Entries in Federal Circuit (9)


MRC Innovations v. Hunter – to the Supreme Court!

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.


MRC Innovations v. Hunter – A Decision with Bite for Design Patent Owners?

In MRC Innovations, Inc. v. Hunter Mfg., LLP, No. 2013-1433 (Fed. Cir., Apr. 2, 2014), the Federal Circuit addressed the obviousness of patents covering ornamental designs for dog jerseys.  In doing so, the analysis raises questions about whether the Federal Circuit has fully moved beyond the at times dismissive approach to design patents that has characterized some of its decisions in years past.

The Decision

MRC Innovations, Inc. (MRC) owns two design patents, D634,488 (“the ‘488 patent”) and D634,487 (“the ’487 patent”) for an ornamental design for a football and baseball jersey for a dog, respectively.

Figures from the ‘488 patent are reproduced below:

Figures from the ’487 patent are reproduced below:

MRC appealed the grant of a summary judgment of obviousness of both patents  issued by Judge Gaughan from the Northern District of Ohio.  The district court specifically found the ‘488 patent invalid over a prior art jersey referred to as the V2 and an Eagles jersey.  Reproduced below are images of the V2 jersey and Eagles jersey, respectively, as shown in the Federal Circuit’s opinion.  Slip Op. at 4.

The Federal Circuit further agreed that the secondary references identified by the District Court (the V2 jersey and another reference known as the “Sporty K9”) were “‘so related’ to the Eagles jersey that the striking similarity in appearance across all three jerseys would have motivated a skilled designer to combine features from one with features of another.”

Finally, the Federal Circuit stated that MRC “had not established a nexus between the secondary considerations and the claimed design that was sufficient to overcome the other evidence of obviousness.”

A similar analysis was performed for the ’487 patent which again resulted in the Federal Circuit affirming the district court’s decision that the ‘487 patent was obvious in view of the prior art.  A side by side comparison of the ’487 patent and the Sporty K9 baseball jersey which was used as the primary reference is reproduced below from Appellant’s Opening brief (p. 35).


Setting aside the ultimate conclusion of obviousness at the summary judgment stage, several statements in the opinion are troubling.  The first lies with two gratuitous, though often repeated, statements from earlier design patent opinions.  These statements have rankled design patent owners in the past, but are apparently alive and well.  The second concern lies with the Federal Circuit’s discussion of features found to constitute similarities between the ‘488 patent design and the prior art.

The first gratuitous statement relates to the scope of design patents generally.  Specifically, in 1988 the Court in In re Mann stated that design patents have “almost no scope.”  Slip op. at 9, fn. 1, citing 861 F.2d 1581, 1582 (Fed. Cir. 1988).  While the MRC decision goes on to point out that differences in visual appearance have been permitted in an infringement analysis, citing to the Crocs case from 2010, the question is why the Court felt the need to reference In re Mann at all.  More fundamentally, the statement in In re Mann cannot withstand scrutiny when considered in light of the U.S. Supreme Court’s bedrock decision in Gorham v. White, the statute (35 USC § 289), and the Federal Circuit’s en banc decision in Egyptian Goddess.

In Gorham, the Supreme Court found infringement of spoons that differed in numerous respects from the claimed design.  In doing so, the Supreme Court did not say that design patents have almost no scope.   Instead, the Supreme Court took quite the opposite approach and criticized the lower court for using too exacting of a standard for comparing the accused products to the patented design.  The Supreme Court held that “if, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other.”  81 U.S. 511, 528 (1872).

The In re Mann statement is also out of tune with the Federal Circuit’s statement in Pacific Coast Marine Windshields v. Malibu Boats.  739 F.3d 694 (Fed. Cir. 2014).   In Malibu Boats the Court pointed out that an infringement analysis of a design patent effectively involves both literal infringement and infringement by equivalents due to language of 35 U.S.C. § 289.   It stated:

For design patents, the concepts of literal infringement and equivalents infringement are intertwined. Unlike the provisions defining infringement of a utility patent, the statutory provision on design patent infringement does not require literal identity, imposing liability on anyone who “without license of the owner, (1) applies the patented design, or any colorable imitation thereof, to any article of manufacture for the purpose of sale, or (2) sells or exposes for sale any article of manufacture to which such design or colorable imitation has been applied . . . .” 35 U.S.C. § 289 (emphases added).

(739 F.3d at 701, emphasis in original)

As Malibu Boats points out, the statutory test for infringement does not require identity, but merely any colorable imitation of the design.  Nothing in the statute that suggests that design patents have almost no scope.

One can further ask if the In re Mann statement has any relevance after the Federal Circuit’s en banc decision in Egyptian Goddess.  There the Court held that where two designs are not plainly dissimilar, it is appropriate to consider the prior art when determining infringement.  Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 678 (Fed Cir. 2008) (en banc).  The logic in Egyptian Goddess necessarily means that the scope of a design patent may vary depending on the prior art.  Where there are no similar designs in the prior art, a design patent owner should expect greater scope for his patent.  On the other hand, in a crowded art, the scope of a design patent may be narrower.  The blanket statement from In re Mann that patents have “almost no scope” is thus flatly inconsistent with Egyptian Goddess, for example, in instances where the prior art is far removed from a patented design.  When considered in light of Gorham, 35 U.S.C. § 289, and Egyptian Goddess, design patent owners would be better served if the Federal Circuit disavowed the In re Mann statement entirely.  Doing so would avoid confusion in the district courts and inappropriate grants of summary judgment of non-infringement.

The second gratuitous statement springs from In re Rosen’s discussion of obviousness in 1982.  There the CCPA stated that in comparing a potential primary reference to a patented design, the “trial court judge may determine almost instinctively whether the two designs create basically the same visual impression.”  673 F.2d 388, 391 (CCPA 1982); Slip op. at 6.  This statement is also fraught with danger for design patent owners.  Obviousness must be viewed from the perspective of an ordinary designer.  Is it truly appropriate to expect a district court judge to look at two different designs with the same scrutiny as an ordinary designer based only on the judge’s personal experience?  In any event, while the CCPA qualified its observation by stating that the district court judge must also communicate the reasoning behind its decision, the effect of this statement can be equally detrimental to design patent owners.  The obvious danger is that district courts may feel free to substitute their own views for that of the fact finder, even where reasonable minds may differ, and too readily grant summary judgment.

The combination of In re Mann’s statement that design patents have almost no scope and In re Rosen’s statement that judges can instinctively find patents obvious makes design patents highly vulnerable.  Both statements should be retired from the Federal Circuit’s jurisprudence.

The next cause for concern in MRC requires an examination of the Court’s reasoning in applying the prior art to the ‘488 patent.  To its credit, the Court’s discussion attempts to identify specific design features shared between the prior art jerseys and the patented design.  But consider the five features identified, especially those identified as “key” design similarities (emphasis and interpolation supplied):

First, the district court pointed out three key similarities between the claimed design and the Eagles jersey: [1] an opening at the collar portion for the head, [2] two openings and sleeves stitched to the body of the jersey for limbs, and [3] a body portion on which a football logo is applied.  MRC, 921 F. Supp. 2d at 809. If the district court’s analysis had ended there, it might indeed have failed to meet the High Point verbal description requirement. However, the district court went on to point out two additional similarities between the two designs: first, the Eagles jersey is made “primarily of a mesh and interlock fabric”; and second, it contains at least some ornamental surge stitching—both features found in the ’488 claimed design. Id. The district court also went on to acknowledge the three major differences between the two designs that are enumerated above. See id. Taking all of those things together (the at least five design characteristics that the claimed design shares with the Eagles jersey and three design characteristics that differ from it), the district court painted a clear picture of the claimed design.

(Slip. Op. at 8)

The three “key similarities” are (1) an opening at the collar portion for the head, (2) two openings and sleeves stitched to the body portion, and (3) a body portion with a logo.  Each of these features is highly generic and applicable to any sports jersey.  In addition, most of these features appear to be dictated by function (e.g., openings for heads and arms, sleeves, body portion) rather than design features.  Thus, each of the three “key similarities” do not advance the discussion of comparing the design of the prior art and the ‘488 patent.

Despite characterizing these as key features, the Federal Circuit acknowledged that if the district court had mentioned only these features it would have failed to characterize the visual impression of the patented design with sufficient specificity.  The decision thus discussed two further features found to be similar in the prior art and the ‘488 patent.  Remarkably, however, the opinion then went back and again relied on the three discredited generic features by concluding that five features (including the three “key” features) supported similarity between the Eagle jersey and the patented design.  This logic is deeply disturbing and should make any design patent owner nervous.  The decision even seems to imply that the number of features shared by the prior art and the patented design (five similar as opposed to three different) matters, adding further sting to the Court’s reliance on three features applicable to almost any sports jersey.

Where future Federal Circuit decisions addressing summary judgment of obviousness and infringement of design patents will go from here is difficult to say.  Unfortunately, the approach in MRC strongly suggests that the bar remains high for design patent owners.  Surviving summary judgment and reaching trial before a jury in a design patent case may remain the rare exception for some time to come.

Anne-Raphaëlle Aubry and Andrew M. Ollis collaborated on this post.


Coming out of the dark ages

About 12 years ago, in 2002, I co-authored an article entitled “U.S. Design Patents: an underdog that bites.” The article announced a coming-out stage for design patents:

Companies often seek broad protection for their products and technology, along with strong enforcement provisions, preferably available at a relatively low cost and via a relatively fast procedure. In the past, however, companies have often overlooked a tool that can provide such protection: the US design patent. Instead, companies have focused on trade dress protection and utility patents. In many companies, the trade mark department considered design patents to add little to trade dress protection, while the patent department considered them an inadequate tool to protect their functional inventions. As a result, design patents often fell through the cracks.

Today, however, companies are starting to realize that design patents can provide valuable protection, not only for products traditionally protected by trade dress, but also for inventions traditionally protected by utility patents ... .

Since then, the number of design patent applications filed has continued to grow steadily, with a short lull following the 2008 economic downturn.  More importantly, the number of design patents asserted in litigation has increased, leading to a surge in decisions from district courts, the CAFC and the ITC.  This recent case law has helped modernize design patent jurisprudence to some degree. 

The Egyptian Goddess case of 2008 eliminated an outdated point-of-novelty test.  The Crocs ITC cases showed that design patents could be powerful weapons against importations of infringing goods.  The on-going Apple v. Samsung case provided a real and modern-world example highlighting the unique advantage of design patent law which provides for damages based on an infringer’s profit.  Earlier this year, the CAFC confirmed in Pacific Coast Marine Windshields v. Malibu Boats that the same principles of public notice underlying prosecution history estoppel apply to design patents as well as utility patents.  These decisions and others probably would have pleased the late Judge Rich, who was often supportive, respectful and careful in his decisions related to design patents.

However, much is still needed in order to fully modernize the law of ornamental designs.  As judge Rich lamented in 1981, “the concept of unobviousness is not well suited to ornamental designs” and “[i]t is time to pass [a legislation] and get the impossible issue of obviousness in design patentability cases off the backs of the courts and the Patent and Trademark Office.” In re Nalbandian (CCPA 1981).  Congress has not followed that advice.  As a result, courts still struggle with evaluating non-obviousness for ornamental designs.

Another area that needs clarification is the application of the written description requirement to design patents.  The recent USPTO proposal and the opposing comments filed by the bar illustrate the challenge.

Another blatant area of confusion is claim interpretation.  Should a court verbalize or merely visualize claim construction?  Should a claim to a design be construed differently depending on whether the court is addressing invalidity or infringement?  What is the role of functionality in claim construction?  Should the 2010 case Richardson v. Stanley Works be followed or distinguished?  Functionality itself, as an invalidity ground, i.e., lack of ornamentality, could use a dust off.  Too many important markets are at stake, including those for replacement parts.

But perhaps the most significant change that is needed, in order for design patent law to mature, is a change in mentality.  Too many decisions result from courts’ “judicial hunches,” as Judge Rich called them.  Some courts still disrespect design patents, and summarily judge based on their personal views, without much reliance on the evidence of record, that the claimed designs are either not novel, obvious, or not infringed.  Perhaps the simple nature of the claimed subject matter (a bottle, a phone, a shoe, etc.) induces some judges to skip the record, ignore experts, short-circuit the fact finders, grant summary judgments by paying only lip-service to the established legal tests, and quickly get a case off their busy docket.


Pacific Coast v. Malibu Boats

In 2011, Pacific Coast Marine Windshields Limited (Pacific Coast) brought suit (No. 12-CV-0033) against Malibu Boats, LLC (Malibu) in the Middle District of Florida, alleging infringement of U.S. Patent No. D555,070. The District Court held that Pacific Coast was barred from alleging infringement due to prosecution history estoppel, and Pacific Coast appealed. 

On January 8, 2014, the Federal Circuit held that “the principles of prosecution history estoppel apply to design patents” but reversed the district court’s summary judgment of non-infringement because “the accused infringing design was not within the scope of the subject matter surrendered during prosecution.”

A design patent application filed in 2006 by Darren Bach, CEO of Pacific Coast, depicted various embodiments of the claimed ornamental design for a marine windshield with configurations including zero, two, and four vent holes on a corner post.  In response to a restriction requirement, the applicant elected a group corresponding to a single figure with four vent holes, and canceled the remaining figures.  Mr. Bach later obtained a patent for a divisional of the originally filed application, claiming a windshield with no vent holes.  The application issued as D555,070.

Figure 1 of the ‘070 patent is reproduced below.

The accused infringing design of Malibu Boats is a boat windshield with three trapezoidal holes, as shown below.

The District Court granted Malibu Boats’ motion for summary judgment of non-infringement, finding that prosecution history estoppel barred the infringement claim.  The District Court’s decision recognized that the accused design had one fewer vent hole but explained that ‘“the accused design is still clearly within the territory [surrendered] between the original claim and amended claim.’”

On appeal, the Federal Circuit noted that the doctrine of prosecution history estoppel is well established for utility patents, but that the concept of prosecution history estoppel as applied to design patents was “one of first impression” for the court.  For utility patents, the doctrine of prosecution history estoppel prevents a patentee from recapturing in an infringement action subject matter which was surrendered during prosecution.

The Federal Circuit noted that “for design patents, the concepts of literal infringement and equivalents infringement are intertwined,” and stated that accordingly “the test for design patent infringement is not identity, but rather sufficient similarity.” Furthermore, the Federal Circuit acknowledged that Pacific Coast had “characterized the substantial similarity between the accused designs and the ‘070 patent as the basis for an infringement claim ‘under the doctrine of equivalents.’” The Federal Circuit concluded that “the principles of prosecution history estoppel apply to design patents as well as utility patents.”

The Federal Circuit then addressed the question of whether the prosecution history estoppel barred infringement in this case.

The Court determined that there was a surrender of claim scope during prosecution, and that “by removing broad claim language referring to alternate configurations and cancelling the individual figures showing the unelected embodiments, the applicant narrowed the scope of his original application, and surrendered subject matter.”

In addition, the Federal Circuit noted that the claim scope was surrendered to secure the patent, but not to avoid prior art.  Whereas Pacific Coast argued that only surrenders to avoid prior art were within the doctrine, the Federal Circuit cited Festo stating that “the rationale behind prosecution history estoppel ‘does not cease simply because the narrowing amendment, submitted to secure a patent, was for some purpose other than avoiding prior art.’”

With respect to the scope of the surrender, the District Court had determined  that the accused design was within the scope of the surrender, i.e., that by abandoning a design with two holes and obtaining patents on designs with four holes and no holes, the range between four and zero was abandoned.  In contrast, the Federal Circuit stated that “this range concept does not work in the context of design patents where ranges are not claimed, but rather individual designs.” The Federal Circuit further noted that “the applicant surrendered the claimed design with two holes on the windshield corner post, but neither submitted nor surrendered any three-hole design.”

Thus, the Federal Circuit held that the prosecution history estoppel principles apply to design patents, but do not bar Pacific Coast’s infringement claim, and remanded for further proceedings.


In re Owens (CAFC March 26, 2013)

The Court of Appeals for the Federal Circuit (CAFC) recently issued a precedential opinion in In re Owens, affirming the BPAI’s rejection of Owens et al.'s design patent application 29/253,172.  The opinion at p. 2 states that the "’172 application, which is the subject of this appeal, is a continuation of U.S. Design Patent Application No. 29/219,709 (filed Dec. 21, 2004) (“’709 application”). The ’709 application claimed a design for a bottle," with boundaries as shown, e.g., in Figure 2 (left): 

Owens filed the ’172 application in 2006, seeking the benefit of the ’709 application’s 2004 priority date under 35 U.S.C. § 120.  The ’172 application claimed certain design elements found on the top and side portions of the original bottle, as depicted in Figure 2 (above, center).

The Examiner rejected the '172 application under 35 USC 112, ¶ 1, for including new matter, as well as being obvious in view of Owens' earlier-sold bottles (obviousness hinged on whether the '172 application was entitled to the benefit of the '709 application's filing date).  The BPAI affirmed the Examiner's rejection, finding that "Owens had claimed previously undisclosed 'trapezoidal sections occupying part, but not all, of the surface area of the front and back panels.'" See Figure 2, above, right.

Owens argued that the BPAI applied an incorrect written description test to his case because the '172 application did not claim a trapezoidal-shaped area at all, "insist[ing] that in order to claim a new design element, one must first claim a new boundary." The trapezoidal-shaped area identified by the Examiner was bounded by a broken-line boundary, an "unclaimed boundary," and it is "understood that the claimed design extends to the boundary but does not include the boundary." MPEP § 1503.02.

The CAFC characterized Owens’ arguments as being “premised on the notion that an applicant who has possession of an entire area in a parent application must likewise possess all parts of the area.”  The CAFC found that these arguments misconstrue its holding in In re Daniels, stating that “[i]t does not follow from Daniels that an applicant, having been granted a claim to a particular design element, may proceed to subdivide that element in subsequent continuations however he pleases.”

On the contrary, the CAFC stated that “the question for written description purposes is whether a skilled artisan would recognize upon reading the parent’s disclosure that the trapezoidal top portion of the front panel might be claimed separately from the remainder of that area. [Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc)]." According to the court, “Owens’s parent application discloses a design for a bottle with an undivided pentagonal center-front panel, whereas the continuation claims only the trapezoidal top portion of that center-front panel.” Because the parent application did not suggest anything uniquely patentable about the top portion of the bottle, the CAFC affirmed the Board's decision.

When asked "whether, and under what circumstances, Owens could introduce an unclaimed boundary line on his center-front panel and still receive the benefit of § 120," the CAFC stated:

"In our view, the best advice for future applicants was presented in the PTO’s brief, which argued that unclaimed boundary lines typically should satisfy the written description requirement only if they make explicit a boundary that already exists, but was unclaimed, in the original disclosure. Although counsel for the PTO conceded at oral argument that he could not reconcile all past allowances under this standard, he maintained that all future applications will be evaluated according to it."

Note that MPEP § 1503.02 indicates "[w]here no boundary line is shown in a design application as originally filed, but it is clear from the design specification that the boundary of the claimed design is a straight broken line connecting the ends of existing full lines defining the claimed design, applicant may amend the drawing(s) to add a straight broken line connecting the ends of existing full lines defining the claimed subject matter." However, this would not have aided Owens, as a straight broken line would only have defined a larger trapezoidal area, resulting in the same written description problems.