You are on page 1of 2

Orrick, Herrington & Sutcliffe LLP

51 West 52nd Street


New York, NY 10019-6142
+1 212 506 5000
June 26, 2018 orrick.com

BY CM/ECF Peter Vogl

E pvogl@orrick.com
D +1 212 506 3625
Elisabeth Shumaker, Clerk F +1 212 506 5151
United States Court of Appeals
For the Tenth Circuit
Byron White U.S. Courthouse
1823 Stout Street
Denver, CO 80257

Re: C5 Medical Werks, LLC v. CeramTec GmbH, No. 17-1173

Dear Ms. Shumaker:

CeramTec’s Rule 28(j) letter claims support from Moldex-Metric v. McKeon


Products, No. 17-1173 (9th Cir. June 22, 2016), but Moldex—which involves no
patent and a different type of functionality—is far afield.

First, Moldex does not somehow limit TrafFix’s strong presumption of


functionality to the “central advance” of a patent. CeramTec Ltr. 1. No patent was
at issue in Moldex, so TrafFix’s presumption was not even implicated. Moldex’s
mere observation that “the visibility of Moldex’s green color is not the ‘central
advance’ of a utility patent,” Op. 15, hardly supports CeramTec’s novel argument.
As C5 has explained, there is no “central advance” requirement. C5 Br. 30, 32-33.
Regardless, the district court found that chromium-based pink ceramic is the
central advance of CeramTec’s patent, C5 Br. 33, a finding CeramTec does not
contest, CeramTec Br. 13 (disclaiming factual challenges).

Second, CeramTec says “Moldex confirms that evidence of alternative colors” is


relevant to functionality. CeramTec Ltr. 1-2. But CeramTec neglects to mention
that Moldex involved questions of aesthetic functionality, Op. 16—in particular,
whether the color green itself is functional under the distinct functionality test in
Qualitex, which is not applicable here. Here the issue is solely utilitarian
functionality under TrafFix. And TrafFix explains that under that standard, in a
case with an expired utility patent, “[t]here is no need … to engage … in speculation
about other design possibilities.” 532 U.S. at 33.
Page 2

Under TrafFix, this case is simple. Because CeramTec’s patent claimed a


percentage of chromium oxide that always results in a pink material, the patent is
“strong evidence” of functionality, id. at 29, and there is “no need” to consider
alternative designs, id. at 33. Indeed, even Moldex acknowledges that “alternative
designs cannot negate … functionality” in the presence of “strong evidence.” Op. 11.
In any event, the record shows that there are no equivalent alternatives. C5 Br. 31-
32, 38. That is why CeramTec does not and cannot argue that the feature at issue
here is “arbitrary, incidental, or ornamental,” id.—a failing that fully resolves this
case under any standard.

Very truly yours,

/s/ Peter D. Vogl


Peter D. Vogl
Counsel for C5 Medical Werks, LLC

cc. Counsel of record (via CM/ECF)

You might also like