Everyone knows that a dog is a man's best friend. And when the game is on, who better to cheer on the home team than the little pooch? But fashion-forward dog owners know, when the home team needs support, there is only one piece of apparel suitable for cute little canine mascots: the dog sports jersey.
Such jerseys became the subject of a real dogfight in 2012 when a company called MRC Innovations, Inc. ("MRC") filed suit in Ohio federal court against Hunter Manufacturing, LLP("Hunter") and CDI International, Inc. ("CDI") for infringement of MRC's pet football and baseball jersey design patents. More specifically, MRC alleged that Hunter and CDI willfully infringed MRC's patents by selling and manufacturing pet jerseys that embodied MRC's patented designs.
MRC is a company that provides designs to retailers for various consumer products, including designs for dog jerseys. The letters "MRC" are the initials of Mark R. Cohen, MRC's principal shareholder. Cohen also owns MRC's sister company Fun-In-Games, Inc. ("FiG"), which has a license from MRC to manufacture and sell pet jerseys to third parties.
In 2009, Hunter, a retailer of licensed sports consumer products, commenced selling Cohen's dog jerseys. However, in 2010, Hunter's dog bowl began to dry up and Hunter struggled to make payments to Cohen. As a result, Cohen stopped doing business with Hunter.
Apparently not one to take rejection lying down, Hunter sought out proposals from other pet jersey suppliers. In doing so, Hunter included an actual sample of a jersey supplied by FiG. Eventually, Hunter found another puppy – CDI - to play fetch with and CDI began supplying Hunter with pet jerseys to sell.
Ever the watchful hound, Cohen had obtained two design patents in 2011 relating to football and baseball jerseys for dogs (U.S. Design Patent Nos. D634,488 and D634,487). Thereafter, Cohen assigned both patents to MRC.
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In response to the suit brought by MRC, Hunter and CDI bit back with a joint motion for summary judgment arguing, among other things, that MRC's patents were invalid for obviousness because prior art jerseys identified by the defendants in their motion had "basically the same" design characteristics as those claimed in MRC's patents.
MRC responded with opposition papers in which it argued that defendants had failed to provide any analysis of the four underlying factual inquiries — known as the Grahamfactors (as set forth in Supreme Court precedent (Graham v. John Deere Co., 383 U.S. 1 (1966)) — upon which a determination of obviousness is made. Further, to support a conclusion of nonobviousness, MRC presented testimony from the big dog Cohen himself that MRC's pet football jersey patent would not have been obvious to a designer in view of the prior art jerseys.
Nevertheless, in this Puppy Bowl, the district court found that MRC's bark was worse than its bite when it granted defendants summary judgment in January 2013 finding that both patents were invalid as obvious. The court agreed with Hunter and CDI that the design characteristics of the prior art jerseys were basically the same as MRC's designs, and that the differences between the jerseys were either minor or plainly suggested by related prior art references.
MRC refused to play dead and appealed to the Federal Circuit. Unfortunately for our canine clothier, the appellate court sent MRC back to the pound when it affirmed summary judgment for defendants in April (MRC Innovations, Inc. v. Hunter Mfg., LLP, No. 2013-1433, 2014 WL 1303368 (Fed. Cir. Apr. 2, 2014)).
The appellate court agreed with the district court that the overall visual impression of prior art jerseys identified by the district court as "primary references" were basically the same as MRC's patents, and any differences were minor. In addition, the appellate court agreed that other prior art jerseys identified by the district court as "secondary references" were so related to the primary reference jerseys that they would motivate the skilled artisan to combine the jerseys' features to create the claimed designs.
While MRC may not have clinched this canine clash, at least its owner can count on a well-dressed best friend waiting for him at home ready to cheer on the home team and lick his litigation wounds.