Michelin accused Maxam Tire of infringing a design patent and trade dress on large tires for mining truck, as well as unfair competition. Maxam moved to dismiss all claims. Judge Saris granted the motion with respect to the design patent claims. Maxam asserted that the poor quality photograph of one of the accused tires did not properly show the tread design, and that an actual look at the tire would show non-infringement. Maxam also pointed to its having obtained a design patent covering the accused tire tread over the Michelin patent.
Judge Saris noted that a later-issued patent is not presumptive evidence of noninfringement, which requires a factual analysis, and accordingly declined to consider the Maxam patents in her analysis. In response to Maxam’s complaint about the poor quality of the photographs in the complaint, Judge Saris ordered the parties to produce high-quality photographs of the accused mining tires.
Comparing these photographs to the design patent, Judge Saris determined that the design and the actual tire tread of one of the accused tires were sufficiently dissimilar to preclude a finding of infringement under the ordinary observer test. Accordingly, she dismissed the design patent claim as against one of the accused tires.
She denied Maxam’s motion on the remaining claims. She found that the complaint sufficiently alleged protectible and non-functional trade dress, although she noted that the non-functionality was in dispute. She rejected Michelin’s argument that the tire tread is “packaging” not requiring a showing of secondary meaning, finding the tread to be inherent to the actual physical tire. She found, however, that the complaint alleged enough facts to demonstrate (assuming these facts to be true) that the tread had acquired secondary meaning – specifically, length of use in the marketplace, marketing and advertising of the tread design, and copying by Maxam. She also determined that a jury could find the designs to be substantially similar to each other, meaning infringement was possible. She therefore allowed the trade dress claims to proceed.
Finally, as Maxam had made no separate arguments for dismissing the 93A claim, she allowed that to move forward as well.
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