What MCR Innovations Teaches about the Obviousness of Design Patents in the Garment Industry
In the United States, patent protection can be afforded to aesthetic innovation (design patents), and functional innovation (utility patents). Because binding precedent relating to design patents is relatively sparse, practitioners take note any time the Federal Circuit addresses thorny issues of design patent law. This is especially true when the patents-in-suit are directed to products that permeate our everyday lives – in a recent case, athletic uniforms worn by dogs. But the Federal Circuit’s opinion in MRC Innovations, Inc. v. Hunter MFG. LLP, 747 F.3d 1326 (Fed. Cir. 2014) does more than affirm the invalidity of patents claiming the ornamental design of canine sports jerseys. It provides much-needed guidance on obviousness standards applicable to design patents in the garment and apparel context.
MRC sued Hunter and CDI for infringement of US Patent Nos. D634,487 (“’487 patent”) and D634,488 (“’488 patent”), which cover designs for dog baseball and football jerseys, respectively. An Ohio federal district court granted summary judgment in Hunter and CDI’s favor, finding both patents invalid as obvious. The Federal Circuit affirmed, and, in doing so, offered a thorough analysis of the obviousness standard as it applies to design patents.
As with utility patents, the four factors articulated by the Supreme Court in Graham v. John Deere Co. of Kansas City et al., 383 U.S. 1 (1996) govern the design patent obviousness analysis: scope and content of prior art (relevant designs that existed prior to the claimed design), the level of ordinary skill of the art, the differences between the claim at issue and prior art, and objective evidence of non-obviousness. For design patents, the obviousness determination ultimately depends on “whether the claimed design would have been obvious to a designer of ordinary skill who designs articles of the type involved.” MRC Innovations, 747 F.3d at 1331.
The Federal Circuit articulated the twostep process used to answer this inquiry. First, courts select a “primary reference” that is “basically the same” as the design at issue. Designs are considered “basically the same” if they create the same “visual impression.” Judges may determine this “almost instinctively,” but they must also be able to communicate their reasoning. Second, courts must recognize one or more “secondary references,” which are “so related to the primary reference” that they would motivate the skilled artisan to modify the primary reference to achieve the same “overall visual appearance” as the claimed design.
In MRC Innovations, the district court used previously manufactured pet clothing articles as primary and secondary references to conclude that the ’488 and ’487 designs would be obvious to a designer of ordinary skill. With respect to the ’488 patent, for example, the district court used a prior art Eagles pet jersey as the primary reference. According to the Federal Circuit, the district court properly analyzed the relevant characteristics of the patented design and identified the key similarities between the patented design and the primary Eagles jersey reference: (1) an opening at the collar portion for the head, (2) two openings and sleeves stitched to the body for limbs and (3) a body portion on which a football logo is applied. The district court used two other prior art pet jerseys as secondary references, which suggested the use of a “V-neck pattern” and “non-mesh fabric on the side panels” – patented design features not found in the primary Eagles jersey reference. Finally, even though none of the prior art references contained the patented design’s “additional ornamental surge stitching running down the rear of the jersey,” the Federal Circuit agreed with the district court’s conclusion that this was not a “substantial” difference that created a patentably distinct design. Instead, this merely amounted to a de minimis change well within the skill of the ordinary designer to make.
While the Federal Circuit’s decision in MRC Innovations did not create new design patent law, its clarifications of existing standards should give practitioners paws to consider how the obviousness analysis applies in the garment and apparel context. For instance, the Federal Circuit credited the district court’s reliance on only jerseys designed for pets as secondary references, rather than general articles of clothing for pets or sports jerseys for humans. This can provide support for a patentee’s attempt to limit the prior art references available when the validity of a patent claiming the ornamental design feature of a niche clothing item is challenged. Moreover, MRC Innovations clarifies that not every single feature of a claimed design must be present in the primary and secondary prior references, if the necessary modifications are insubstantial and thus fall within the skill of an ordinary designer in the art.