Federal Circuit Clarifies Standard for Obviousness of Design Patents

18 May 2014 IP Litigation Current Blog

Practitioners involved with design patent litigation should take note of a recent decision by the Federal Circuit in MRC Innovations, Inc. v. Hunter Mfg., LLP, No. 2013-1433 (Apr. 2, 2014), where Federal Circuit clarified the standard for design patent invalidity discussed in last fall’s opinion in High Point Design LLC v. Buyers Direct, Inc., No. 2012-1455 (Fed. Cir. Sept. 11, 2013) (discussed previously here). MRC Innovations expounds on what is meant by the “verbal description” requirement articulated in High Point, discussing how that requirement can be satisfied by describing the patent in the context of comparing it to the prior art.

MRC sued Hunter Manufacturing and its supplier, CDI International, accusing them of infringement of two design patents for sports jerseys for dogs. The district court granted summary judgment in favor of Hunter and CDI on the ground that both patents were invalid as obvious. MRC appealed to the Federal Circuit.

The Federal Circuit began by reiterating the previously articulated obviousness standard for design patents, which is whether the claimed design would have been obvious to a designer of ordinary skill who designs articles of the type involved. This involves first determining whether one of ordinary skill would have combined teachings of the prior art to create the same overall visual appearance as the claimed design. This is a two-step process. First, the court must identify a single “primary reference” that is “something in existence, the design characteristics of which are basically the same as the claimed design.” “Basically the same” requires “consideration of the visual impression created by the patented design as a whole.” Once the primary reference has been determined, other secondary references “may be used to modify it to create a design that has the same overall visual appearance as the claimed design.” These secondary references must be “so related to the primary reference that the appearance of certain ornamental features in one would suggest the application of those features to the other.”

MRC argued that the district court overlooked three differences between an Eagles pet jersey that was used as the primary reference and the jersey patented by the ‘488 patent: (1) the patented design has a v-neck rather than a round neck; (2) the patented design contains an interlock fabric on the side instead of mesh; and (3) the patented design contains additional ornamental surge stitching on the rear portion of the jersey. MRC further argued that had the district court properly followed High Point and translated the claimed design into a verbal description, it would have concluded that there were no prior art references that were “basically the same” as the patented design.

The Federal Circuit acknowledged that the district court did not “expressly undertake to translate the claimed design into a verbal description,” but noted that High Point “makes clear that the purpose of requiring district courts to describe the claimed design in words is so that parties and appellate courts can discern the trial court’s reasoning in identifying primary references.” The Federal Circuit held that it was clear from the district court’s opinion what the district court considered to be the relevant design characteristics of the patented design. The district court had identified three important similarities between the patented design and the primary reference Eagles jersey: an opening at the collar portion for the head, two openings and sleeves stitched to the body for limbs, and a body portion on which a football logo is applied. The Federal Circuit noted that if the analysis had ended there, it might have failed to satisfy High Point’s verbal description requirement. However, the district court also noted two additional similarities: (1) that the Eagles jersey is made primarily of mesh and interlock fabric; and (2) that it contains ornamental surge stitching. The district court also acknowledged the three differences noted by MRC. The Federal Circuit found that by taking all the identified characteristics together (5 similar, 3 different), the district court painted a clear picture of the claimed design, and thus the district court “did not err by failing to provide an express verbal description of the claimed design; rather, it described the claim design in the context of comparing it to the prior art.”

The Federal Circuit also addressed the district court’s finding that two other jerseys could serve as secondary references because they suggested using a v-neck collar and non-mesh fabric on the side panels, which were two of the differences MRC pointed to between the patented design and the primary reference. MRC argued that the district court failed to explain why a skilled artisan would have chosen to incorporate those features. The Federal Circuit rejected this argument, reasoning that “it is the mere similarity in appearance itself that provides the suggestion that one should apply certain features to another design.” The secondary references cited by the district court were “so related” to the primary reference that the “striking similarities” between the three references would have motivated a skilled designer to combine them.

Although no reference contained the third feature that distinguished the patented design from the primary reference – the ornamental surge stitching specifically located on the rear of the jersey – the district court had concluded this was a de minimis change that was insufficient to overcome an obviousness challenge. The Federal Circuit  agreed with the district court that this was an insubstantial change that would have been obvious, and applied a similar analysis to the other asserted patent (directed to baseball dog jerseys).

MRC Innovations provides some additional welcome guidance to those asserting, or defending against, design patents. In particular, the opinion makes clear that no particular formulaic recitation is required in order to satisfy the “verbal description” requirement, and that a court may provide the necessary description in the context of an underlying invalidity analysis.

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