Claimed designs may be sufficiently described, for the purposes of determining whether they are obvious, through a comparison of similarities and differences with the prior art.

The Federal Circuit affirmed, finding that both patents (one for football jerseys and one for baseball jerseys) were invalid as obvious. The patentee argued on appeal that the district court improperly relied on “primary references” (other prior art pet jerseys) that were not similar to the patented designs. The patentee also alleged that the district court erred by not specifically describing the claimed designs in words in its opinion. The court disagreed, finding that the lower court sufficiently described the patented designs and showed how the “primary references” were similar by specifically noting the key similarities and key differences in the ornamental appearance of the patented designs and prior art jerseys. These descriptions were enough to allow the court to draw the reasonable conclusion that the claimed designs and primary references created “basically the same” overall visual impression. The lower court described the claimed designs in words, as required, through its comparison of the designs with the prior art. As such, the claimed designs were invalid as obvious.

The patentee also argued that the lower court erred by not describing why “secondary references” could have been combined with the primary reference to make the claimed design. The court instead found that the district court’s use of the “secondary references” was proper, with the mere similarities between the primary and secondary references being enough to permit their combination. Here, the district court used two pet jerseys closely akin to the claimed design as secondary references. The court found this connection strong enough to suggest that the references could have been combined with the primary references to invalidate the design claim.

Finally, the patentee unpersuasively argued that secondary considerations supported a finding of non-obviousness. The court found that testimony from the inventor of the patents, in the absence of any other evidence, was not enough to show sufficient secondary considerations.

A copy of decision can be found here.