Honeywell International Inc. v. ICM Controls Corp. (45 F. Supp. 3d 969, 2014)

ORDER

JOAN N. ERICKSEN, District Judge.

Plaintiff Honeywell International Inc.’s (“Honeywell”) amended complaint in this action asserts 19 counts against Defendant ICM Controls Corp. (“ICM”) for alleged patent infringement, copyright infringement, Lanham Act violations, and a violation of Minn.Stat. § 325D.44. ECF No. 32. Honeywell’s complaint alleges that ICM has been selling “direct knockoffs” of four Honeywell combustion control products used for controlling heating appliances. The relevant Honeywell products include two “oil primary controls”—R8184 and R7184. An oil primary control controls the fuel oil for an oil-based furnace, water heater, or boiler. The other two Honeywell products are gas ignition controls— S8610U and S8910U. A gas ignition control controls the gas ignition of a gas furnace, water heater, or boiler. Honeywell sells its gas ignition controls in the residential and light commercial replacement market, as replacements for a variety of original equipment manufacturer (“OEM”) controls. It sells its oil primary controls in the residential and light commercial markets, as OEM and replacement units.

For each of Honeywell’s four products, the amended complaint identifies a corresponding control product sold by ICM. Honeywell contends that the ICM 1510 Series corresponds to Honeywell’s R7184, the ICM 1500 Series corresponds to Honeywell’s R8184, the ICM 290 corresponds to Honeywell’s S8610U, and the ICM 283 corresponds to Honeywell’s S8910U. ECF No. 32 at 4-7. These ICM products form the target of Honeywell’s trade dress infringement, false advertising, and state law claims. Honeywell alleges that certain installation manuals and labels for ICM’s control products infringe its copyright interests. Honeywell also asserts four patents against particular ICM control products and certain ICM thermostats used in connection with combustion controls.

The case is before the Court on three summary judgment motions filed by Defendant ICM, ECF Nos. 241, 247, 260, as well as motions filed by both parties to exclude the proposed testimony of multiple expert witnesses for failure to meet the admissibility requirements of Daubert v. Merrell Dow Pharmaceuticals, 509 U.S. 579, 113 S.Ct. 2786, 125 L.Ed.2d 469 (1993), ECF Nos. 227, 234, 253, 266, 273. The motions and their dispositions are as follows:

1. ICM’s motion for summary judgment of invalidity of U.S. Patent No. ' 5,812,061 (“'061 patent”), U.S. Patent No. 7,055,759 (“'759 patent”), and U.S. Patent No. 6,478,574 (“'574 patent”), ECF No. 247-—-The motion is granted with respect to the '574 patent and otherwise denied.

2. ICM’s motion for summary judgment of Honeywell’s false advertising (false designation of origin) claim, ECF No. 241—The motion is granted.

3. ICM’s motion for summary judgment of Honeywell’s trade dress infringement claims, ECF No. 260— The motion is granted.

4. Honeywell’s Daubert motion seeking to exclude testimony of Robert Stein, Leon Kaplan, and Adam Vac-zek, ECF No. 273—The motion is denied on mootness grounds as to Mr. Stein. It is denied without prejudice as to Dr. Kaplan. The motion is granted in part and denied in part as to Mr. Vaczek.

5. ICM’s Daubert motion to exclude the testimony of Akshay Rao, ECF No. 253—The motion is denied as moot.

6. ICM’s Daubert motion to exclude the testimony of Justin Hughes, ECF No. 227—The motion is granted.

7. ICM’s Daubert motion to exclude Carl Degen’s testimony on reasonable royalties for the alleged patent infringement, ECF No. 266—The motion is denied.

8. ICM’s Daubert motion to exclude miscellaneous testimony of David Schumacher, Carl Degen, and Thomas Gafford, ECF No. 234—The motion is denied as to Mr. Schu-macher and in part as to Mr. Gaf-ford on mootness grounds. The motion is denied as to Mr. Degen and in part as to Mr. Gafford without prejudice so that objections to particular testimony may be raised at trial, if appropriate.

DISCUSSION

The standards applicable to summary judgment as well as to Daubert motions are well established and well known. Summary judgment is proper “if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law.” Fed.R.Civ.P. 56(a). To support an assertion that a fact cannot be or is genuinely disputed, a party must cite “to particular parts of materials in the record,” show “that the materials cited do not establish the absence or presence of a genuine dispute,” or show “that an adverse party cannot produce admissible evidence to support the' fact.” Fed.R.Civ.P. 56(c)(l)(A)-(B). “The court need consider only the cited materials, but it may consider other materials in the record.” Fed.R.Civ.P. 56(c)(3). In determining whether summary judgment is appropriate, a court must view facts that the parties genuinely dispute in the light most favorable to the nonmovant, Ricci v. DeStefano, 557 U.S. 557, 586, 129 S.Ct. 2658, 174 L.Ed.2d 490 (2009), and draw all justifiable inferences from the evidence in the nonmovant’s favor, Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986).

Federal Rule of Evidence 702 governs the admissibility of expert testimony. It provides that

A witness who is qualified as an expert by knowledge, skill, experience, training, or education may testify in the form of an opinion or otherwise if:

(a) the expert’s scientific, technical, or other specialized knowledge will help the trier of fact to understand the evidence or to determine a fact in issue;

(b) the testimony is based on sufficient facts or data;

(c) the testimony is the product of reliable principles and methods; and

(d) the expert has reliably applied the principles and methods to the facts of the case.

Fed.R.Evid. 702.

The factors that a district court may consider in making reliability and relevancy determinations include: “(1) whether the theory or technique can be or has been tested; (2) whether the theory or technique has been subjected to peer review or publication; (3) whether the theory or technique has a known or potential error rate and standards controlling the technique’s operation; and (4) whether the theory or technique is generally accepted in the scientific community.” Russell v. Whirlpool Corp., 702 F.3d 450, 456-57 (8th Cir.2012) (citing Daubert, 509 U.S. at 593-94, 113 S.Ct. 2786). But the “evidentiary inquiry is meant to be flexible and fact specific, and a court should use, adapt, or reject Daubert factors as the particular case demands.” Unrein v. Timesavers, Inc., 394 F.3d 1008, 1011 (8th Cir.2005). As long as the expert’s proffered opinions appear reliable and relevant, no single requirement for admissibility exists. Id.

The “traditional and appropriate means of attacking shaky but admissible evidence” are “[vigorous cross-examination, presentation of contrary evidence, and careful instruction on the burden of proof.” Daubert, 509 U.S. at 596, 113 S.Ct. 2786. The Daubert inquiry should therefore focus on “principles and methodology” rather than on the “conclusions that they generate.” Daubert, 509 U.S. at 595, 113 S.Ct. 2786. Similarly, the factual basis of an expert’s opinion generally “goes to the credibility of the testimony, not the admissibility, and it is up to the opposing party to examine the factual basis for the opinion in cross-examination.” Bonner v. ISP Techs., 259 F.3d 924, 929-30 (8th Cir.2001) (quoting Hose v. Chicago Northwestern Transp. Co., 70 F.3d 968, 974 (8th Cir.1996)).

With these standards in mind, the Court turns to each of the motions.

1. ICM’s Motion for Summary Judgment of Invalidity of the '061 Patent, the '759 Patent, and the '574 Patent

ICM seeks summary judgment of invalidity of three of the four patents that Honeywell has asserted against it in this action. ICM contends that claims 1-4 and 9 of the '061 patent are invalid for failure to meet the enablement and written description requirements of 35 U.S.C. § 112, first paragraph. ECF No. 249 at 1. ICM alleges that claims 3, 7, and 8 of the '759 patent are invalid for lack of an adequate written description. Id. For the '574 patent, ICM takes the position that claim 1 is invalid for indefiniteness, i.e. for failure to meet the definiteness requirement of 35 U.S.C. § 112, second paragraph. Id. The relevant patent law and its application to ICM’s contentions about each of the three patents are discussed next.

A. Legal framework for assessing ICM’s claims of invalidity

A patent is presumed valid and a party challenging its validity bears the burden of establishing its invalidity. See 35 U.S.C. § 282(a). Invalidity must be established by clear and convincing evidence. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1354 (Fed.Cir.2010). The first paragraph of § 112 contains two separate description requirements: a written description requirement and an enablement requirement. Id. at 1344. The second paragraph of § 112 requires a patent specification to conclude with one or more claims “particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.” 35 U.S.C. § 112, ¶ 2. A patent claim that fails to meet the enablement, written description, or definiteness requirements of § 112 is invalid. Id. § 282, ¶ 2(3).

To meet the enablement requirement, the specification must enable one of ordinary skill in the art to practice the full scope of the claimed invention without undue experimentation. MagSil Corp. v. Hitachi Global Storage Techs., 687 F.3d 1377, 1380 (Fed.Cir.2012). The specification need not “describe how to make and use every possible variant of the claimed invention, for the artisan’s knowledge of the prior art and routine experimentation can often fill gaps, interpolate between embodiments, and perhaps even extrapolate beyond the disclosed embodiments, depending upon the predictability of the art,” but “when a range is claimed, there must be reasonable enablement of the scope of the range.” AK Steel Corp. v. Sollac, 344 F.3d 1234, 1244 (Fed.Cir.2003). Enablement is a question of law based on underlying factual determinations. Takeda Pharm. Co. v. Zydus Pharms. USA, Inc., 743 F.3d 1359, 1369 (Fed.Cir.2014).

To satisfy the written description requirement, the specification “must describe the invention sufficiently to convey to a person of skill in the art that the patentee had possession of the claimed invention at the time of the application, i.e., that the patentee invented what is claimed.” LizardTech, Inc. v. Earth Res. Mapping, Inc., 424 F.3d 1336, 1345 (Fed.Cir.2005); Ariad, 598 F.3d at 1351 (noting that disclosure is the “hallmark of written description” and so “possession as shown in the disclosure” is key). The test entails “an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art” as to whether the specification “describe[s] an invention understandable to that skilled artisan and show[s] that the inventor actually invented the invention claimed.” Ariad, 598 F.3d at 1351. Although a question of fact, compliance with the written description requirement is amenable to summary judgment when no reasonable jury could find in favor of the nonmoving party. PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1307 (Fed.Cir.2008). The enablement and written description requirements usually rise and fall together, LizardTech, 424 F.3d at 1345, but they need not necessarily, see Ariad, 598 F.3d at 1352. Both are evaluated as of the effective filing date of the patent. Id. at 1351; AK Steel, 344 F.3d at 1244.

The Supreme Court recently articulated the relevant standard applicable to the definiteness requirement of the second paragraph of § 112. See Nautilus, Inc. v. Biosig Instruments, Inc., — U.S. -, 134 S.Ct. 2120, 2128-30, 189 L.Ed.2d 37 (2014). Under that standard, a patent’s claims, when “viewed in light of the specification and prosecution history,” must “inform those skilled in the art about the scope of the invention with reasonable certainty.” Id. Recognizing that some “modicum of uncertainty” is the price to be paid for appropriate incentives for innovation, the Supreme Court nonetheless confirmed that a patent “must be precise enough to afford clear notice of what is claimed, thereby apprising the public of what is still open to them.” Id. (internal quotation marks omitted). Patents are not directed to lawyers or the public generally, but to those skilled in the relevant art. Id. Indefiniteness is, therefore, gauged from the perspective of one of skill in the art as of the time of patent application. See id. at 2130. Although an indefiniteness claim might have factual issues on which it depends, the determination is “a legal conclusion that is drawn from the court’s performance of its duty as the construer of patent claims.” See Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1347 (Fed.Cir.2005).

B. ICM’s claim of lack of enablement and written description for claims 1-4. and 9 of the '061 patent

ICM’s invalidity argument for the relevant claims of the '061 patent focuses on the term “value differentiator,” which first appears in the claims in independent claim 1. The '061 patent is titled “Sensor Condition Indicating System” and, in the words of the specification, the invention “comprises apparatus for signaling the approximate numeric value encoded in a variable input signal.” '061 patent col. 2 11. 62-64. In simplified terms, claim 1 of the patent provides that the apparatus includes (a) a “value differentiator” that receives an input signal and provides a “range signal,” reflecting which one of a set of predetermined, non-overlapping value ranges the input signal falls within; and (b) a “signaling unit” that receives the range signal and provides a human perceptible signal corresponding to the range signal received. Id. claim 1. The specification describes using the claimed invention in a furnace or boiler to generate a light or sound signal for signaling when the sensor that detects the presence of a flame in the furnace or boiler is malfunctioning. Id. col. 11. 44—col. 3 1.11.

Based on the specification’s definition of the term “value differentiator,” the Court previously construed the term as

a device that receives an input signal, categorizes'the signal into one of a plurality of preferably non-overlapping value ranges, and provides a range signal encoding one of a predetermined finite set of indicator values, where each of the indicator values corresponds to a single value range of the input signal.

EOF No. 67. In making both its enablement and written description arguments, ICM relies heavily on the following paragraph from the specification as setting out a very broad scope of the invention that is not adequately supported by the specification:

There are many different ways in which each of the components comprising the invention may be implemented. While shown here as for the most part arising from instruction execution by microprocessor 27, it is also possible to implement the invention as a custom circuit. The reader should understand that the specific implementation disclosed for these elements is likely one of literally hundreds, and that it is neither practical nor statutorily required to disclose each and every one of them in order to achieve the scope of patent protection to which I believe I am entitled. When a particular component not having a known presence in the art is first mentioned, its function will be described and my intent is to include any of these various embodiments within that description.

'061 patent col. 6 11. 14-27. ICM contends that the specification only discloses using a “microprocessor” or a “custom circuit” to function as the “value differentiator” of the claims, but the claims cover all sorts of other unnamed mechanisms to act as a value differentiator.

Despite the patent’s assertion that hundreds of other implementations may exist, ICM has not identified any that would fall within the scope of the term, but not be enabled or adequately described by the specification. While the term “value differentiator” does connote a broad scope, as it is effectively defined .in functional terms, ICM has not put forward adequate evidence to support a summary judgment determination that its full scope is not enabled or adequately described. Without a concrete example or description of the content allegedly covered but not enabled and disclosed, the requisite input for an invalidity inquiry is absent. For the enablement query of whether “undue experimentation” is required, the Federal Circuit has identified factors to consider such as “(1) the quantity of experimentation necessary, (2) the amount of direction or guidance presented, (3) the presence or absence of working examples, (4) the nature of the invention, (5) the state of the prior art, (6) the relative skill of those in the art, (7) the predictability or unpredictability of the art, and (8) the breadth of the claims.” In re Wands, 858 F.2d 731, 737 (Fed.Cir.1988). And the adequacy of the written disclosure supporting “generic claims” is evaluated by considering factors such as “the existing knowledge in the particular field, the extent and content of the prior art, the maturity of the science or technology, and the predictability of the aspect at issue.” Ariad, 598 F.3d at 1351 (internal quotation marks omitted). ICM has not made a showing on any of these factors. Rather, it seeks a determination that merely because the patent makes sweeping claims about the existence of many embodiments, not specifically discussed, it should be deemed invalid under the first paragraph of § 112.

ICM does not cite any ease in which a court has found a lack of enablement or written description in the abstract, based on unspecified, theoretical embodiments. Rather, those § 112 issues are typically presented with reference to a dispute over the relevant support for a concrete embodiment or genus. See, e.g., Sitrick v. Dreamworks, LLC, 516 F.3d 993, 999-1001 (Fed.Cir.2008) (confirming lack of enablement of a claim covering integration of a user’s audio signal or visual image into a pre-existing video game or movie, where the specification only taught the integration into video games and not movies); Auto. Techs. Int’l, Inc. v. BMW of N. Am., Inc., 501 F.3d 1274, 1285 (Fed.Cir.2007) (affirming summary judgment of inadequate enablement of a claim covering both mechanical and electronic side impact sensors, where specification only adequately enabled the mechanical sensors); Synthes USA, LLC v. Spinal Kinetics, Inc., 734 F.3d 1332, 1341-45 (Fed.Cir.2013) (affirming jury finding of inadequate written description of generically claimed “openings,” deemed to cover “slots,” where specification only described “grooves”); Regents of Univ. of Cal. v. Eli Lilly & Co., 119 F.3d 1559, 1568 (Fed.Cir.1997) (affirming determination of a lack of adequate written description for claims generically covering “vertebrate” or “mammal” insulin cDNA, where the specification only described “rat” insulin cDNA). In contrast, ICM has not identified any category of devices or applications that would qualify as “value differentiators” but that have not been adequately described or enabled. Without such an identification and a demonstration of the failure to meet the § 112 requirements, ICM cannot prevail on summary judgment. The passage on which it relies appears to be little more than a grandiose expression of the common hedging that appears in patent specifications to assert that other embodiments, not specifically disclosed, are covered by the claims.

C. ICM’s claim of lack of written description for claims 3, 7, and 8 of the '759 patent

ICM argues that claims 3, 7, and 8 of the '759 patent are invalid for failing to meet the written description requirement. The '759 patent is titled “PDA Configuration of Thermostats” and relates to “configuring, setting and adjusting of programmable thermostats of air management systems.” '759 patent col. 1 11. 6-9. The claims refer to configuring thermostats using a “portable configuring” apparatus or device and the specification discusses a PDA or “personal digital assistant” as an example of such a portable apparatus. See id. col. 1 11. 53-56. According to the summary in the specification, the invention “makes it possible for one at a convenient time at nearly any place to set and adjust” various parameters of an air management system, such as temperatures, humidity, sensor selection, volume of air movement, etc. Id. col. 1 11. 38-53.

For its argument of a lack of written description, ICM contends that the specification does not describe a “transfer” of configuration information from one air management system to another via the portable configuration apparatus, but claims 3, 7, and 8 refer to such a transfer. Claim 3 provides as follows:

A configuring system comprising: a portable configuring apparatus; and wherein: the portable configuring apparatus is connectable to each air management system of a plurality of air management systems; and the portable configuring apparatus may transfer a configuration of one air management system to another air management system of the plurality of air management systems.

Claim 7 provides:

A configuring system, comprising: one or more air management systems each including a local air management controller; and a portable configuring apparatus connectable to each local air management controller, the portable configuring apparatus adapted to transfer configuration information from at least one local air management controller to at least one other local air management controller.

Claim 8 depends on claim 7.

ICM contends that the specification only describes configuring a single thermostat using the portable device. It notes that the concept of a “transfer” between systems was added during prosecution. In particular, the original claims filed on August 18, 2003, did not refer to a transfer, but an amendment dated July 23, 2004, added it. ECF No. 37-5 at 124-29, 193-99. ICM also contends that the “transfer” element is missing from the specification such that summary judgment of invalidity for failure to meet the written description requirement is warranted. The Court disagrees.

While the specification’s detailed description focuses on configuration of a single thermostat, see e.g., '759 patent Figure 1, col. 6 1. 64—col. 8 1. 6, the summary does include content that could provide adequate written description support for the concept of transferring configurations between systems. In a single passage, the summary notes that configuration information from a controller of one system may be “uploaded to the PDA,” id. col. 111. 59-61, one “may configure, set and adjust” or do “other things” with the parameters, id. col. 2 11. 1-6, and “[t]hen one may take the PDA and go to the various thermostats, controllers, computers or other air management system control devices and upload the programs specific to the respective systems,” id. col. 2 11. 6-9 (emphasis added). The reference to a plurality of thermostats and systems that receive the configurations suggests that the configuration information previously loaded onto the PDA from one system could be transferred from the PDA to a different system.

ICM does not point to any part of the specification in which the inventors suggest that their invention does not cover transfers between systems of configuration information using the PDA, such that the written description might fail to support the later-claimed subject matter. Cf. Tronzo v. Biomet, Inc., 156 F.3d 1154, 1159 (Fed.Cir.1998) (pointing to statements in the specification distinguishing the conical shape of the invention from other shapes in the prior art as evidence of a lack of written description to support a claim that covered other shapes). A reasonable jury could conclude that the passage from the specification discussed above supports a finding of adequate written description for the concept of a transfer. ICM, therefore, has not met its burden of showing on summary judgment that claims 3, 7, and 8 are invalid for lack of written description.

D. ICM’s claim of indefiniteness of claim 1 of the '57U patent

ICM contends that claim 1 of the '574 patent is indefinite based on an apparent, and likely inadvertent, omission of some language. Claim 1 provides as follows:

In a burner control system having an igniter, motive means to direct fuel to be ignited, a flame detector to determine the occurrence of combustion and a safety lockout which, when activated, at least temporarily disables the system if fuel ignition does not occur within a predetermined time after occurrence of a predetermined one of energizing the igniter, energizing the motive means, and energizing both the igniter and the motive means, which safety lockout may undesirably delay completion of a system start-up sequence in certain predetermined situations where the system requires priming before the motive means can produce a necessary fuel flow, comprising:

switch means connected to the system and operable upon activation to produce a signal; and

timing means connected to receive the signal and operable to extend the time between occurrence of the predetermined one of energizing the igniter, energizing the motive means and energizing both the igniter and the motive means, and the imposing of the lockout condition to a value normally sufficient to allow priming of the system.

'574 patent claim 1 (emphasis added). ICM notes that the structure of claim 1 makes it apparent that some language is missing, likely just before the word “comprising.” The basic structure of claim 1, as written, is “[i]n a burner control system ..., comprising: switch means ...; and timing means.... ” ICM argues that the sentence lacks an “object” that comprises the “switch means” and “timing means.” ECF No. 249 at 9-10.

ICM points out that Honeywell has offered different phrases that could be the missing language. ICM contends that those phrases vary in terms of the claim scope that they imply and so the omitted language renders the claim indefinite. In connection with claim construction proceedings, one of Honeywell’s experts, Mr. Thomas Gafford, opined that claim 1 of the '574 patent is in so-called Jepson format and the missing language is “the improvement” or “the invention.” ECF No. 49 ¶¶ 53-59. Jepson format refers to a distinctive form of claiming an improvement to the prior art. See 37 C.F.R. § 1.75(e). ICM notes that Mr. Gafford now contends that one of skill in the art would understand that the missing language is “a controller.” See ECF No. 250-1 ¶ 146. ICM argues that the scope of the claim is not reasonably certain, because in Jepson format the preamble would be limiting, see Kegel Co. v. AMF Bowling, 127 F.3d 1420, 1426 (Fed.Cir.1997), while the use of “a controller” would result in the preamble not being a limitation. ECF No. 249 at 10.

Whether or not the preamble is limiting if “a controller” were the missing language is debatable. Nonetheless, the Court need not decide the issue, because the scope of the claim would differ based on the replacement term selected under either scenario. If, as ICM contends, use of “a controller” would not make the preamble limiting, then the scope of the claim differs if “a controller” were chosen, as compared to if “the improvement” or “the invention” were selected, because the Jepson format would render the preamble limiting. But even if the preamble were limiting with use of “a controller,” the scope of the claim under the two options differs. In particular, under a plain reading of the claim, the use of “improvement” or “invention” would imply that the elements following the term “comprising”— the switch means and the timing means— would not need to be part of the controller component of the system, while the choice of “controller” would restrict them to it.

A review of the intrinsic evidence shows that if the missing language is not “a controller,” but is “the improvement” or “the invention,” the comprising elements would not be constrained to the controller. According to the specification, the invention “relates to burner systems and more particularly to an oil burner system and control that will, when needed, provide for pumping of oil through the system in a manner to avoid going into safety lockout without overriding the safety function.” '574 patent col. 1 11. 6-11. The patent describes a typical prior art burner system, which includes a “primary controller.” Id. col. 1 11. 13-52. A reset button is provided to reset the controller after a safety lockout that typically occurs during initial set-up and other service circumstances, but is not necessary. Id. col. 1 1. 52—col. 2 1. 18. The invention primarily improves on the prior art by providing a “pump priming” or “pump purging” mode. Id. col. 2 11. 21-24. A service technician can place the primary control into that mode using a predetermined technique, for example by pushing and releasing the reset button during certain operation states. Id. col. 2 11. 52-58. The mode allows the “safety switch timing to be extended, for example, from 30 seconds to 4 minutes” so that the safety lockout may be avoided. Id. col. 2 11. 58-62.

The specification of the '574 patent does not use the terms “switch means” or “timing means” that appear in claim 1. But the function of the switch means in claim 1 as well as the characterization of “a switch” in claim 10 indicate that the “reset button” described in the specification is an example of a switch means. Significantly, for present purposes, the specification does not describe the reset button as necessarily part of the controller, although it allows for the possibility. See, e.g., id. Figure 1.

The '574 patent also refers to a “restricted lockout feature” and cites a co-pending application filed by the same inventors. Id. col. 2 11. 31-37. A review of the patent resulting from that application—U.S. Patent No. 6,413,078 ('078 patent)—shows that references in that patent also support a conclusion that unless a claim specifically limits it, the reset mechanism or switch means is not limited to the controller component of the burner control system. The '078 patent refers to the control as an “oil primary.” '078 patent col. 1 11. 9-10. The background of the invention of the '078 patent notes that a “reset button is provided in association with the oil primary.” Id. col. 111. 31-33 (emphasis added). The italicized language suggests that the reset button may or may not be part of the control. The detailed description of the '078 patent includes at least one reference that could be read as specifying it as a part of the control. Id. col. 3 11. 26-28 (noting that “oil primary 20 includes a user-actuatable reset input, commonly in the form of a reset button 26 connected to a switch”). Claim 1 calls for “a user reset connected as a part of the oil primary,” while claim 3 calls for “a reset control operatively connected to receive user reset commands.” (Emphasis added.)

Thus, the intrinsic evidence beyond the claim language does not constrain the “switch means” in claim 1 of the '574 patent to being part of the controller component of the burner control system. The lack of such a constraint implies that if the missing language in the claim were “the improvement” or “the invention,” the switch means, at a minimum, would not be limited to being part of the controller component of the system. But if the missing language in the claim were “a controller,” it would be because the term “comprising” follows. The intrinsic evidence shows that either option is a plausible one, as do the two submissions of Honeywell’s expert. Since the two options entail differing limitations for the claim, the missing language in claim 1 results in a lack of reasonable certainty as to its scope. The claim is invalid for lack of definiteness.

2. ICM’s Motion for Summary Judgment on Honeywell’s False Advertising (False Designation of Origin) Claim

ICM seeks. summary judgment on Honeywell’s claim for “false designation of origin” as alleged in Count XVIII of the amended complaint. With that count, Honeywell claims that ICM advertises its combustion control products as “Made in the USA” when they do not actually qualify as products made in the country. According to the reports of ICM’s experts, Adam Vaczek and Robert Stein, a significant part of the manufacturing of the relevant products—including the final assembly—occurs at a facility in Syracuse, NY. ECF No. 244-2: Ex. B at 66-68, Ex. D at 17-19. The conceptualization, design, testing, and other production activities also occur there. ICM acknowledges that some foreign components are incorporated into the products, but Mr. Stein puts the value of the foreign components at between 10.4 and 23.8 percent depending on the product and characterizes them as “commodity” components. ECF No. 244-2: Ex. D at 22. The report of Honeywell’s expert, Carl Degen, provides two other calculations. See ECF No. 305-8: Ex. 10 at Figures 2 and 2A. It designates foreign “materials” costs as ranging between 33.6 and 80.2 percent depending on the product. Id. at Figure 2. Once labor and other costs are added in, the report places the foreign content of various ICM products at between 19.4 and 52.9 percent. Id. at Figure 2A.

In light of the foreign content in ICM’s products, Honeywell alleges that ICM’s branding of them as made in this country makes ICM liable to Honeywell under § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a)(1)(B). In relevant part, § 1125(a)(1)(B) provides for a civil action against a person who uses “any false designation of origin” which “in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person’s goods, services, or commercial activities,” by “any person who believes that he or she is or is likely to be damaged by such act.” To establish a claim of false or deceptive advertising under the Lanham Act, a plaintiff must show: “(1) a false statement of fact by the defendant in a commercial advertisement about its own or another’s product; (2) the statement actually deceived or has the tendency to deceive a substantial segment of its audience; (3) the deception is material, in that it is likely to influence the purchasing decision; (4) the defendant caused its false statement to enter interstate commerce; and (5) the plaintiff has been or is likely to be injured as a result of the false statement, either by direct diversion of sales from itself to defendant or by a loss of goodwill associated with its products.” United Indus. Corp. v. Clorox Co., 140 F.3d 1175, 1180 (8th Cir.1998). A false statement that forms the basis of a Lanham Act claim typically falls into two categories: “(1) commercial claims that are literally false as a factual matter; and (2) claims that may be literally true or ambiguous but which implicitly convey a false impression, are misleading in context, or likely to deceive consumers.” Id.

“The standard for proving literal falsity is rigorous” and “only an unambiguous message can be literally false.” Buetow v. A.L.S. Enters., 650 F.3d 1178, 1186 (8th Cir.2011) (quoting Time Warner Cable, Inc. v. DIRECTV, Inc., 497 F.3d 144, 158 (2d Cir.2007)) (internal quotation marks omitted). A literal falsity argument fails when an advertisement can reasonably be understood as conveying different messages. Id. Moreover, “[t]he Lanham Act doctrine of literal falsity is reserved for an ad that is unambiguously false and misleading—‘the patently false statement that means what it says to any linguistically competent person.’ ” Id. (quoting Schering-Plough Healthcare Prods. v. Schwarz Pharma, Inc., 586 F.3d 500, 512 (7th Cir.2009)). If a statement is literally false, no extrinsic evidence of consumer deception is required. Time Warner Cable, 497 F.3d at 158; Schering-Plough, 586 F.3d at 512 (explaining that literal falsity avoids the need for “costly consumer surveys”).

When a claim is not literally false, but misleading, proof that the advertising actually conveyed the implied message and deceived a significant portion of the recipients “becomes critical.” United Indus. Corp., 140 F.3d at 1182-83. The success of such a claim then typically turns on the persuasiveness of a consumer survey. Id. The Eighth Circuit has gone so far as to state that “unless a commercial claim is literally false, or a trier of fact has determined that a competitor acted willfully with intent to deceive or in bad faith, a party seeking relief under this section of the Lanham Act bears the ultimate burden of proving actual deception by using reliable consumer or market research.” Id.

ICM contends that Honeywell cannot meet its burden to succeed on this claim because the statement “Made in the USA” is too ambiguous to be literally false under the facts involved and Honeywell lacks the requisite survey or market research evidence to establish the deception element. ICM also points to the dictionary definition of “made” and the evidence of its activity, including final processing and assembly, in Syracuse, N.Y. to contend that its statement is not false. Although ICM does not spend much time on literal falsity, Honeywell responds that the statement is actually literally false—so much so that summary judgment should be granted in Honeywell’s favor on the issue. Honeywell also includes an argument that even if it cannot succeed on literal falsity at this stage, ICM should not win because Honeywell has enough evidence of actual deception.

A. Literal falsity

The Court agrees with ICM that the phrase “Made in the USA” is not unambiguous enough in the context of this case for Honeywell to successfully establish a claim of literal falsity. It is telling that despite the pervasive use of “Made in the USA” labels on products, Honeywell does not point to a single case that has found the phrase unambiguous. The only case dealing with a “Made in the USA” claim that Honeywell relies on is a 1996 opinion from the United States District Court for the Eastern District of Wisconsin. See Master Lock Co. v. Hampton Prods. Int’l Corp., Civ. No. 96-213, 1996 U.S. Dist. LEXIS 19780 (E.D.Wis. Dec. 2, 1996). The Master Lock opinion applied the Federal Trade Commission’s (“FTC”) guidelines for “U.S. origin claims” to the Lanham Act claim in that case. See id. For a U.S. origin claim to pass muster with the FTC, the standard that the Commission has traditionally applied and that a 1997 policy statement reaffirms is that “all or virtually all” of the advertised product must be made in the United States. See FTC Enforcement Policy Statement on U.S. Origin Claims, 62 Fed.Reg. 63,756 (notice issued Dec. 2, 1997) (“FTC Policy Statement”). But Master Lock does not address the question of whether the phrase “Made in the USA” is unambiguous. See 1996 U.S. Dist. LEXIS 19780. And while an FTC policy statement is accorded due weight, Beggs v. Rossi, 145 F.3d 511, 512-13 (2d Cir.1998), a “Lanham Act plaintiff must show that the advertisements are literally false or misleading to the public, not merely that the advertisements violate FTC guidelines,” Millennium Imp. Co. v. Sidney Frank Importing Co., Civ. No. 03-5141, 2004 WL 1447915, at *6, 2004 U.S. Dist. LEXIS 11871, at *18 (D.Minn. June 11, 2004) (internal quotation marks omitted). Therefore, the Court will not convert the determination of whether ICM’s “Made in the USA” statements are literally false into an inquiry of whether they meet the FTC guidelines.

Moreover, the FTC Policy Statement itself shows that the phrase “Made in the USA” is not unambiguous enough to support a literal falsity theory for purposes of Honeywell’s Lanham Act claim. The 1997 statement explains that “[a] product that is all or virtually all made in the United States will ordinarily be one in which all significant parts and processing that go into the product are of U.S. origin.” FTC Policy Statement at 63,768. A minimum threshold under the standard is that “the final assembly or processing of the product must take place in the United States.” Id. As part of that minimum threshold, the FTC requires that the product should have been last “substantially transformed”—as that phrase is used by the U.S. Customs Service, see 19 C.F.R. §§ 134.1, 102.11—in the United States, because “consumer perception evidence” indicated that the “country in which a product is put together or completed is highly significant to consumers in evaluating where the product is ‘made.’ ” See id.

Beyond that threshold the FTC considers other factors, “including but not limited to the portion of the product’s total manufacturing costs that are attributable to U.S. parts and processing; and how far removed from the finished product any foreign content is.” Id. The statement does not spell out a fixed proportion for domestic and foreign manufacturing costs that delineates the line between products that can and cannot be properly tagged as made in the country. “Rather, the Commission will conduct this inquiry on a case-by-case basis, balancing the proportion of U.S. manufacturing costs along with the other factors discussed herein, and taking into account the nature of the product and consumers’ expectations in determining whether an enforcement action is warranted.” Id. at 63,769. Thus the FTC guidelines recognize that the propriety of a “Made in the USA” claim will be product and context specific, beyond the threshold consideration of whether final assembly or processing occurs in the country.

Therefore, even under the FTC guidelines, the Court does not find the disputed phrase sufficiently unambiguous for a determination of literal falsity in this case. And potential other articulations of what it means for a product to be “Made in the USA” exist. ICM points to a dictionary definition of the word “made” as “built, formed, or shaped in a specified way” to support its position that the definition entails that “Made in the USA” covers products built in the country even if they incorporate foreign components. Other federal regulations embody conceptions of what it means for a product to be made in a country. For example, the regulations applicable to a determination of whether “iron, steel, and manufactured goods” are “produced in the United States” for purposes of section 1605(a) of the American Recovery and Reinvestment Act of 2009 (“ARRA”), Pub.L. 111-5, include within the definition of a domestic manufactured good “a manufactured good that consists in whole or in part of materials from another country” that “has been substantially transformed in the United States into a new and different manufactured good distinct from the materials from which it was transformed.” 2 C.F.R. § 176.160(a). Similarly, the customs regulations applicable to imported goods incorporate a concept of “substantial transformation” in defining the foreign “country of origin” of a good. See 19 C.F.R. §§ 134.1, 102.11. ’ Such characterizations show that a statement that a product is made in a particular country does not have a universal and definitive meaning. In other words, the phrase “Made in the USA” is not unambiguous enough that Honeywell may pursue a theory of literal falsity in this case, where there appears to be no dispute that the final processing and assembly of the products occur in the United States.

B. Deception in the absence of literal falsity

With the literal falsity avenue foreclosed, Honeywell cannot prevail on its false advertising claim because it lacks adequate evidence to establish the element of deception under an alternative theory. As the Eighth Circuit has confirmed, under the present circumstances, Honeywell bears the burden of proving deception with reliable consumer or market research. United Indus. Corp., 140 F.3d at 1182-83. In particular, Honeywell would need to provide evidence of “what the person to whom the advertisement is addressed finds to be the message,” Time Warner Cable, 497 F.3d at 158, such that a determination of deception is possible in light of the actual content and processing of ICM’s products. Honeywell has not proffered reliable consumer or market research as to what the relevant purchasers understand by the phrase “Made in the USA,” and that ICM’s claim actually deceives or has a tendency to deceive them given the actual facts about ICM’s products.

Instead Honeywell primarily relies on the opinion of Dr. Akshay Rao, who is a Professor of Marketing at the University of Minnesota’s Carlson School of Management. See ECF No. 256-1: Ex. B. Honeywell cites Dr. Rao’s opinion in which he says that “contractors,” who the parties treat as the relevant consumers, “are likely to believe” that a “Made in the USA” claim “implies that 100% of the product and its components are manufactured” in the United States. Id. ¶ 30. As support, Dr. Rao cites the deposition testimony of Charisse Barber, which Honeywell also cites as evidence in its opposition to the present motion. Id.; ECF No. 303/304 at 16. Although not specifically identified, Ms. Barber appears to be involved in sales for Honeywell. She testified to a discussion with a contractor or contractors about the meaning of “Made in the USA” and stated that “[t]hey believe that the product is, you know, ultimately a hundred percent made in—in the United States, all of its components are made here.” ECF No. 305-3: Ex. 13 at 98-99. After referring to ICM’s promotional efforts, Dr. Rao concludes that based on ICM’s claims “contractors are likely to infer that 100% of the product, parts and labor are manufactured” in the country. ECF No. 256-1: Ex. B ¶ 30. Honeywell, however, has not made any showing that Dr. Rao conducted any research of actual contractors or that he has any relevant experience with such contractors. He only theorizes about what contractors “are likely to believe” and “likely to infer.” Id. Dr. Rao’s testimony, even combined with Barber’s deposition testimony, does not amount to “reliable consumer or market research” on what contractors understand by the phrase “Made in the USA” and whether they would find ICM’s use of that phrase for its products misleading.

Honeywell also points to studies by the FTC about general consumers’ perception of the phrase in connection with its 1997 Policy Statement. But those studies, performed in 1991 and 1995, see Request for Public Comment on Proposed Guides for the Use of U.S. Origin Claims, 62 Fed. Reg. 25,020, 25,035-37 (May 7, 1997), cannot get Honeywell over the summary judgment hurdle since they do not address what a contractor in the present-day understands by the phrase and whether that understanding is inconsistent with ICM’s use of it. Moreover, in summarizing its conclusions based on those various studies, the Commission found that “the consumer perception data indicate that many consumers may have only a general sense of what the phrase ‘Made in USA’ means rather than a highly refined view of how ‘Made in USA’ should be interpreted, i.e., whether a ‘Made in USA’ claim should be evaluated in terms of costs, processing, or in another manner.” Id. at 25037. The FTC Policy Statement itself acknowledges that beyond the minimum threshold requirement of final processing or assembly in the country, a customer’s understanding of the accuracy of a U.S. origin claim would depend on the product and the type, of content that was foreign sourced. Thus, the FTC material does not amount to market evidence by which ICM can establish its Lanham Act claim. Honeywell lacks sufficient evidence of deception from the relevant consumer group about the relevant products for the Court to allow Honeywell to proceed with its claim for false designation of origin. Count XVIII must be dismissed. See Am. Italian Pasta Co. v. New World Pasta Co., 371 F.3d 387, 390 (8th Cir.2004) (confirming that “[t]he failure to establish any element of the prima facie case is fatal”).

3. ICM’s Motion for Summary Judgment on Honeywell’s Trade Dress Infringement Claims

ICM seeks summary judgment on four counts of the amended complaint in which Honeywell alleges infringement under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a)(1)(A), of its trade dress interests in four control products. Provided that the requisite conditions are met, the Lanham Act creates protection for a product’s “trade dress,” which encompasses the packaging or “dressing” of a product as well as its design. See TrafFix Devices v. Mktg. Displays, 532 U.S. 23, 28, 121 S.Ct. 1255, 149 L.Ed.2d 164 (2001). Protected trade dress may be registered or unregistered. Wal-Mart Stores v. Samara Bros., 529 U.S. 205, 209-10, 120 S.Ct. 1339, 146 L.Ed.2d 182 (2000). Honeywell’s claimed trade dress for each of its four products is unregistered. To establish a claim for unregistered trade dress infringement, a plaintiff must demonstrate that the claimed trade dress (1) is distinctive; (2) is nonfunctional; and (3) its imitation would likely cause confusion for consumers as to the source of the product. Gateway, Inc. v. Companion Prods., 384 F.3d 503, 507 (8th Cir.2004). ICM contends, that Honeywell cannot meet its burden of establishing the nonfunctionality of its claimed trade dress.

Images of the four Honeywell products at issue are shown below:

For each Honeywell product that forms the basis for the trade dress claims, the amended complaint alleges that the product “has a distinct look and feel that includes without limitation the following elements, either alone or in combination:” and lists a series of elements. ECF No. 32 ¶¶ 33, 52, 65, 81. Honeywell’s brief opposing ICM’s motion on the trade dress claim initially characterizes the trade dress for each product as being comprised of the same set of elements “either alone or in combination.” See ECF No. 310/311 at 1-6. By the end of the brief, however, it is unclear whether Honeywell asserts a trade dress interest in anything less than a combination of the listed elements. See id. at 22-23. At the hearing on the motion, Honeywell confirmed that its claimed interest is in the combination of the identified elements.

The elements identified in the amended complaint and briefing for each of the four products are similar in nature. As a representative example, the elements listed for the R8184 are as follows:

• a gray case;

a raised and ridged circular bezel formed out of the case, located on the left side of the “face” of the product;

• a red circular reset button set inside the raised/ridged bezel;

• a black-and-white label with an orange warning bar immediately to the right of the red button;

• an LED indicator light nestled in the housing and located between the thermostat and flame-sensor connections along the right side of the unit; and

• the location and order of the thermostat and flame sensor quick-connect terminals on the right side of the unit.

ECF No. 32 ¶ 52; ECF No. 310/311 at 4-5.

At the outset, the Court acknowledges the striking similarity between the Honeywell products at issue and the corresponding ICM products that Honeywell alleges infringe its trade dress. As an example, the Honeywell R8184 and the ICM counterparts are shown below:

But “[tirade dress protection must subsist with the recognition that in many instances there is no prohibition against copying goods and products.” TrafFix, 582 U.S. at 29, 121 S.Ct. 1255. And, as a general matter, “unless an intellectual property right such as a patent or copyright protects an item, it will be subject to copying.” Id. The Supreme Court has also cautioned against misuse or overextension of trade dress. Id. Particular caution is warranted when extending protection to product designs and configurations. See Yurman Design, Inc. v. PAJ, Inc., 262 F.3d 101, 114-15 (2d Cir.2001); see also Aromatique, Inc. v. Gold Seal, 28 F.3d 863, 873 (8th Cir.1994) (“Our society is better served if functional containers- (as well as product designs and highly descriptive or generic terms) remain available for use among competitors. To the extent this causes a modicum of confusion of the public, it will be tolerated.”) (quoting In re Water Gremlin Co., 635 F.2d 841, 844 (C.C.P.A.1980)); Leatherman Tool Group, Inc. v. Cooper Indus., 199 F.3d 1009, 1013 (9th Cir.1999) (“Several other courts have noted that it is, and should be, more difficult to claim product configuration trade dress than other forms of trade dress.”).

The Lanham Act assigns the party asserting trade dress protection the burden of establishing that unregistered trade dress is not functional. See 15 U.S.C. § 1125(a)(3); Secalt S.A. v. Wuxi Shenxi Constr. Mach. Co., 668 F.3d 677, 683 (9th Cir.2012) (“Under the Lanham Act, Congress imposes a presumption of functionality, and plaintiff bears the burden of proving nonfunctionality.”). The line between functionality and nonfunctionality “is not brightly drawn.” Dippin’ Dots, Inc. v. Frosty Bites Distrib., LLC, 369 F.3d 1197, 1203 (11th Cir.2004) (internal quotation marks omitted); see also Eppendorf-Netheler-Hinz GMBH v. Ritter GMBH, 289 F.3d 351, 355-56 (5th Cir.2002) (observing that “the definition of ‘functionality has not enjoyed such clarity”). In TrafFix the Supreme Court provided some guidance on the subject. It confirmed that the “traditional rule” on functionality continues to apply. TrafFix, 532 U.S. at 33-35, 121 S.Ct. 1255. That rule, articulated in Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 850 n. 10, 102 S.Ct. 2182, 72 L.Ed.2d 606 (1982), provides that “[i]n general terms, a product feature is functional if it is essential to the use or purpose of the article or if it affects the cost or quality of the article.”

In Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, 165, 115 S.Ct. 1300, 131 L.Ed.2d 248 (1995), the Supreme Court expanded on the language from Inwood, saying “ ‘in general terms, a product 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,’ that is, if exclusive use of the feature would put competitors at a significant non-reputation-related disadvantage.” The appellate court decision under review in TrafFix had incorrectly interpreted the additional Quali-tex language regarding a “non-reputation-related disadvantage”—at times referred to as the “competitive necessity” test—as-creating a “necessary test” for, or a “comprehensive definition” of, functionality. TrafFix, 532 U.S. at 32-33, 121 S.Ct. 1255. In reversing the appellate court, the Supreme Court confirmed that Qualitex did not change the traditional nonfunctionality inquiry and “competitive necessity” is a proper consideration in cases of “aesthetic functionality.” Id.; Groeneveld Transp. Efficiency, Inc. v. Lubecore Int’l, Inc., 730 F.3d 494, 505-07 (6th Cir.2013).

Reading TrafFix and Qualitex together confirms that “the test for functionality proceeds in two steps.” Au-Tomotive Gold, Inc. v. Volkswagen of Am., Inc., 467 F.3d 1062, 1072 (9th Cir.2006); accord Louboutin v. Yves Saint Laurent Am. Holdings, Inc., 696 F.3d 206, 219-20 (2d Cir.2012). First, the traditional nonfunctionality inquiry as stated in Inwood is made. If no functionality is found under it, a second inquiry is made as to whether competitors would nonetheless be at a significant non-reputation-related disadvantage. See TrafFix, 532 U.S. at 32-33, 121 S.Ct. 1255. But “[wjhere 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.” Id.

Consistent with the treatment of the concept by other courts, the Eighth Circuit has traditionally used the notion of an “arbitrary embellishment” when discussing the concept of nonfunctionality of trade dress. See Gateway, 384 F.3d at 508. More specifically, the notion is that “trade dress is nonfunctional ‘if it is an arbitrary embellishment primarily adopted for purposes of identification and individuality. But if the trade dress is an important ingredient in the commercial success of the product, it is clearly functional.’ ” Id. (quoting Prufrock, Ltd. v. Lasater, 781 F.2d 129, 133 (8th Cir.1986)); see also Eppendorf-Netheler-Hinz, 289 F.3d at 355 (“[T]rade dress protection extends only to incidental, arbitrary or ornamental product features which identify the source of the product.”); Antioch Co. v. W. Trimming Corp., 347 F.3d 150, 158 (6th Cir.2003) (“[I]n order to receive trade dress protection for the overall combination of functional features, those features must be configured in an arbitrary, fanciful, or distinctive way.”).

For each controller product, a review of the elements identified by Honeywell as making up its trade dress shows that they relate to certain characteristics of components on the external body of the controllers. There does not appear to be any dispute that the components themselves servé a function. For example, for the R8184, the case serves to protect the internal components, the reset button is used to reset the device, the raised bezel protects the button, the label provides information (including manufacturer identity) or warnings, and the LED light operates as an indicator. For each product, Honeywell witnesses confirmed-that all of the external components have a function. EOF No. 263: Ex. A at 81:13-82:18 (R7184), Ex B at 67:5-10 (R8184), Ex. C at 78:4-88:20 (S8910U), 89:4-98:14 (S8610U). But what Honeywell contends forms its trade dress is not the components in and of themselves, but certain characteristics, such as the gray color of the case, the red color of the reset button, and the location relative to each other of the various components on the external body of the unit. All of the elements identified by Honeywell for each of the four products at issue can be categorized as relating to shape, color, or configuration. Thus the question before the Court is whether Honeywell has proffered sufficient evidence from which a reasonable jury could find that it has met its burden of overcoming the presumption of functionality of its claimed trade dress at both stages of the requisite inquiry.

A. Is the claimed trade dress essential to the use or purpose of the product or does it affect the product’s cost or quality?

For the shapes, colors, and configurations of its products, Honeywell has not made a showing that they are not functional under the traditional Inwood test—that the claimed trade dress is not essential to the use or purpose of the product and does not affect its cost or quality. Instead, Honeywell has focused exclusively on the competitive necessity approach, and has sought to establish the availability of alternative design choices. While the existence of alternative designs may still be relevant to the primary inquiry of functionality, Valu Eng’g, Inc. v. Rexnord Corp., 278 F.3d 1268, 1276 (Fed.Cir.2002), TrafFix makes clear that treating the competitive necessity test as the sole and comprehensive gauge—-without consideration of the purpose, use, cost, and quality aspects relevant to the primary inquiry-—-is error. But that is what Honeywell has done.

In its brief, Honeywell quotes the formulation of the nonfunctionality standard from Qualitex and uses the reference to an absence of a “significant non-reputation-related disadvantage” to frame its argument and presentation of evidence. See ECF No. 310/311 at 17. Honeywell first proffers testimony of its witnesses that repeatedly uses the buzzword “arbitrary” in describing the shape, color, and configuration of its products. See id. at 1-6. But a review of the cited testimony shows that the witnesses consistently used the term “arbitrary” to merely mean that multiple options exist for the particular shape, col- or, or configuration at issue. For the S8610U and S8910U products, Honeywell relies on the testimo