On July 1, 2014, MRC Innovations filed a Petition for Writ of Certiorari in the Supreme Court of the United States.  As we previously discussed on April 22, 2014, in MRC Innovations, Inc. v. Hunter Mfg., LLP, No. 2013-1433 (Fed. Cir., Apr. 2, 2014), the Federal Circuit addressed the obviousness of patents (i.e., D634,488 and D634,487) covering ornamental designs for dog jerseys.

Figures from the ‘488 patent are reproduced below:

Figures from the ’487 patent are reproduced below:

MRC appealed a grant of summary judgment of obviousness of both patents  issued by Judge Gaughan from the Northern District of Ohio.  The Federal Circuit affirmed.

In the Petition, MRC proposes a question as to whether the principle set forth in KSR Int’l v. Co. v. Teleflex, Inc., 550 U.S. 398 (2007), "that when making an obviousness determination under 35 U.S.C. § 103 a court must provide an explicit analysis regarding whether there was an apparent reason to combine the known elements in the fashion claimed by the patent, also applies to design patents." Petition, page i.

The Petition argues "[a]s properly noted by the Federal Circuit more than 30 years ago, '35 U.S.C. § 103 (and all the case law interpreting that statute) applies with equal force to a determination of the obviousness of either a design or utility patent.' Litton Systems, Inc. v. Whirlpool Corp., 728 F.2d 1423, 1441 (Fed. Cir. 1984)," but that "the Federal Circuit has significantly departed from this Court’s case law regarding 35 U.S.C. § 103 insofar as design patents are concerned." Petition, page 5.

Citing to KSR, the Petition argues that instead of a court providing "an explicit analysis explaining the apparent reason to combine known elements in the fashion claimed by the patent" for design patent cases, the Federal Circuit has rather relied on a "'so related' test in design patent cases that, when applied, entirely dispenses with the requirement that the court articulate whether there was an apparent reason (i.e., a “basis”) to combine the known elements in the fashion claimed by the patent." Petition, pages 5-6.

In summary, MRC is arguing that the court must articulate a rationale for combining teachings of the prior art to arrive at the claimed design.  In utility patent cases, this "rationale" must be articulated, consistent with KSR.  See the exemplary rationales identified in MPEP 2143.

The Petition argues that the Federal Circuit erred by merely requiring that certain elements of the claimed design be found in a related prior art, and that such a "so related" test is an "over simplification that substitutes relatedness for obviousness." Petition, page 18.

In some aspects, it appears MRC is arguing that the Federal Circuit applied a test similar to determining whether a prior art reference is analogous art.  In re Klein, 98 USPQ2d 1991 (Fed. Cir. June 2011), established two tests for determining whether a reference is analogous and thus qualifies as prior art for an obviousness determination, citing to In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004):

Two separate tests define the scope of analogous prior art:
(1) whether the art is from the same field of endeavor, regardless of the problem addressed and,
(2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.

The USPTO issued examination guidance in view of In re Klein on July 26, 2011, which emphasized that a "reference not in the same field of endeavor as the claimed invention must be reasonably pertinent to the problem to be solved in order to qualify as analogous art and be applied in an obviousness rejection."

Turning back to the "so related" test discussed in the Petition, this test appears to be a summarization of the analogous art tests discussed above.  Specifically, a reference is "so related" when it is in the same field of endeavor (first test) or when the reference is reasonably pertinent to the particular problem with which the inventor is involved (second test).  For design cases, this second test may have limited applicability, because evaluation of the issue (at least as established by the USPTO in the examination guidance) requires a review of the problem to be solved by the claimed design, which may be difficult given there is generally no detailed discussion of problems in design applications.

However, merely concluding a prior art reference that teaches a specific design element is in the same field of endeavor, and is thus "so related," does not result in a proper and complete conclusion of obviousness.  Specifically, the Supreme Court in KSR, 550 U.S. at 418, quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated “rejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” 

Consequently, it appears MRC is arguing that the Federal Circuit merely applied a test to determine whether a prior art reference is analogous (i.e., "so related") in determining whether prior art design elements can render a design obvious, without establishing an "articulated reasoning" for combining the prior art design elements to arrive at the claimed design.  Specifically, the Petition argues the “'so related' test allows for ... random picking and choosing of elements from the prior art without articulating any reasons or basis for doing so," and is thus not in accordance with the principle of KSR.

Tesla Motors announced in a blog post on June 12, 2014 that Tesla “will not initiate patent lawsuits against anyone who, in good faith, wants to use our technology.” It appears that Tesla’s goal is encourage the expansion of electric vehicle technology “in the spirit of the open source movement.” Tesla has been issued hundreds of utility patents since its inception.  It remains to be seen if this strategy will work to Tesla’s advantage and if other companies will follow suit.

But what about Tesla’s design Patents?

Tesla is active with design patents.  Over the last two years, Tesla has been issued several design patents that range from wheels to vehicle display mounts and vehicle designs.  Additional design patents are probably on their way.  The table below lists the design patents that have been issued to Tesla.

Tesla probably would not view copying or even improvement on its design patents as a “good faith” use of their technology.  Opening up Tesla’s designs to its competition would hardly advance electric vehicle technology.  Design patents, which are ornamental in nature, help a company differentiate itself from its competition, establish goodwill, and provide a strong source of protection.  Tesla would probably view any use of its designs by its competitors as “bad faith.” 

Likely, the last thing Tesla would want to see is a fleet of electric cars from multiple manufacturers that look exactly like Tesla’s vehicle designs.  Nor would Tesla likely be pleased to see a competitor design an internal combustion engine vehicle that copies Tesla’s Model S.

Once again going on the offensive by asserting design patents in its portfolio, Oakley, Inc. (Oakley) filed a complaint for patent infringement against Sunscape Eyewear, Inc. (Sunscape) on February 14, 2014, in the Southern District of California (14Cv0358-BTM-DHB).

The complaint relates to the following thirteen design patents:

• D462,375 (‘375 patent), issued in 2002, claiming Eyeglass and Eyeglass Components,
• D581,444 (‘444 patent), issued in 2008, claiming Eyeglass Components,
• D581,443 (‘443 patent), issued in 2008, claiming Eyeglasses Components,
• D569,412 (‘412 patent), issued in 2008, claiming an Eyeglass and Eyeglass Components,
• D649,579 (‘579 patent), issued in 2011, claiming an Eyeglass,
• D564,571 (‘571 patent), issued in 2008, claiming an Eyeglass and Eyeglass Components,
• D547,794 (‘794 patent), issued in 2007, claiming Eyeglasses,
• D554,689 (‘689 patent), issued in 2007, claiming an Eyeglass frame,
• D556,818 (‘818 patent), issued in 2007, claiming Eyeglass Components,
• D557,326 (‘326 patent), issued in 2007, claiming Eyeglass Components,
• D616,919 (‘919 patent), issued in 2010, claiming an Eyeglass Front,
• D610,604 (‘604 patent), issued in 2010, claiming an Eyeglass and Eyeglass Components, and
• D620,970 (‘970 patent), issued in 2010, claiming an Eyeglass Component.

Oakley asserted that the Defendant allegedly manufactured, sold, offered for sale and/or imported into the United States eyewear allegedly infringing Oakley’s patent rights.

Oakley further asserted that it had provided the public with constructive notice of its patent rights by marking its products.

In the complaint, Oakley claimed that the Defendant was “knowingly, intentionally and willfully infring[ing] … [the above-noted design patents] by making, using, selling, offering for sale and/or importing eyewear” allegedly covered by these design patents.

Oakley asserted that the Defendant had knowledge of the patents, infringed with reckless disregard for Oakley’s patent rights, and knew or should have known that its actions constituted infringement.

Exhibits in the complaint included the above-noted patents, together with representations of the products allegedly infringing these patents. These representations, along with selected Figures from Oakley’s patents, are reproduced alongside in the chart below.



Oakley requested that its thirteen patents be deemed valid and willfully infringed, with a preliminary and permanent injunction against the Defendant, and payment of “all damages suffered by Oakley and/or Defendant’s total profit from such infringement” to Oakley. Further demands included a trebling of damages, an award of attorney fees, and pre-judgment and post-judgment interests and costs. A jury trial was requested.

This case is ongoing.

Over the past few years Oakley Inc. (“Oakley”) has relied heavily on design patents to protect its product line.  Most recently, Oakley filed a complaint for patent infringement against Thermor Ltd. (Thermor), Fry’s Electronics, Inc. (Fry), Best Buy Co. Inc. (Best Buy), Tool King LLC. d/b/a/ Toolking.com (Toolking), Laptop Travel, LLC., and Beach Trading Co., Inc. d/b/a/ Buydig.com (Buydig), (collectively “Defendants”) on February 14, 2014, in the Southern District of California (14CV0349-GPC-DHB).

In the complaint, Oakley asserted that the Defendants manufactured, used, sold, offered for sale and/or imported into the United States, eyewear allegedly infringing Oakley’s Design Patent No. D523,461 (’461 patent), directed to an Eyeglass Component.  As discussed further below, Oakley has asserted the ‘461 patent on numerous occasions in the past.

Oakley previously sued Hire Order, Ltd. on June 2012, (3:12-cv-02346-DMS-WMC) over its ‘461 patent, demanding that Hire cease the sales of its Sportsman Eyewear video recording system.

In this case, Oakley claims Thermor was “knowingly, intentionally and willfully directly infring[ing], engag[ing] in acts of contributory infringement, and /or induc[ing] the infringement of the D461 patent by directly and/or directly making, using, selling, offering for sale and/or importing eyewear covered by the D461 patent.” Oakley listed Thermor’s BIOS Eyewear Cam as an allegedly infringing product.

Oakley made similar statements regarding Fry, and Fry’s BIOS Eyewear Cam, Best Buy and Best Buy’s Thermor – BIOS Eyewear Cam, Laptop Travel and their BIOS Eyewear Action Cam, as well as Toolking and Buydig for their Thermor 604FC BIOS Eyeware Action Camera.

Reproduced below is Figure 1 of the D461 patent, and a representation of the Thermor 604FC BIOS Eyeware Action Camera as listed on the Buydig.com website.



In the complaint, Oakley noted that the Defendant’s alleged acts of infringement were undertaken without license from Oakley, that Defendants had “actual and/or constructive knowledge of the D461 patent … [and] infringed the D461 Patent with reckless disregard of Oakley’s patent rights.” Oakley further argued that “Defendants knew, or it was so obvious that Defendants should have known” that their actions constituted infringement.

Oakley requested a preliminary and permanent injunction, damages allegedly suffered by Oakley and/or Defendants’ total profit from the alleged infringement, with treble damages. Oakley further requested an award of attorney fees, and pre-judgment and post-judgment costs. A jury by trial was demanded.

This case is ongoing.

The ’461 patent was also asserted by Oakley in the cases listed below, several of which are ongoing.

Case Number	Date Filed	Date Terminated	Outcome	Court	Note
8:11-cv-00456-JVS-PLA	03/22/11	06/28/12	Dismissed without Prejudice	Central District of California (Southern Division – Santa Ana)
3:11-cv-01305-DMS-WMC	06/14/11	04/02/12	Default Judgment	Southern District of California (San Diego)
3:13-cv-01292-DMS-WMC	06/04/13	09/04/13	Dismissed with Prejudice	Southern District of California (San Diego)
5:11-cv-01975-JKG	03/22/11	05/12/11	Voluntary Dismissal by Plaintiff	Eastern Distirct of Pennsylvania (Allentown)	Oakley as Defendant
1:11-cv-00034-LRR	03/21/11	08/02/11	Dismissed in deference to parallel action	Northern District of Iowa (Cedar Rapids)	Oakley as Defendant
2:09-cv-00624-JVS-AN	01/27/09	07/29/09	Default Judgment	Central District of California (Western Division – Los Angeles)
8:09-cv-00062-JVS-AN	01/14/09	08/25/09	Dismissed with Prejudice	Central District of California (Southern Division – Santa Ana)
3:12-cv-02346-DMS-RBB	09/26/12	N/A	Ongoing	Southern District of California (San Diego)
3:14-cv-00349-DMS-RBB	02/14/14	N/A	Ongoing	Southern District of California (San Diego)
3:14-cv-00270-LAB-BLM	02/14/14	N/A	Ongoing	Southern District of California (San Diego)

On April 21, 2014 the USPTO’s Patent Trial and Appeal Board issued a final written decision in Munchkin Inc. et al. v. Luv N’ Care Ltd. (IPR2013-00072), the inter partes review of Luv N’ Care Ltd.’s design patent for a baby drinking cup.

The PTAB found Luv N’ Care Ltd.’s D 617,465 patent (the ’465 patent) unpatentable. This is the first time that the USPTO has invalidated a design patent under a post-grant review process created by the America Invents Act.

The ‘465 patent claims a drinking cup. Figures 2 and 3 are reproduced below.



In January 2012, Luv N’ Care filed an infringement suit for the ’465 patent in the Southern District of New York, against Toys R Us and Munchkin (NYSD-2-12-cv-00228).

In the complaint, Luv N’ Care stated that it had “generated hundreds of millions of dollars in revenue from the sale of goods under their trademarks and trade dress,” and that a series of competitors had allegedly “all deliberately copied [Luv N’ Care’s] designs, to illegally profit from them.”

Luv N’ Care sued the Defendants on counts of alleged infringement, trade dress infringement and unfair competition, federal trademark dilution, unfair competition under New York law, violation of New York general business law, and contributory infringement.

The ‘465 patent was also involved in the Luv N’ Care Ltd v. Regent Baby Products Corp, 10-9492 (S.D.N.Y filed Dec. 21, 2010), and Luv N’ Care Ltd v. Royal King Infant Prod’s Co. Ltd, 10-cv-00461 (E.D. Tex. Filed Nov. 4, 2010). Luv N’ Care settled with Royal King Infant Prod’s Co. Ltd, with Royal King agreeing to cease and desist from manufacture and sales of products likely to cause confusion.

In December 2012, Toys R Us and Munchkin (‘the Petitioners’) filed a petition for inter partes review, alleging that the ’465 patent was obvious in view of two references, US 2007/0221604 (the ’604 reference) and US 6,994,225 (the ’225 reference). This was the first inter partes review initiated by the USPTO for a design patent. 

The Patent and Trials Appeal Board (PTAB) determined that there was reasonable likelihood that the claim of the ‘465 patent would have been obvious over each of the ‘225 and ‘604 reference, and granted the petition for review.

First, Luv N’ Care argued that its ‘465 patent was entitled to an earlier effective filing date of US Application No. 10/536,106 (the ‘106 application), thereby disqualifying the ‘225 and ‘604 references. In response, the Petitioners argued that the ‘106 application lacked written description support for the ‘465 patent, based on differences in the spout.

Figures from both the ‘465 patent and the ‘106 application are shown below, as reproduced from the PTAB’s final written decision:



In its written decision, the PTAB stated the following differences “(1) the outer boundary of the spout tip of the claimed design is larger than that of the ‘106 application. … (2) the spout tip of the claimed design has a different, more rounded, oval shape than that of the racetrack shape of the spout tip in the ‘106 application; and (3) the spout tip of the claimed design has three concentric rings that the ‘106 application does not disclose.”

The PTAB further noted that although the ‘106 application stated that an oval or other shape may be used for the spout, the ‘106 application did not “identify the specific shape of the spout in the claimed design, or otherwise reasonably convey to those skilled in the art that the inventor had possession of the claimed design.” Accordingly the PTAB concluded that the ‘465 patent was not entitled to the filing date of the ‘106 application. The written decision notes that counsel for Luv N’ Care conceded that the claim was not patentable if denied the benefit of the filing date.

Second, Luv N’ Care submitted a motion to amend the patent. As reiterated by the PTAB, a motion to amend the patent must be responsive to a ground of unpatentability at issue in the trial, and it may not enlarge the scope of the claims, or introduce new matter. The patent owner bears the burden to establish that it is entitled to the relief requested by its motion to amend.

The amendment proposed by Luv N’ Care is shown in part below for Figure 3:



The PTAB stated that the “spout tip (left of center in each drawing above) is egg-shaped in the issued claim, whereas it is racetrack-shaped in the proposed amended claim. Additionally, the spout tip of the issued claim includes three concentric rings, whereas that of the proposed amended claim includes only two concentric rings.”

In its written decision, the PTAB stated that Luv N’ Care effectively argued that the proposed amended claim “is not broader than the issued claim because to ‘an ordinary observer,’ the designs are ‘substantially the same.’” However, the PTAB stated that it was not “aware of any authority that has applied the ‘ordinary observer’ test … to compare the scope of two claims.” The PTAB further noted that “the proposed amended claim is broader than the issued claim because it is broader with respect to racetrack-shaped spout tips and raised rim vents, even though it may be narrower with respect to egg-shaped spout tips and vents without raised rims.”

The PTAB held that the Petitioners had “shown by a preponderance of evidence that the sole claim of the ‘465 patent is unpatentable, and [Luv N’ Care] has not met its burden of proof on the motion to amend.”