The Federal Circuit released its
decision in the design patent case of Revision
Military, Inc. v. Balboa Mfg. Co. today, and the decision provides interesting insight into the Federal Circuit’s current mood regarding design
patents.
Revision Military is an appeal from a decision of the District of
Vermont’s decision denying the plaintiff’s request for a preliminary injunction
in a design patent case. In this case,
Revision alleges that Balboa’s new “Bravo” design protective goggles were
copied from Revision’s “Bullet Ant” goggles which is covered by U.S. Design
Patents No. 537,098 and No. 620,039 (the ’039 patent):
The Federal Circuit’s decision
focuses primarily on the standard for a preliminary injunction in patent cases,
generally, and is not unique to design patent law. The primary holding of the case was that the
District of Vermont incorrectly applied the Second Circuit’s heightened
standard of “clear” or “substantial” likelihood of success on the merits. The court explained that a preliminary
injunction enjoining patent infringement pursuant to 35 U.S.C. §283 “involves
substantive matters unique to patent law and, therefore, is governed by the law
of this court.” (citation omitted).
Therefore, the case was remanded to the District of Vermont to apply the
Federal Circuit’s “more likely than not” standard.
However, the Federal Circuit also
took the opportunity to provide some noteworthy dicta on the subject of design
patent infringement. The court noted
that “[a]lthough the district court stated the correct ‘overall design’
standard [for infringement], the court focused on features that ‘stand out as
dissimilar,’ reciting the shape and sizes of the lenses, the concavity of the
nose bridge, and the venting along the top and bottoms.” The Federal Circuit stopped short of saying
that the district court’s infringement analysis was in error though. However, the court warned that “[a]lthough
individual features may indeed serve in assessing the ‘impact on the overall
appearance,’ … in determining whether apparently minor differences between specific
features would be recognized as distinguishing the designs, it is often helpful
to refer to any prior art with which the ordinary observer would reasonably be familiar.” The Federal Circuit then remanded the case to
the district court with a friendly suggestion to perhaps consider the prior
art.
Although the district court’s
likelihood of infringement analysis was not central to the appeal, the Federal
Circuit took this opportunity to remind district courts (and perhaps design
patent practitioners) of the importance of context when determining design
patent infringement. Normally,
substantial similarity should not be determined in a vacuum, and relevant prior
art can inform the trier of fact as to the relative breadth of design patent
claims. Furthermore, consideration of
prior art does not necessarily mean a
narrower scope of protection. Where a
design is clearly unique within its field, it may be entitled to broader protection.
Thus, Revision Military
may signal the Federal Circuit’s
intention to create a more rigid framework for design patent infringement
analysis, including consideration of prior art.
We will continue to monitor this
case and provide any meaningful updates. A full copy of the Federal Circuit's decision can be found here.
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