In MRC Innovations, Inc. v. Hunter Mfg., LLP, No. 2013-1433 (Fed. Cir., Apr. 2, 2014), the Federal Circuit addressed the obviousness of patents covering ornamental designs for dog jerseys. In doing so, the analysis raises questions about whether the Federal Circuit has fully moved beyond the at times dismissive approach to design patents that has characterized some of its decisions in years past.
MRC Innovations, Inc. (MRC) owns two design patents, D634,488 (“the ‘488 patent”) and D634,487 (“the ’487 patent”) for an ornamental design for a football and baseball jersey for a dog, respectively.
Figures from the ‘488 patent are reproduced below:
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Figures from the ’487 patent are reproduced below:
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MRC appealed the grant of a summary judgment of obviousness of both patents issued by Judge Gaughan from the Northern District of Ohio. The district court specifically found the ‘488 patent invalid over a prior art jersey referred to as the V2 and an Eagles jersey. Reproduced below are images of the V2 jersey and Eagles jersey, respectively, as shown in the Federal Circuit’s opinion. Slip Op. at 4.
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The Federal Circuit further agreed that the secondary references identified by the District Court (the V2 jersey and another reference known as the “Sporty K9”) were “‘so related’ to the Eagles jersey that the striking similarity in appearance across all three jerseys would have motivated a skilled designer to combine features from one with features of another.”
Finally, the Federal Circuit stated that MRC “had not established a nexus between the secondary considerations and the claimed design that was sufficient to overcome the other evidence of obviousness.”
A similar analysis was performed for the ’487 patent which again resulted in the Federal Circuit affirming the district court’s decision that the ‘487 patent was obvious in view of the prior art. A side by side comparison of the ’487 patent and the Sporty K9 baseball jersey which was used as the primary reference is reproduced below from Appellant’s Opening brief (p. 35).
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Setting aside the ultimate conclusion of obviousness at the summary judgment stage, several statements in the opinion are troubling. The first lies with two gratuitous, though often repeated, statements from earlier design patent opinions. These statements have rankled design patent owners in the past, but are apparently alive and well. The second concern lies with the Federal Circuit’s discussion of features found to constitute similarities between the ‘488 patent design and the prior art.
The first gratuitous statement relates to the scope of design patents generally. Specifically, in 1988 the Court in In re Mann stated that design patents have “almost no scope.” Slip op. at 9, fn. 1, citing 861 F.2d 1581, 1582 (Fed. Cir. 1988). While the MRC decision goes on to point out that differences in visual appearance have been permitted in an infringement analysis, citing to the Crocs case from 2010, the question is why the Court felt the need to reference In re Mann at all. More fundamentally, the statement in In re Mann cannot withstand scrutiny when considered in light of the U.S. Supreme Court’s bedrock decision in Gorham v. White, the statute (35 USC § 289), and the Federal Circuit’s en banc decision in Egyptian Goddess.
In Gorham, the Supreme Court found infringement of spoons that differed in numerous respects from the claimed design. In doing so, the Supreme Court did not say that design patents have almost no scope. Instead, the Supreme Court took quite the opposite approach and criticized the lower court for using too exacting of a standard for comparing the accused products to the patented design. The Supreme Court held that “if, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other.” 81 U.S. 511, 528 (1872).
The In re Mann statement is also out of tune with the Federal Circuit’s statement in Pacific Coast Marine Windshields v. Malibu Boats. 739 F.3d 694 (Fed. Cir. 2014). In Malibu Boats the Court pointed out that an infringement analysis of a design patent effectively involves both literal infringement and infringement by equivalents due to language of 35 U.S.C. § 289. It stated:
For design patents, the concepts of literal infringement and equivalents infringement are intertwined. Unlike the provisions defining infringement of a utility patent, the statutory provision on design patent infringement does not require literal identity, imposing liability on anyone who “without license of the owner, (1) applies the patented design, or any colorable imitation thereof, to any article of manufacture for the purpose of sale, or (2) sells or exposes for sale any article of manufacture to which such design or colorable imitation has been applied . . . .” 35 U.S.C. § 289 (emphases added).
(739 F.3d at 701, emphasis in original)
As Malibu Boats points out, the statutory test for infringement does not require identity, but merely any colorable imitation of the design. Nothing in the statute that suggests that design patents have almost no scope.
One can further ask if the In re Mann statement has any relevance after the Federal Circuit’s en banc decision in Egyptian Goddess. There the Court held that where two designs are not plainly dissimilar, it is appropriate to consider the prior art when determining infringement. Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 678 (Fed Cir. 2008) (en banc). The logic in Egyptian Goddess necessarily means that the scope of a design patent may vary depending on the prior art. Where there are no similar designs in the prior art, a design patent owner should expect greater scope for his patent. On the other hand, in a crowded art, the scope of a design patent may be narrower. The blanket statement from In re Mann that patents have “almost no scope” is thus flatly inconsistent with Egyptian Goddess, for example, in instances where the prior art is far removed from a patented design. When considered in light of Gorham, 35 U.S.C. § 289, and Egyptian Goddess, design patent owners would be better served if the Federal Circuit disavowed the In re Mann statement entirely. Doing so would avoid confusion in the district courts and inappropriate grants of summary judgment of non-infringement.
The second gratuitous statement springs from In re Rosen’s discussion of obviousness in 1982. There the CCPA stated that in comparing a potential primary reference to a patented design, the “trial court judge may determine almost instinctively whether the two designs create basically the same visual impression.” 673 F.2d 388, 391 (CCPA 1982); Slip op. at 6. This statement is also fraught with danger for design patent owners. Obviousness must be viewed from the perspective of an ordinary designer. Is it truly appropriate to expect a district court judge to look at two different designs with the same scrutiny as an ordinary designer based only on the judge’s personal experience? In any event, while the CCPA qualified its observation by stating that the district court judge must also communicate the reasoning behind its decision, the effect of this statement can be equally detrimental to design patent owners. The obvious danger is that district courts may feel free to substitute their own views for that of the fact finder, even where reasonable minds may differ, and too readily grant summary judgment.
The combination of In re Mann’s statement that design patents have almost no scope and In re Rosen’s statement that judges can instinctively find patents obvious makes design patents highly vulnerable. Both statements should be retired from the Federal Circuit’s jurisprudence.
The next cause for concern in MRC requires an examination of the Court’s reasoning in applying the prior art to the ‘488 patent. To its credit, the Court’s discussion attempts to identify specific design features shared between the prior art jerseys and the patented design. But consider the five features identified, especially those identified as “key” design similarities (emphasis and interpolation supplied):
First, the district court pointed out three key similarities between the claimed design and the Eagles jersey:  an opening at the collar portion for the head,  two openings and sleeves stitched to the body of the jersey for limbs, and  a body portion on which a football logo is applied. MRC, 921 F. Supp. 2d at 809. If the district court’s analysis had ended there, it might indeed have failed to meet the High Point verbal description requirement. However, the district court went on to point out two additional similarities between the two designs: first, the Eagles jersey is made “primarily of a mesh and interlock fabric”; and second, it contains at least some ornamental surge stitching—both features found in the ’488 claimed design. Id. The district court also went on to acknowledge the three major differences between the two designs that are enumerated above. See id. Taking all of those things together (the at least five design characteristics that the claimed design shares with the Eagles jersey and three design characteristics that differ from it), the district court painted a clear picture of the claimed design.
(Slip. Op. at 8)
The three “key similarities” are (1) an opening at the collar portion for the head, (2) two openings and sleeves stitched to the body portion, and (3) a body portion with a logo. Each of these features is highly generic and applicable to any sports jersey. In addition, most of these features appear to be dictated by function (e.g., openings for heads and arms, sleeves, body portion) rather than design features. Thus, each of the three “key similarities” do not advance the discussion of comparing the design of the prior art and the ‘488 patent.
Despite characterizing these as key features, the Federal Circuit acknowledged that if the district court had mentioned only these features it would have failed to characterize the visual impression of the patented design with sufficient specificity. The decision thus discussed two further features found to be similar in the prior art and the ‘488 patent. Remarkably, however, the opinion then went back and again relied on the three discredited generic features by concluding that five features (including the three “key” features) supported similarity between the Eagle jersey and the patented design. This logic is deeply disturbing and should make any design patent owner nervous. The decision even seems to imply that the number of features shared by the prior art and the patented design (five similar as opposed to three different) matters, adding further sting to the Court’s reliance on three features applicable to almost any sports jersey.
Where future Federal Circuit decisions addressing summary judgment of obviousness and infringement of design patents will go from here is difficult to say. Unfortunately, the approach in MRC strongly suggests that the bar remains high for design patent owners. Surviving summary judgment and reaching trial before a jury in a design patent case may remain the rare exception for some time to come.