Design Patents Go to the Dogs: District Court Not Required to Provide an Express Verbal Description of the Claimed Design

by McDermott Will & Emery

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.



DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© McDermott Will & Emery | Attorney Advertising

Written by:

McDermott Will & Emery

McDermott Will & Emery on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Privacy Policy (Updated: October 8, 2015):

JD Supra provides users with access to its legal industry publishing services (the "Service") through its website (the "Website") as well as through other sources. Our policies with regard to data collection and use of personal information of users of the Service, regardless of the manner in which users access the Service, and visitors to the Website are set forth in this statement ("Policy"). By using the Service, you signify your acceptance of this Policy.

Information Collection and Use by JD Supra

JD Supra collects users' names, companies, titles, e-mail address and industry. JD Supra also tracks the pages that users visit, logs IP addresses and aggregates non-personally identifiable user data and browser type. This data is gathered using cookies and other technologies.

The information and data collected is used to authenticate users and to send notifications relating to the Service, including email alerts to which users have subscribed; to manage the Service and Website, to improve the Service and to customize the user's experience. This information is also provided to the authors of the content to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

JD Supra does not sell, rent or otherwise provide your details to third parties, other than to the authors of the content on JD Supra.

If you prefer not to enable cookies, you may change your browser settings to disable cookies; however, please note that rejecting cookies while visiting the Website may result in certain parts of the Website not operating correctly or as efficiently as if cookies were allowed.

Email Choice/Opt-out

Users who opt in to receive emails may choose to no longer receive e-mail updates and newsletters by selecting the "opt-out of future email" option in the email they receive from JD Supra or in their JD Supra account management screen.


JD Supra takes reasonable precautions to insure that user information is kept private. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. However, please note that no method of transmitting or storing data is completely secure and we cannot guarantee the security of user information. Unauthorized entry or use, hardware or software failure, and other factors may compromise the security of user information at any time.

If you have reason to believe that your interaction with us is no longer secure, you must immediately notify us of the problem by contacting us at In the unlikely event that we believe that the security of your user information in our possession or control may have been compromised, we may seek to notify you of that development and, if so, will endeavor to do so as promptly as practicable under the circumstances.

Sharing and Disclosure of Information JD Supra Collects

Except as otherwise described in this privacy statement, JD Supra will not disclose personal information to any third party unless we believe that disclosure is necessary to: (1) comply with applicable laws; (2) respond to governmental inquiries or requests; (3) comply with valid legal process; (4) protect the rights, privacy, safety or property of JD Supra, users of the Service, Website visitors or the public; (5) permit us to pursue available remedies or limit the damages that we may sustain; and (6) enforce our Terms & Conditions of Use.

In the event there is a change in the corporate structure of JD Supra such as, but not limited to, merger, consolidation, sale, liquidation or transfer of substantial assets, JD Supra may, in its sole discretion, transfer, sell or assign information collected on and through the Service to one or more affiliated or unaffiliated third parties.

Links to Other Websites

This Website and the Service may contain links to other websites. The operator of such other websites may collect information about you, including through cookies or other technologies. If you are using the Service through the Website and link to another site, you will leave the Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We shall have no responsibility or liability for your visitation to, and the data collection and use practices of, such other sites. This Policy applies solely to the information collected in connection with your use of this Website and does not apply to any practices conducted offline or in connection with any other websites.

Changes in Our Privacy Policy

We reserve the right to change this Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our privacy policy will become effective upon posting of the revised policy on the Website. By continuing to use the Service or Website following such changes, you will be deemed to have agreed to such changes. If you do not agree with the terms of this Policy, as it may be amended from time to time, in whole or part, please do not continue using the Service or the Website.

Contacting JD Supra

If you have any questions about this privacy statement, the practices of this site, your dealings with this Web site, or if you would like to change any of the information you have provided to us, please contact us at:

- hide
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.