MRC Innovations is the assignee of U.S. Patent Nos. D634,488 ("’488 patent") and D634,487 ("’487 patent"). Mark Cohen is the named inventor of both patents and is the principal shareholder of MRC. Both design patents claim ornamental designs for sports jerseys for a dog. The '488 patent claims a design for a football jersey and the '487 patent claims a design for a baseball jersey. Appellee, Hunter Manufacturing, LLP, previously purchased jerseys for dogs from companies affiliated with Mark Cohen and then sought jerseys from a different manufacturer, CDI.
MRC filed suit against Hunter and CDI alleging infringement of both the '488 patent and the '487 patent. The district court granted summary judgment in favor of Hunter and CDI on the basis that both patents were invalid as obvious under 35 U.S.C. § 103(a) in view of prior sports jerseys for dogs. The district court found that the patents would have been obvious by modifying a primary reference with the features of a secondary reference.
On appeal, the Federal Circuit agreed with the district court's finding of invalidity. In adjudication of the issue, the Federal Circuit analyzed both steps of the two step test from Durling v. Spectrum Furniture Co., 101 F.3d 100, 103 (Fed. Cir. 1996), that is 1) identify a single reference which is “basically the same” and 2) use of secondary references may be permissible to modify the single reference to create a design with the same overall visual appearance. The Federal Circuit used the standard from In re Borden to establish sufficient relation of the references. In re Borden, 90 F.3d 1570, 1575 (Fed. Cir. 1996). The Court held "it is the mere similarity in appearance that itself provides the suggestion that one should apply certain features to another design." Accordingly, the Federal Circuit concluded the use of secondary references which were also sports jerseys for dogs was proper and affirmed the district court.