Opposition Brief — Eppendorf-Netheler-Hinz GmbH v. Ritter GmbH

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No. 02-300 3 NOV 6 20°

IN THE CLER

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Supreme Court of the United States

EPPENDORF-NETHELER-HINZ GMBH,

Petitioner,

RITTER GMBH AND RK MANUFACTURING, INC.

Respondents.

On Petition for a Writ of Certiorari to the

United States Court of Appeals for the Fifth Circuit

BRIEF FOR RESPONDENTS IN OPPOSITION

WILLIAM J. UTERMOHLEN

OLIFF & BERRIDGE, PLC

277 South Washington Street

Suite 500

Alexandria, Virginia 22314

(703) 836-6400

Counsel for Respondents

RULE 29.6 STATEMENT

Neither Ritter GmbH nor RK Manufacturing, Inc.

have parent companies or publicly traded subsidiaries.

TABLE OF CONTENTS

Page

OPINION BELOW 5 ....wci<s:sesssconcusmanneasansealamanaeameman cnaaeiae 1

STATEMENT OF THREE CAGE scccccsecusieenenaneeeuens l

SUMMARY OF ARGUDERIGE scssissnsesseiserseeseemaiemninmaniocees 7

ARGUMENT ....00:0+0sesscesisenismesssesiliniaiiaiansel iene 8

Nt THERE IS NO CIRCUIT CONFLICT ........0:..s0s+0sss0. 8

Il. THERE IS NO NEED FOR THIS

COURT TO RECONSIDER THE

TRAF PIX CARE ..x:1scsccmscamcnmmnaaaen amin cana 10

CONCLUSION ..xiv-ssicxsseiscneonussiaiceinniilainenaiaiann enna 16

TABLE OF AUTHORITIES

Cases

Abercrombie & Fitch Co. v. Hunting World, Inc.,

Be We Se MN: OF a isscssicsessssvecseenedepseerscrgensscevssoesene 1]

Eppendorf-Netheler-Hinz GmbH v. Enterton Co.

Establishment, 89 F. Supp. 2d 483 (S.D.N.Y.

2000), aff'd, 14 Fed. Appx. 102 (2d. Cir. 2001)................. 3

Inwood Laboratories, Inc. v. Ives Laboratories, Inc.,

BP APNG PI OOO cnc snsisvenssespivvevenvantensvesesssemenesce 8,11, 12

QualitexCo. v. Jacobson Products Co.,

ee FO CN np cercnsssssnnisonnsvasundseosivevasvanversecdensvsases 11

Seabrook Foods, Inc. v. Bar-Well Foods, Ltd.,

Pe te Be AA, 1977) on oscsscsinsinrscevvescencsescecssecess 1]

Sunbeam Prods., Inc. v. Westbend Co.,

123 F.3d 246 (5" Cir. 1997)....ccccecccscsssssssssssscsscsccoseecescese. 15

TrafFix Devices, Inc. v. Marketing Displays, Inc.,

Ey te APOE Povasvevesnevenixvenssesesusseosiesscsesenreevesees passim

Valu Engineering, Inc. v. Rexnord Corp.,

BOM ode BLOW CPOE. CWT, 2O02Z).0...n.ccescsssecescossesessosecssenee 7,9

Wal-Mart Stores, Inc. v. Samara Brothers, Inc.,

Be | 11, 13, 14, 15

Statute

Ss MP os vcnsscncoverenasansenvensoesecaccecoemseccecesesces 14

Rule

I ai ieiees tr vartpcl rasamesorenissterevex sneer disdesnessbursisuieesirovaneowens +

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“Udine caer ee Niarls * witha

OPINION BELOW

The opinion of the United States Court of Appeals for

the Fifth Circuit is reported both at 289 F.3d 351 and at 62

USPQ2d 1534.

STATEMENT OF THE CASE

During the 1980s, petitioner Eppendorf-Netheler-

Hinz GmbH ("Eppendorf") introduced into the American

market a mechanical dispenser used to dispense liquids

repetitively. Eppendorf also marketed disposable plastic

syringes (sometimes called "pipette tips") that fit into the

Eppendorf dispenser and hold the liquids to be dispensed.

The Eppendorf dispenser became widely distributed among

users of such syringes, such as hospitals and laboratories.

DX151, DX453, T.648.

In 1990, a Polish company, HTL, introduced in the

U.S. the first competitive dispenser syringes that were

compatible with the Eppendorf dispenser. DX36. The HTL

syringes were unmarked and were of the same basic design

as the Eppendorf syringes. T.748/13-22. By 1994, HTL had

about 15% of the U.S. market. DX337.

In the early 1990s, respondent Ritter GmbH

("Ritter"), a German company with expertise in injection

molding, was approached by two companies who desired an

alternative source of supply for such syringes. T.212/6-17,

975/23-982/11, 144/1-6. After Ritter’s counsel confirmed

that no company had registered any rights in such products,

T.981/19-25; 997/19-998/1, 998/18-25, Ritter began making

and selling a similar dispenser syringe in Europe in 1993,

marked with the brand name "RITIPS," and priced below

Eppendorf's product. T.187/7-8, 975/23-982/11, 144/1-6,

PX2, DX28. Not long afterwards, Ritter also began

marketing its own dispenser, which, although much different

in general appearance from that of Eppendorf, used the same

basic interface arrangement, so that the syringes of all three

companies could be used interchangeably. PX17.

Eppendorf soon became aware of the Ritter syringe

and visited Ritter in November 1993. 1T.144/1-6; DX76.

DX337. Over the next year, a series of negotiations occurred

about a potential sale of Ritter's syringe business to

Eppendorf. In the meantime, Ritter introduced its dispenser

syringes into the American market in March 1994.

DX452:90/22-91/17; T.747/2-17. Eppendorf never claimed

at such meetings to have trade dress rights in its syringe

product configuration. 1.155/5-20. Indeed, Eppendorf

personnel testified that they did not then believe they had

any such rights. Eppendorf's marketing director Michael

Schroeder described the discussions:

Q. Did you make any reference to any nghts that

Eppendorf had?

A. No.

Q. Did you consider yourself to have any rights with

respect to Ritter and RK in the United States at that

time?

A. No.

DX452:98/7-25, 99/8-100/2. The sale discussions ended in

November 1994. DX440; T.149/7-24.

In response to the additional competition, Eppendorf

provided "private label" syringes to three large scientific

product distributors, which syringes were not identified as

originating with Eppendorf. DX38. A number of additional

~~ o ea

companies, including Brand, Gilson/Rainin, Jencons and

Nichiryo, also began marketing what became known as

"generic" syringes: syringes, like respondents’, compatible

with the typical dispenser interface. DX151:17. Each of

those syringes were of the same basic design as the

Eppendorf, HTL and Ritter syringes. DX140-48, 394-95.

On June 10, 1998, more than four years after

introduction of the Ritter product in the United States and

without any prior warning, Eppendorf brought this suit

against both Ritter and Ritter's U.S. distnbutor, RK

Manufacturing, Inc. ("RK"), asserting, inter alia, a trade

dress product configuration claim under the Lanham Act.

R.6; T.158/3-10; 752/7-9.

At the same time Eppendorf sued Ritter, Eppendorf

also brought suit against the American distributor for HTL.

That suit was dismissed on summary judgment on the ground

of laches. Eppendorf-Netheler-Hinz GmbH v. Enterton Co.

Establishment, 89 F. Supp. 2d 483 (S.D.N.Y. 2000), aff'd, 14

Fed. Appx. 102 (2d. Cir. 2001).

The suit against Ritter and RK proceeded to trial in

June 2000 before the United States District Court for the

Southern District of Mississippi. Eppendorf asserted that its

dispenser syringes had a non-functional trade dress, with

recognized secondary meaning, and that customers were

likely to be confused as to origin by the configuration of

respondents' "RITIPS" dispenser syringes. Respondents

denied those assertions and contended, inter alia, that

Eppendorf's alleged trade dress claims were subject to laches

and estoppel, and that any such nghts had been abandoned.

A jury found in favor of Eppendorf and respondents’ post-

trial motions were denied. Pet. App. 12a-15a.

Ritter and RK appealed to the United States Court of

Appeals for the Fifth Circuit, which ruled, on April 22, 2002,

that Eppendorf had failed to establish the non-functionality

of its alleged trade dress. In reaching its decision, the panel

relied on this Court's decision in TrafFix Devices, Inc. v.

Marketing Displays, Inc., 532 U.S. 23 (2001). The Fifth

Circuit rejected Eppendorf's petition for rehearing en banc on

May 24, 2002, no judge having requested a poll. App. 26a.

Pursuant to S. Ct. R. 15.2, respondents note the

following misleading or inaccurate statements of fact in

Eppendorf's petition:

A Eppendorf's alternative design evidence (see

Pet. 7) was based largely on the Combitips Plus, its second

generation dispenser syringe product, which had a pattern of

bumps provided on the flange in order to allow Eppendorf's

new dispenser to automatically sense the size of inserted

syringe. T.393/4-394/4, 1341/2-11, 1347/2-11; DX151:16.

The fins were also much larger than in the onginal

Combitips, and provided with a notch, in order to permit the

syringes to be set in a rack with that profile. T.363/16-24,

395/9-16. Accordingly, the alternatives posited were

designed differently for a functional reason.

y & As to every alleged trade dress element

asserted by Eppendorf (see Pet. 9), the design choice

reflected in its dispenser syringes was the simplest design

available. Simplicity is functional, as Eppendorf's witness

Dr. Husar admitted: "I think it is always desirable to have a

' Petitioner has omitted to include the district court's October 25,

2000 ruling on those motions in its Appendix.

simple design." T.393/16-19. Injection-molded plastic parts

are produced with steel molds cut into the proper shape by

machinists; good design criteria are to use simple geometric

shapes, without overhangs, that can most easily be cut into

the mold and which will use a minimum amount of plastic

consistent with function. T.1224/16-1225/7, 1231/10-14.

2. Alternative design approaches to Eppendorf's

asserted elements (see Pet. 7-9 & n.4) were not readily

available. For example, Ritter's syringes had to be

compatible with the Eppendorf dispenser, since many

customers already had that dispenser. T.393/11-15;

DX151:17. The fill lever of the Eppendorf dispenser had a

set travel distance, which limited the length of the liquid

holding receptacle of the syringe. T.1228/7-12. Given the

volume of the syringe, the basic dimensions of the barrel

were thus predetermined.

Volumes could not vary arbitrarily, because there

was a lockstep relationship between the overall volume of

the syringe and the five different dispensing volumes that

could be dispensed on the five settings of the dispenser (the

smallest setting being 1/50" and the largest being 1/10" of

the overall volume). T.419/6-423/14; DX419, 450.

Moreover, certain dispensing volumes were the ones most

popular with customers. For that reason, the 5 ml syringe

was by far the most popular size. DX416; T.1119/6-7.

Eppendorf tried to change one of its syringe sizes in the

move from the Combitips to Combitips Plus (12.5 ml to 10

ml), but the result was that it could not discontinue the

Combitips size because there were still customers that

wanted the volumes that could only be gotten from that size

syringe. T.1129/6-1130/21.

The tips below the barrel had to be compatible with

customers’ test tubes. Indeed, when Eppendorf tried to

change the length of the 5 ml Combitips Plus, there were so

many customer complaints that the change had to be

rescinded. DX453:1987; T.1121/19-1122/8. Similar

constraints applied to the other asserted elements.

4. Eppendorf's advertising did not focus on the

appearance of its dispenser syringes. (Pet. 5). Rather,

pictures of its syringes were included in advertisements that

focused on the utilitarian purposes of such syringes. PX27,

29 & 33.

. 3 The reference to the RITIPS as being direct

replacements to the Eppendorf syringe (Pet. 6) meant that the

RITIPS were compatible with the Eppendorf dispenser, or

other standard dispensers, permitting customers to switch

between the product lines. DX149. Eppendorf's claim that

the use of the term "direct replacement" was false advertising

was dismissed by the district court, and not appealed.

6. Eppendorf's evidence of secondary meaning

(Pet. 7) was very weak, despite its dominance of the market.

Eppendorf relied on a survey that, even after counting

identifications that failed to point to any physical aspect of

the appearance of the product and could have simply been

based on Eppendorf's well-known name, claimed only a 22%

recognition of Eppendorf's trade dress. DX446; T.536/23-

537/8, T.547/3-21, T.959/3-13. Another 22% of survey

respondents identified, as the source of the Eppendorf

syringe, companies that do not even make such dispenser

syringes. T.542/7-18; DX446.

: The photograph of Oxford syringes that is

attached to the petition without explanation (see Pet. 7 n.3; .

Pet. App. 31a) does not show syringes that were compatible

with the Eppendorf dispenser. DX442; T.534/18-536/3,

548/5-550/12, 1130/22-1131/14; DX151:17.

8. Respondents did not deny having copied

Eppendorf's product. See, e.g., T.603/1-4, 975/23-982/24.

Moreover, the photograph showing syringes from which the

name "eppendorf" had been removed was not "one of

[respondents'] own documents," but a photograph that had

been provided to Ritter by a customer to describe the type of

products that the customer desired Ritter to make. PX91;

T.1065/3-16.

SUMMARY OF ARGUMENT

There is no conflict between the decision of the Fifth

Circuit in this case and the decision of the Federal Circuit in

Valu Engineering, Inc. v. Rexnord Corp., 278 F.3d 1268

(Fed. Cir. 2002). The Federal Circuit affirmed a finding of

functionality by the Trademark Trial and Appeal Board and,

accordingly, did not hold that non-functionality may be

proven solely by evidence of hypothetical alternative

designs.

The Fifth Circuit below applied this Court's guidance

expressed in 7rafFix and did not misinterpret that decision.

Rather, petitioner has misinterpreted that decision as having

no relevance outside the context of product designs formerly

covered by a utility patent. Petitioner's contentions are an

attempt to reargue the issues laid to rest in 7rafFix and the

issues petitioner seeks to raise would not be dispositive of

this case.

ARGUMENT

I. THERE IS NO CIRCUIT CONFLICT

1. In Inwood Laboratories, Inc. v. Ives Laboratories,

Inc., 456 U.S. 844, 850 n.10 (1982), this Court articulated

the traditional test for functionality of a product feature

alleged to have a trade dress, i.e., that such a feature is

functional and cannot serve as a trademark "if it is essential

to the use or purpose of the article or if it affects the cost or

quality of the article." The decision of the Fifth Circuit in

this case simply applied the teaching of TrafFix that where a

plaintiff fails to meet his burden of establishing non-

functionality under that traditional rule, the availability of

alternative designs is irrelevant. To that end, the Fifth

Circuit quoted from a paragraph in this Court's opinion in

TrafF ix:

There is no need, furthermore, to engage, as did the

Court of Appeals, in speculation about other design

possibilities, such as using three or four springs which

might serve the same purpose. ... Here, the

functionality of the spring design means that competitors

need not explore whether other spring juxtapositions

might be used. The dual spring design is not an arbitrary

flourish in the configuration of MDI's product; it is the

reason the device works. Other designs need not be

attempted.

532 US. at 33-34. See 289 F.3d at 357 (Pet. App. 9a). The

Fifth Circuit summarized the evidence that each of the

elements on which Eppendorf relied were functional, noted

that Eppendorf's "theory of non-functionality focused on the .

existence of alternative designs," and concluded that "no

reasonable juror could conclude that Eppendorf carried its

burden of proving non-functionality.". 289 F.3d at 357-58

(Pet. App. 10a-1 1a).

2. Eppendorf points to the decision of the Federal

Circuit in Valu Engineering, Inc. v. Rexnord Corp., 278 F.3d

1268 (Fed. Cir. 2002), as allegedly being in conflict with the

Fifth Circuit's ruling in this case. However, the Federal

Circuit's Valu Engineering decision affirmed the Trademark

Trial and Appeal Board's refusal to register, on functionality

grounds, product designs for conveyor guide rails.

Accordingly, the Federal Circuit's decision does not stand for

the proposition that non-functionality can be established

solely through hypothesizing alternative designs. Rather,

both circuits are in agreement that, on the facts in the cases

before them, the proponents of non-functionality failed to

meet their burden of proof.

The Federal Circuit indicated, in dicta, that the

Board's having considered, as a factor favoring functionality,

the unavailability to competitors of functionally equivalent

designs was not error. See 278 F.3d at 1272 (describing

Board's finding) & 1276. The Federal Circuit also indicated,

however, consistent with both 7rafFix and the Fifth Circuit's

decision in this case, that a "feature cannot be given trade

dress protection merely because there are alternative designs

available." Jd. at 1276.

3. Petitioner brought its contentions about the

significance of the Federal Circuit's comments in Valu

Engineering to the attention of the Fifth Circuit by a

February 6, 2002 letter, but the Fifth Circuit did not even

mention that decision in its opinion, presumably recognizing

that nothing in the Federal Circuit's decision was relevant to

resolution of the present case. Petitioner again raised those

contentions unsuccessfully to the Fifth Circuit in its petition

for rehearing en banc.”

Il. THERE IS NO NEED FOR THIS COURT TO

RECONSIDER THE TRAFFIX CASE

1. Eppendorf's petition is, in effect, a request for

rehearing of the 7rafFix case, not a demonstration that the

Fifth Circuit deviated from the guidance this Court provided

in TrafFix. Petitioner seeks to construe the TrafFix

decision as limited solely to the context of alleged trade

dress features formerly covered by a utility patent. See Pet.

13-14, 18-19. In other words, petitioner would like to read

Part III out of the 7rafFix opinion.

In Part Ill of TrafFix, Justice Kennedy, for a

unanimous Court, indicated that the Court of Appeals’ failure

to give sufficient recognition to the evidentiary significance

of the expired utility patents "likely was caused by its

misinterpretation of trade dress principles in other respects."

532 U.S. at 32. In Part II of the opinion, the Court had given

an example of how non-functionality could be established:

Where the expired patent claimed the features in

question, one who seeks to establish trade dress

protection must carry the heavy burden of showing that

the feature is not functional, for instance by showing that

it is merely an ornamental, incidental, or arbitrary aspect

of the device.

? Petitioner's assertion that the resolution of the functionality issue |

is "outcome determinative" because the Fifth Circuit's reversal was

based solely on that ground, Pet. at 16, ignores the additional

issues respondents raised before the Fifth Circuit that were mooted

by that court's ruling as to functionality. See Br. Applts. at 1-2.

Id. at 30.° The Court returned to that thought in Part III of its

opinion, which manifestly was not limited to the expired

utility patent context:

The dual-spring design is not an arbitrary flourish in the

configuration of MDI's product; it is the reason the

device works. Other designs need not be attempted.

Id. at 34. The Court further commented that even the

existence of a utility patent would not necessarily suggest

functionality as to “arbitrary, incidental, or ornamental

aspects of features of a product found in the patent claims,

such as arbitrary curves in the legs or an ornamental pattern

painted on the springs." However, the Court explained that

"MDI has pointed to nothing arbitrary about the components

of its device or the way they are assembled." The 7; rafFix

opinion thus repeatedly pointed to the existence or absence

of arbitrary, incidental or ornamental aspects of an alleged

product configuration trade dress as reliable indicia of

whether or not the trade dress is functional. *

Moreover, the 7rafFix decision made very clear that

where, as here, aesthetic functionality is not the issue,

substitution of the Qualitex "significant non-reputation-

related disadvantage" analysis, or any similar analysis, for

the traditional test articulated in Jnwood is not appropriate:

> This ornamental, incidental, or arbitrary terminology harks back,

of course, to the seminal definition of trademarks provided in

Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 10-

11 (2d Cir. 1976), which treated "arbitrary," "fanciful" or

"suggestive" word marks as inherently distinctive. "Ornamental"

was a term applied to product packaging in Seabrook Foods, Inc.

v. Bar-Well Foods, Ltd., 568 F.2d 1342, 1344 (C.C.P.A. 1977).

See Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205,

210-14 (2000).

Where the design is functional under the Inwood

formulation there is no need to proceed further to

consider if there is a competitive necessity for the

feature.

532 U.S. at 33. Again, this clarification was expressly made

applicable regardless of the presence or absence of a utility

patent:

Whether a utility patent has expired or there has been no

utility patent at all, a product design which has a

particular appearance may be functional because it is

"essential to the use or purpose of the article" or "affects

the cost or quality of the article."

Id. at 35. The Fifth Circuit was, thus, correct to reject

application to this case of its "utilitarian" test, which it

characterized as "virtually identical to the ‘competitive

necessity’ test discussed in TrafFix." 289 F.3d at 356 (Pet.

App. 7a).

The Fifth Circuit concluded that "[e]ach of the eight

design elements identified by Eppendorf is essential to the

use or purpose of the Combitips, and are not arbitrary or

ornamental features."* That conclusion was based on the test

re-emphasized in TrafFix and the factors considered germane

by TrafFix. Petitioner's assertion that the Fifth Circuit

departed from this Court's opinion in 7rafFix is without

merit.

2. Petitioner's remaining arguments are an attack on

the principles enunciated in 7rafFix as allegedly sounding

* So in original and in the version published at 62 USPQ2d 1534,

1538. The version published in F.3d and repeated in the

petitioner's appendix (11a) substitutes "is not arbitrary" for "are

not arbitrary."

the death knell of product design trade dress protection.

However, that attack is both based on a myopic view of the

role of product design trade dress and fails to identify any

actual problems that have arisen to date on account of the

Court's analysis-in TrafFix. In particular, petitioner's second

proposed question for certiorari merely seeks an advisory

opinion about the future effect of the TrafFix decision

without demonstrating either that the present case turns on

the answer to the question posed or that future cases are

likely to turn on such an !ssue.

Petitioner's argument treats any contraction of the

scope of trade dress protection as ipso facto contrary to

public policy, see, e.g., Pet. 20 n.12, through disregarding the

considerations that caused this Court in 7rafFix to "caution

against misuse or over-extension of trade dress" in that

"product design almost invariably serves purposes other than

source identification." 532 U.S. at 29 (quoting Wal-Mart

Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205, 213

(2000)). Petitioner's recitation of facts emphasizes the

alleged secondary meaning of its syringes, asserted to have

been "backed by extensive advertising and promotion that

focused on their appearance," as well as the three years said

to have been invested in the "design and development" of its

syringes. Pet. 5-7. Such considerations misconceive the role

of trade dress. As this Court indicated in 7rafFix, in a

passage echoed by the Fifth Circuit:

Trade dress protection must subsist with the

recognition that in many instances there is no prohibition

against copying goods and products. In general, unless

an intellectual property mght such as a patent or

Id.; see 289 F.3d at 355 (Pet. App. 5a). This Court further

explained that considerations like those emphasized by

petitioner cannot form the basis of trade dress protection:

The Lanham Act does not exist to reward manufacturers

for their innovation in creating a particular device; that is

the purpose of the patent law and its period of

exclusivity. The Lanham Act, furthermore, does not

protect trade dress in a functional design simply because

an investment has been made to encourage the public to

associate a particular functional feature with a single

manufacturer or seller.

532 US. at 34-35.

Petitioner also does not mention that there are

alternative means to advance the interests served by trade

dress protection. Traditional trademarks generally are more

effective than product shapes in identifying the source of

products to consumers, particularly given the ordinary

assumption of consumers that a product shape has a purpose

other than source-signification. See Wal-Mart, 529 US. at

213. In addition, design patent or copyright protection may

be sought. /d., at214. Moreover, when too broadly defined,

trade dress becomes an opportunity for a large, well-financed

competitor to strong arm its competition. See Wal-Mart,

529 US. at 213-24.

Eppendorf fails to demonstrate that this Court needs

to revisit trade dress issues for the third time in three years in

order to expound on the parameters of functionality set forth

in TrafFix. That decision did much to clanfy the law of

functionality, as did Congress's 1998 decision to place the

explicit burden of proof as to that issue on the proponent of

trade dress. See 15 U.S.C. § 1125(a)(3). There has not yet

been adequate opportunity for the implications of the TrafFix

and Wal-Mart decisions to be absorbed, applied and refined

by the lower courts.

Petitioner has not raised issues that suggest this case

should serve as a vehicle to again address the functionality

doctrine. Eppendorf alleges that the Fifth Circwit did not

give adequate attention to its claimed trade dress considered

as a whole, Pet. 17-18, 19 n.11, but the Fifth Circuit found

that Eppendorf failed to demonstrate the non-functionality of

each of the eight trade dress elements it sought to prove at

trial. 289 F.3d at 357-58 (Pet. App. 11a) ("all eight design

elements identified by Eppendorf are essential to the

operation of the Combitips").

A trade dress wholly made up of functional elements

could be eligible for trade dress protection only in the

unlikely event that there was something arbitrary and non-

functional about the arrangement of those elements. There

was no evidence of that in this case. The flange on

Eppendorf's syringes was located where it was located

because it had to fit into the dispenser at that location.

Likewise, the fins under the flange had to be under the flange

in order to give the flange support. The same is true for the

other elements.

If there were any merit to Eppendorf's argument that

the whole of its trade dress is greater than the sum of its

elements, the Fifth Circuit could have ruled for Eppendorf

based on existing law. See, e.g., Sunbeam Prods., Inc. v.

Westbend Co., 123 F.3d 246, 256-57 (5" Cir. 1997).

Nothing in T7rafFix suggests that such issues cannot be

considered by courts and nothing in the Fifth Circuit's

decision suggests that it so construed T7rafFix. Instead,

Eppendorf's product was a plastic syringe of uncomplicated,

geometric design that simply did not lend itself to trade dress

protection, considered element by element or as a whole.

There is no need for this Court to clarify the law as to such

issues or to revisit that essentially factual question.

CONCLUSION

The petition for a writ of certiorari should be denied.

November 6, 2002 Respectfully submitted,