Thursday, April 3, 2014

Federal Circuit Alert: MRC Innovations, Inc. v. Hunter Mfg., LLP

Yesterday, the Federal Circuit affirmed the decision of the Northern District of Ohio to invalidate two design patents held by MRC Innovations (“MRC”) for athletic team shirts for dogs. See MRC Innovations, Inc. v. Hunter Mfg., LLP, --- F.3d ----, No. 2013-1433, 2014 WL 1303368 (Fed. Cir. April 2, 2014). The case was successfully argued by design patent guru Perry Saidman of the Saidman DesignLaw Group and is a noteworthy follow-up the Federal Circuit’s decision in High Point.

The design-patents-in-suit were U.S. Design Patent Nos. 634,488 S (“’488 Patent”) and D634,487 S (“’487 Patent”), both directed to an athletic team jersey for a dog. Through the course of discovery, it became clear that MRC had previously sold two earlier versions of its jersey designs – “the V2 Jersey” and “the Eagles Jersey” more than 1 year prior to the relevant date of the ’487 and ’488 Patents. Below are images of the prior art jerseys:

Based on the prior sale of these jerseys, the district court held that both of MRC’s patents were invalid as obvious, using the Eagles jersey as the primary reference against the ’488 Patent. On appeal, MRC argued that the district court’s decision violated the Federal Circuit’s recent decision in High Point Design LLC v. Buyers Direct, Inc., 730 F.3d 1301, 1314 (Fed.Cir.2013) because the Eagles jersey was not “basically the same” as the design of the ’488 Patent and because, according to MRC, the district court failed to give a verbal description of the similarities between the Eagles jersey and the ’488 design. MRC pointed to three perceived differences between the ’488 design and the prior art:

(1) the patented design has a V-neck collar where the Eagles jersey has a round neck; (2) the patented design contains an interlock fabric panel on the side portion of the design rather than mesh; and (3) the patented design contains additional ornamental surge stitching on the rear portion of the jersey.
MRC argued that the district court overlooked these differences and focused on the claimed design at “too high a level of abstraction. 

First, the Federal Circuit explained that the district court’s verbal description of the ’488 design patent was sufficient, reasoning that “High Point makes clear that the purpose of requiring district courts to describe the claimed design in words is so that the parties and appellate courts can discern the trial court's reasoning in identifying a primary reference. . . . It is entirely clear from the district court's opinion what it considered to be the relevant design characteristics of the ’488 patented design.” (emphasis added). Applying this standard, the court found that the district court’s explanation as to why the Eagles jersey was “basically the same” was adequate:

the district court pointed out three key similarities between the claimed design and the Eagles jersey: an opening at the collar portion for the head, two openings and sleeves stitched to the body of the jersey for limbs, and a body portion on which a football logo is applied. . . . 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.
Next, the Federal Circuit affirmed the district court’s holding that the Eagles jersey was “basically the same,” and held that a primary reference need not be identical in order to be “basically the same.” “That there are slight differences in the precise placement of the interlock fabric and the ornamental stitching does not defeat a claim of obviousness; if the designs were identical, no obviousness analysis would be required.” (emphasis added). Based on the basic similarity of the ’488 design and the Eagles Jersey, the court affirmed the underlying finding of obviousness.

The court’s analysis with respect to the ’487 Patent was based on the same reasoning, while using the below “Sporty K9” baseball jersey as the primary reference. 

MRC does not appear to change the Federal Circuit’s analysis in High Point. Rather, the court’s analysis suggests that the verbal description requirement in High Point was intended to be understood within the context of an obviousness analysis and was not intended to conflict with the Federal Circuit’s suggestion in Egyptian Goddess that detailed verbal descriptions of design patents are generally to be avoided. MRC is best viewed as applying a common sense framework to the verbal description requirement announced in High Point – all that is required is a verbal description of the patent sufficient to assess the correctness of the district court’s analysis – a detailed verbal description is not required.

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