MASTER CARDIOLOGY
and CARDIOLOGY III marks were invalid.
The district court granted 3M’s partial summary
judgment motion and denied Mohan’s motion. 3M Co. v.
Mohan (“3M I”), No. 09-cv-01413, 2010 WL 3200052, at *3
(D. Minn. Aug. 9, 2010). The district court then held a
four-day bench trial on the remaining issues of trademark
infringement, permanent injunction, and attorneys’ fees.
The district court concluded that Mohan had engaged in
willful and deliberate infringement of 3M’s trademarks,
that a permanent injunction was warranted, and that this
was an exceptional case justifying the award of 3M’s
attorneys’ fees. 3M Co. v. Mohan (“3M II”), No. 09-cv-
01413, 2010 WL 5095676, at *1 (D. Minn. Nov. 24, 2010).
On January 19, 2011, the district court denied Mohan’s
motion for a new trial.
3M COMPANY v. MOHAN 4
Mohan filed a timely appeal before this court concern-
ing (i) whether the district court erred in rendering sum-
mary judgment, (ii) whether his right to a jury trial was
violated, (iii) whether the district court erred in finding
Mohan infringed 3M’s trademarks, and (iv) whether the
district court erred in its determination that the action
was “exceptional”. This court has jurisdiction under 28
U.S.C. § 1295(a)(1).
II
This court reviews the district court's grant of partial
summary judgment without deference. Int’l Visual Corp.
v. Crown Metal Mfg. Co., 991 F.2d 768, 770 (Fed. Cir.
1993). Summary judgment is appropriate only “if the
pleadings, depositions, answers to interrogatories, and
admissions on file, together with the affidavits, if any,
show that there is no genuine issue as to any material
fact and that the moving party is entitled to judgment as
a matter of law.” Fed. R. Civ. P. 56(c) (as in effect during
litigation). The evidence must be viewed in the light most
favorable to the nonmoving party. SRI Int'l v. Matsushita
Elec. Corp. of Am., 775 F.2d 1107, 1116 (Fed. Cir. 1985)
(en banc). To overturn summary judgment, the non-
movant need only show that one or more facts on which
the district court relied was genuinely in dispute and was
material to the judgment. Amini Innovation Corp. v.
Anthony Cal., Inc.¸ 439 F.3d 1365, 1368 (Fed. Cir. 2006).
However, conclusory statements alone do not raise a
genuine issue of material fact sufficient to defeat sum-
mary judgment. Applied Cos. v. United States, 144 F.3d
1470, 1475 (Fed. Cir. 1998); Sweats Fashions, Inc. v.
Pannill Knitting Co., Inc., 833 F.2d 1560, 1562-63 (Fed.
Cir. 1987).
In reviewing issues not within this court’s exclusive
jurisdiction, this court applies the law of the regional
5 3M COMPANY v. MOHAN
circuit, in this case the United States Court of Appeals for
the Eighth Circuit. See Cicena Ltd. v. Columbia Tele-
commc’ns. Grp., 900 F.2d 1546, 1548 (Fed. Cir. 1990).
The district court’s issuance of a permanent injunction
and award of attorneys’ fees on the grounds that the case
is exceptional is reviewed under an abuse of discretion
standard. See Cmty. of Christ Copyright Corp. v. Devon
Park Restoration Branch of Jesus Christ’s Church, 634
F.3d 1005, 1013 (8th Cir. 2011).
III
The district court did not err in granting 3M’s motion
for partial summary judgment. With respect to the ’865
patent, Mohan’s lone objection to the summary judgment
decision is that “the [district court] made a [f]actual
[f]inding that 3M’s patent was valid after a visual inspec-
tion that lasted several seconds.” Brief for Appellant 35.
He does not appeal the finding of infringement.
An issued patent is presumed valid. 35 U.S.C. § 282.
As the accused infringer, Mohan was required to present
clear and convincing evidence of invalidity to overcome
this presumption. Eli Lilly & Co. v. Barr Labs., Inc., 251
F.3d 955, 962 (Fed. Cir. 2001). Mohan relied solely on his
own testimony that a turkey baster anticipates the ’865
patent and that the claims of the ’865 patent were obvious
in view of a door hinge, eye dropper, gears, toilet plunger,
and a toothbrush. Appellee App. 0160. Mohan failed to
show that these items disclose or render obvious elements
of the asserted claims or that any of these asserted de-
vices would be considered pertinent by one of ordinary
skill in the art. Mohan’s conclusory assertions of patent
invalidity do not raise a genuine issue of material fact
sufficient to defeat summary judgment. Applied Cos., 144
F.3d at 1475. Therefore, this court affirms the district
court’s finding that the ’865 patent was not invalid.
3M COMPANY v. MOHAN 6
Similar evidentiary infirmities plague Mohan’s appeal
on trademark validity. The district court found 3M’s
marks to be suggestive, requiring some imagination to
connect the marks, “CARDIOLOGY III” and “MASTER
CARDIOLOGY,” with stethoscopes. See Frosty Treats Inc.
v. Sony Computer Entm’t Am. Inc., 426 F.3d 1001, 1004-
05 (8th Cir. 2005) (“Suggestive marks, which require
imagination, thought, and perception to reach a conclu-
sion as to the nature of the goods . . . are entitled to
protection regardless of whether they have acquired
secondary meaning.”). Mohan presented no evidence to
the contrary. While Mohan argues that 3M’s marks have
become generic and that 3M has abandoned these marks,
the district court correctly found that Mohan failed to
produce any meaningful evidence in support of these
assertions. Therefore, this court upholds the district
court’s grant of summary judgment on trademark valid-
ity.
IV
The district court’s decision to hold a bench trial on
the issue of trademark infringement did not violate
Mohan’s Seventh Amendment right to a jury trial because
the district court refused to grant 3M’s request for statu-
tory damages under the Lanham Act.
Following the entry of partial summary judgment for
3M, the district court held a bench trial on trademark
infringement, injunctive relief, statutory damages, and
attorneys’ fees. The district court recognized that the
right to a jury trial under the Seventh Amendment is
determined by the nature of the remedies at stake.
Entergy Ark, Inc. v. Neb., 358 F.3d 528, 545-46 (8th Cir.
2004). While 3M requested a judicially-determined award
of statutory damages, the district court found that, under
Eighth Circuit law, this request conflicted with Mohan’s
7 3M COMPANY v. MOHAN
Seventh Amendment right to a jury trial on statutory
damages. 3M II, 2010 WL 5095676, at *28. The district
court denied 3M’s claim for judicially determined statu-
tory damages under the Lanham Act.
Without its statutory damages claim, 3M only sought
to enforce its equitable rights and remedies under the
Lanham Act, and the Seventh Amendment does not apply
in suits seeking only equitable relief. See City of Monterey
v. Del Monte Dunes at Monterey, Ltd., 526 U.S. 687, 709-
11 (1999). This court rejects Mohan’s argument that a
permanent injunction operates as a de facto damages
award. The economic consequences of an injunction do
not transform it from a traditional equitable remedy into
a legal one.
Furthermore, 3M was not required to obtain Mohan’s
consent in order to withdraw its jury demand because
Federal Rule of Civil Procedure 38 does not apply when a
party decides to proceed only on equitable claims. See
Tegal Corp. v. Tokyo Electron Am., Inc., 257 F.3d 1331,
1341 (Fed. Cir. 2001). Thus, the district court’s finding of
trademark infringement and resulting permanent injunc-
tion did not violate Mohan’s Seventh Amendment right to
a jury trial.
V
Regarding trademark infringement, 3M was required
to show that there was a likelihood of confusion between
its marks and Mohan’s marks. See 15 U.S.C. § 1125(a).
To determine whether a likelihood of confusion exists, the
district court was required to consider the following
factors: (1) the strength of the trademark; (2) the similar-
ity between the plaintiff’s and defendant’s marks; (3) the
competitive proximity of the parties’ products; (4) the
alleged infringer’s intent to confuse the public; (5) evi-
dence of any actual confusion; and (6), the degree of care
3M COMPANY v. MOHAN 8
reasonably expected of the plaintiff’s potential customers.
See SquirtCo v. Seven-Up Co., 628 F.2d 1086, 1091 (8th
Cir. 1980). The district court’s determination regarding
likelihood of confusion is a question of fact reviewed for
clear error. Id.
The district court evaluated each of the SquirtCo fac-
tors, and the record supports its ultimate finding of
trademark infringement based on the likelihood of confu-
sion between 3M’s marks and Mohan’s marks. 3M pre-
sented evidence of confusion between the two marks
including survey data among nurses and doctors showing
a likelihood of confusion of 42 percent. 3M also presented
emails between consumers and Mohan in which Mohan
apologized for confusion regarding the source of the goods.
See 3M II, 2010 WL 5095676, at *21-22. While Mohan
challenges the fairness and quality of the survey data, he
has not presented any evidence supporting these chal-
lenges. Mohan raised similar arguments at trial, and the
district court found that “the survey was not substantially
flawed, and is accorded substantial weight.” See id.
Mohan’s arguments on appeal do not highlight error
sufficient to overturn this finding.
Mohan’s argument that the fair use doctrine protects
his uses of 3M’s marks is misplaced. Fair use under the
Lanham Act requires that the alleged infringer prove that
the use of the allegedly-infringing term is used “otherwise
than as a mark . . . or of a term or device which is descrip-
tive of and used fairly and in good faith only to describe
the goods or services of such party. . . .” 15 U.S.C. §
1115(b)(4). Here, the district court specifically found that
Mohan’s uses of 3M’s marks constituted counterfeiting
under the Lanham Act and that Mohan intended to
associate his stethoscopes with 3M’s goods and take
advantage of 3M’s fame. 3M II, 2010 WL 5095676, at *18,
20. Its “unequivocal finding of purposeful and egregious
9 3M COMPANY v. MOHAN
infringement unmistakably negates any possibility that
[Mohan’s] use of 3M’s marks constituted fair use.” 3M Co.
v. Mohan, No. 09-cv-01413, *5 (D. Minn. Jan. 19, 2011)
(order denying defendant’s motion for new trial). Mohan
has failed to show that the district court erred in making
this finding or that his use of the marks was actually in
good faith. Thus, he has not met his burden of proof
under the Lanham Act and cannot claim fair use as a
defense to his infringement of 3M’s marks.
VI
The Lanham Act authorizes “reasonable attorney fees
to the prevailing party” in “exceptional cases.” 15 U.S.C.
§ 1117(a). “Courts have defined the characteristics of
exceptional cases with adjectives suggesting egregious
conduct by a party.” Doctor's Assoc. v. Subway.SY,
L.L.C., 733 F. Supp. 2d 1083, 1088-89 (D. Minn. 2010)
(quoting Aromatique, Inc. v. Gold Seal, 28 F.3d 863, 877
(8th Cir. 1994)).
The district court determined that Mohan's conduct
was deliberate and willful, finding this case to be excep-
tional justifying an award of attorneys’ fees and costs. 3M
II, 2010 WL 5095656, *27-28. Mohan argues that the
award was baseless because his use of 3M's marks consti-
tuted fair use. As noted above, Mohan did not engage in
fair use of 3M’s marks. Furthermore, the district court
found that Mohan deliberately and knowingly counter-
feited 3M’s marks, sold goods with these counterfeit
marks, and intended to use 3M’s well-known marks in an
“attempt to free ride on the goodwill of the trademark
holder . . .” Id. at *27. Thus, the award of fees was justi-
fied in this case.
3M COMPANY v. MOHAN 10
VII
We have considered other arguments made on appeal
and find they provide no basis for relief. For the foregoing
reasons, the district court’s decision is affirmed.
AFFIRMED