MRC Innovations, Inc. v. Hunter Mfg., LLP, No. 2013-1433 (Fed. Cir. April 2, 2014).
In contrast to other recent design patent cases that have reached the Federal Circuit, 1 the court in MRC Innovations, Inc. v. Hunter Mfg., LLP invalidated two design patents as obvious. This decision is worth noting because it provides a roadmap of an obviousness analysis for design patents.
In MRC Innovations, MRC asserted two design patents, U.S. Design Patent No. D634,488 (“’488 patent”) and No. D634,487 (“’487 patent”), against Hunter and another supplier of pet jerseys, CDI International, Inc. (collectively “Hunter”). The ’488 patent is directed toward a football jersey for a dog and the ’487 patent is directed toward a baseball jersey for a dog. The district court held, on summary judgment, that these two patents were invalid as obvious over three prior art dog jerseys: the Eagles jersey, the V2 jersey, and the Sporty K9 jersey. Figures from the ’488 patent and images of these three references are reproduced below. MRC appealed, but the Federal Circuit affirmed the district court.2
The Federal Circuit articulated that, in the design patent context, an obviousness analysis is a question of whether the “claimed design would have been obvious to a designer of ordinary skill who designs the articles of the type involved” and, in particular, whether the ordinary designer “would have combined teaching of the prior art to create the same overall visual appearance as the claimed design.” This analysis involves the same factual inquires as those for utility patents, namely the Graham factors. The analysis involves two steps.
First, a court or examiner must identify a primary reference, the design characteristics of which must create basically the same visual impression as the claimed design. The court or examiner must verbally describe the design so that the parties and appellate courts can understand the court’s or examiner’s reasoning in identifying the primary reference. Here, the district court found the Eagles jersey to be the primary reference.
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While the district court in MRC Innovations did not explicitly translate the claimed design into a verbal description, the Federal Circuit held that the district court did identify similarities and differences between the ’488 patent and the Eagles jersey to convey what the district court considered to be the relevant design characteristics of the ’488 patent, and why it chose the Eagles jersey as the primary reference. Specifically, the district court considered eight characteristics of the claimed design, five of which are present in the Eagles jersey. Further, the Federal Circuit commented that there were no “substantial differences in the overall visual appearance” between the claimed design and the Eagles reference that detract from the conclusion that the claimed design and Eagles jersey are basically the same.
In the second step of the obviousness analysis, the court or examiner may modify the primary reference using secondary references to create a design that has the same overall visual appearance as the claimed design. To serve as a secondary reference, a reference must be “so related [to the primary reference] that appearance of certain ornamental features in one [reference] would suggest the application of those features to the other.” Here, the secondary references, the V2 jersey and Sporty K9, met this test.
The secondary references are jerseys to be worn by a dog and not some unrelated design such as furniture, drapes, or dresses. In fact, the district court and the Federal Circuit agreed that the V2 jersey easily could have served as a primary reference. The Federal Circuit thus concluded that it is appropriate to combine the teachings of the V2 jersey and the Sporty K9 with the Eagles jersey to teach seven of the eight characteristics of the claimed design.
The one remaining characteristic of the claimed design that is not exactly in any of the references is the stitching on the rear of the claimed jersey. The district court found that this difference was a de minimis change that was within the skill of an ordinary designer, and thus did not create a patentably distinct design. The Federal Circuit agreed with this analysis and rejected MRC’s argument that any ornamental feature not found in a reference is more than de minimis. Here, the Eagles jersey already disclosed the use of the ornamental surge stitching and the V2 jersey suggested the addition of ornamentation on preexisting seams. Accordingly, the Federal Circuit agreed that the use of “ornamental surge stitching on top of a preexisting seam was an insubstantial change that would have been obvious to a skilled designer.”
As a result, the Federal Circuit affirmed the district court’s holding that the ’488 patent is invalid as obvious in view of the Eagles jersey, the V2 jersey, and the Sporty K9 jersey.