Tuesday, November 27, 2012

Federal Circuit Alert – Revision Military, Inc. v. Balboa Mfg. Co. No. 2011-1628

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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