Category: Design Patents 
By: Jesus Hernandez, Blog Editor/Contributor  
TitleMRC Innovations, Inc. v. Hunter MFG., LLP, No. 2013-1433 (Fed. Cir. April 2, 2014).
[1: Primary Reference] If the district court had translated the claimed design into a verbal description as required by High Point, MRC insists, it would have concluded that neither the Eagles jersey nor any other prior art reference contained design characteristics that were “basically the same” as the claimed design.
MRC Innovations, Inc. at *7.
[2: Secondary References] MRC argues that the district court erred by failing to explain why a skilled artisan would have chosen to incorporate those features of the V2 and Sporty K9 jerseys with the [primary reference] Eagles jersey [because the prior art included substantial differences and that said differences were not de minimis].
Id. at *11 (text added).
[1: Primary Reference] [Although the district court did not expressly translate the claimed design into a verbal description], 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.
Id. at *7-8 (text added).
[2: Secondary References] [Because (1) the secondary references were so similar to the primary reference that that they could serve as the primary reference themselves, and (2) adding ornamental surge stitching on top of a preexisting seam is a de minimis change,] [w]e […] agree that those references 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.
Id. at *13.
Category: Design Patents 
By: Jesus Hernandez, Blog Editor/Contributor 
TitlePacific Coast Marine Windshields Ltd. v. Marine Hardware Inc., No. 2013-1199 (Fed. Cir. Jan. 8, 2014).
IssuePacific Coast, in its briefs, argued that prosecution history estoppel should not apply to design patents at all.
Pacific Coast Marine Windshields Ltd. at *10.
HoldingWe conclude that the principles of prosecution history estoppel apply to design patents as well as utility patents.
Id. at *11.
Category: Design Patents 
 By: Jesus Hernandez, Blog Editor/Contributor 
TitleHigh Point Design v. Meijer, Inc., No. 2012-1455 (Fed. Cir. Sept. 11, 2013).
Issue(s)[1a] “First, BDI asserts that the court erred by applying an “ordinary observer” standard, because this court’s case law requires application of an “ordinary designer” standard in an obviousness analysis relating to a design patent. […]. [1b] Second, BDI argues that the district court failed to properly communicate its reasoning in either step of the obviousness analysis [by providing a brief description of the design patent]." High Point Design, at * 13 (text added).
[2] “[Did the court err] by finding the claimed design [of a slipper] invalid merely because the design contains elements that perform functions [associated with foot wear][?]" High Point Design, at *20 (text added).
Holding(s)[1] "The use of an 'ordinary observer' standard to assess the potential obviousness of a design patent runs contrary to the precedent of this court and our predecessor court, under which the obviousness of a design patent must, instead, be assessed from the viewpoint of an ordinary designer." High Point Design, at * 14-15 (text added). "[Also, providing a brief description of a design patent] represents 'too high a level of abstraction' by failing to focus 'on the distinctive visual appearances of the reference and the claimed design.'" High Point Design, at * 16-17 (text added).
[2] "This analysis [of invalidating an entire design patent because some aspects are functional] contravenes this court’s precedent: [A] distinction exists between the functionality of an article or features thereof and the functionality of the particular design of such article or features thereof that perform a function. Were that not true, it would not be possible to obtain a design patent on a utilitarian article of manufacture . . . ." High Point Design, at *21 (text added).

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