Federal Circuit IP

CeramTec GMBH v. CoorsTek Bioceramics LLC, FKA C5 Medical Werks, LLC

By Caitlin Thireault Published January 14, 2025

CAFC Opinion No. 2023-1502, Decided January 3, 2025

(Lourie, Taranto, Stark; Precedential)

Overview:  When worlds collide – statements made in a patent application can have unintended consequences on trademark protection.

Facts/Background;

  • CeramTec owns trademarks covering a pink color of ceramic hip components.
  • Adding chromium oxide (chromia) to the ceramic material causes various color changes, including pink, red, purple, yellow, or black depending on the chromia concentration.
  • In CeramTec’s (expired) patents, they assert that the addition of chromia enables the composition to have unprecedented levels of hardness, allowing their ceramic hip components to resist deformation.
  • CeramTec’s products include 0.33% chromia, which causes the ceramic to turn pink.
  • CoorsTek filed a cancellation petition with the TTAB on the grounds that the claimed pink color is functional.
  • After applying a four-factor test, the TTAB concluded that the pink color is functional and cancels the registrations. CeramTec appeals.

Issue:  Whether the pink color of CeramTec’s ceramic hip components is functional.

Federal Circuit Analysis:

  • Review: Legal conclusions reviewed de novo, factual findings upheld when supported by substantial evidence.
  • CeramTec argued that benefits allegedly taught in the patent are not specific to pink
  • CeramTec argued that chromia doesn’t actually provide material benefits to the ceramic and offered experiments disproving material benefits.
  • The Federal Circuit found that the patent teachings do not need to be specific to pink ceramic. The issued claims encompassed concentrations of chromia that would cause the ceramic to be pink, and further taught that such concentrations improved ceramic hardness, thus indicating the pink color is a utilitarian feature.
  • The Federal Circuit agreed with the TTAB’s finding that the experiments showing “no benefit” of adding chromia to ceramic were methodologically flawed.
  • Notably, there was also no evidence that ceramics of other colors had similar performance to that of the pink color.

Holding:  Affirmed.  Substantial evidence supports the TTAB’s factual findings.

Takeaways:

  • Avoid making unsubstantiated statements in patent applications.
  • Consider discussing trade dress with clients prior to filing a patent application, particularly if the invention has a corresponding visual component.