MRC Innovations, Inc. v. Hunter Mfg., LLP
Addressing the nature of analyzing primary and secondary references for purposes of determining whether a design patent is obvious, the U.S. Court of Appeals for the Federal Circuit affirmed a district court’s summary judgment of invalidity with respect to two ornamental designs of sports jerseys intended to be worn by dogs, finding that the district court did not err by failing to provide an express verbal description of the claimed design. MRC Innovations, Inc. v. Hunter Mfg., LLP, Case No. 13-1433 (Fed. Cir., Apr. 2, 2014) (Prost, J.).
Mark Cohen, the principal shareholder of MRC, is the named inventor on two design patents relating to football and baseball jerseys for dogs. Prior to the suit, Hunter Manufacturing purchased dog jerseys from Cohen and his companies. When Cohen informed Hunter that he would no longer sell to Hunter over payment issues, Hunter sought and found alternative suppliers. Soon after, Cohen, through MRC, sued Hunter for design patent infringement. The district court found the two design patents invalid as obvious on Hunter’s motion for summary judgment. MRC appealed.
MRC argued on appeal that there were significant differences between the primary references and the patented designs. Specifically, Hunter pointed to three distinct differences from the primary reference: a V-neck collar versus a round neck, an interlock fabric panel on the side rather than mesh and ornamental stitching on the back. MRC argued that these differences would have been apparent if the district court had translated the claimed design into an express verbal description.
The Federal Circuit considered whether the claimed design would have been obvious to a designer of ordinary skill, an inquiry which entails combining a primary reference with secondary references. Primary references must be a single reference with “basically the same” characteristics of the claimed design. Determining whether a reference is basically the same requires consideration of the visual impression of the patented design as a whole and may be determined “almost instinctively” by a judge. Citing to its decision in High Point (IP Update, Vol. 16, No. 10), the Court explained that in evaluating a primary reference, the district court must describe the claimed design in words so the parties and appellate courts can determine the district court’s reasoning. The Federal Circuit concluded, however, that this description does not have to be express if the district court is clear in defining the relevant design characteristics.
Here, the Federal Circuit found that the district court’s identification of five similarities and three differences between the claimed design and primary reference was sufficient to paint a clear picture of the claimed design. The Court also agreed that the claimed design created “basically the same” overall visual impression as the primary reference.
The Federal Circuit also addressed MRC’s argument that the district court failed to explain why a designer would combine the primary and secondary references. The Court found that the mere similarity in appearance itself provides the suggestion to combine. Further, the Court found that because all the references were dog jerseys, they fulfilled the requirement that the references be “so related.” The Court rejected MRC’s argument that even if the combination was proper, it did not contain the presence of additional ornamental surge stitching running down the rear of the jersey, finding that this feature was de minimis and would have been obvious in light of the references.
The Federal Circuit further agreed that MRC’s secondary considerations relating to commercial success, copying and acceptance by others did not alter the analysis. MRC failed to provide sufficient evidence and did not demonstrate a nexus between the claimed design and the secondary considerations.