Revision Military Inc. v. Balboa Manufacturing Co., case number 11-1628 (Nov. 27, 2012).

Revision Military, Inc., manufacturer of protective eyewear used in the military and in law-enforcement, sought a preliminary injunction against Balboa Manufacturing Co. for selling eyewear that it alleged infringed two of its design patents. The district court denied the request for a preliminary injunction based on two determinations. First, the district court applied the Second Circuit’s heightened standard of “clear or substantial likelihood of success” on the merits and concluded that Revision did not meet this standard. Second, the test for design patent infringement applied by the district court focused on features that “stand out as dissimilar,” reciting particular distinguishing features of the Balboa glasses that differed from the Revision eyewear.

The Fed Circuit took issue with both standards applied by the district court. On the question of likelihood of success, the Fed Circuit was emphatic that “substantive matters of patent infringement are unique to patent law, and thus the estimated likelihood of success in establishing infringement is governed by Federal Circuit law.” Revision need only meet the Federal Circuit’s standard of whether “success is more likely than not,” rather that the Second Circuit’s heightened “clear or substantial likelihood” standard.

On the proper test for design-patent infringement, the “ordinary observer” test asks whether the designs at issue are substantially the same to the eye of the ordinary observer, viewing the designs as a whole. Although the district court stated the correct standard, it failed to consider the background prior art in determining whether apparently minor differences between the two designs at issue would be recognized as distinguishable by an ordinary observer. That is, the district court failed “to consider the prior-art context in which the ordinary observer test is applied.”

The district court’s denial of preliminary injunction was vacated and the case remanded for redetermination in light of the “success more likely than not,” and “ordinary observer” standards applicable to design-patent infringement.