MRC Innovations v. Hunter MFG: Finding Obviousness In Design Patents

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.

Procedural HistoryMRC Innovations, Inc. appeals from a final judgment of the U.S. District Court for the Northern District of Ohio granting summary judgment of invalidity with respect to U.S. Design Patent Nos. D634,488 S (“’488 patent”) and D634,487 S (“’487 patent”).
MRC Innovations, Inc. at *2.
Legal Reasoning (Rader, CJ, Prost, Chen)
Facts“MRC is the owner by assignment of both patents-in- suit. The ’488 patent claims an ornamental design for a football jersey for a dog, while the ’487 patent does the same for a baseball jersey […] Mark Cohen is the named inventor of both patents; he is the principal shareholder of MRC […]” MRC Innovations, Inc. at *23. “Hunter purchased pet jerseys for dogs from Mark Cohen through companies with which he was affiliated.” Id. at *3. “In December 2010, Cohen informed Hunter that he no longer intended to do business with Hunter because Hunter was having difficulty making payments. […] Hunter contracted with another supplier, appellee CDI International, Inc., to supply Hunter with pet jerseys.” Id. at *3.
Legal Standard: Obviousness in Design PatentsIn the context of design patents, “‘the ultimate inquiry under section 103 is whether the claimed design would have been obvious to a designer of ordinary skill who designs articles of the type involved.’” […] To answer this question, a court must first determine “whether one of ordinary skill would have combined teachings of the prior art to create the same overall visual appearance as the claimed design.” […] That inquiry involves a two-step process. First, the court must identify “a single reference, ‘a something in existence, the design characteristics of which are basically the same as the claimed design.’” […] The “basically the same” test requires consideration of the “visual impression created by the patented design as a whole.” […]
Id. at *6 (internal citations omitted).
[1: Primary Reference] Adequate Description of Claimed Design Without Express Verbal Translation, '488 Patent
Description by District Court
[T]he 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. […]
MRC Innovations, Inc. at *8 (internal citations omitted).
[T]he 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. at *8 (internal citations omitted).
Description AdequateTaking 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. The district court did far more than merely ask whether the Eagles jersey disclosed the “general concept” of a pet jersey; it thoroughly considered the “distinctive ‘visual appearances’ of the reference and the claimed design.” […]
Id. at *8 (internal citations omitted).
[2: Secondary References] Substantial Similarity to Primary References, '488 Patent
Similarity of References Amounts to Suggestion to Combine
It is true that “[i]n order for secondary references to be considered, . . . there must be some suggestion in the prior art to modify the basic design with features from the secondary references.” […] However, we have explained this requirement to mean that “the teachings of prior art designs may be combined only when the designs are ‘so related that the appearance of certain ornamental features in one would suggest the application of those features to the other.’” […] In other words, it is the mere similarity in appearance that itself provides the suggestion that one should apply certain features to another design.
MRC Innovations, Inc. at *11-12 (internal citations omitted).
[T]he secondary references that the district court relied on were not furniture, or drapes, or dresses, or even human football jerseys; they were football jerseys designed to be worn by dogs. Moreover, as discussed above, the V2 could easily have served as a primary reference itself, so similar is its overall visual appearance to that of the claimed design and the Eagles jersey. […] We therefore 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.
Differences are de minimis[T]he Eagles jersey had already disclosed the use of ornamental surge stitching. The only additional step needed was to extend the stitching down the sides of the rear of the jersey. Moreover, the V2 jersey plainly suggested the addition of vertical lines down the rear of the jersey through the use of the seams between the two types of fabric. We agree with the district court that adding ornamental surge stitching on top of a preexisting seam was an insubstantial change that would have been obvious to a skilled designer.
Id. at *14.
Secondary ConsiderationsMRC presented no evidence whatsoever that the commercial success and copying were related to the merits of the claimed invention. Merely stating—with no supporting figures or data—that the V3 was more successful than the V2 is insufficient on its own to establish that the V3 has been a “commercial success” and that its success was attributable to the claimed design features. Moreover, the only license MRC produced was between MRC and FiG, a company that is at least partially owned by Mark Cohen, who also owns MRC.
Id. at *15-16.
Counterpart '487 Patent Analysis
Primary Reference[T]he overall visual impression of the Sporty K9 baseball jersey is “basically the same” as the ’487 patented design. Indeed, of the several minor differences the district court pointed out between the two products, only the less tubular shape of the ’487 design truly affects the overall visual impression of the design as a whole. As to that difference, Hunter provided evidence that the Sporty K9 jersey more closely resembles the patented design when actually worn by a pet, rather than when depicted in plan view; an image from the Sporty K9 brochure reveals that a garment (there, a dog sports jacket) which appears quite tubular in plan view (just like the Sporty K9 baseball jersey) actually appears much shorter in the front when worn by a dog. […] Thus, the Sporty K9 baseball jersey can reasonably be considered a “primary reference” for purposes of the obviousness analysis.
MRC Innovations, Inc. at *18.
Secondary ReferenceThe district court relied on both the V2 and Eagles football jerseys to demonstrate that the use of mesh and a less “tubular” shape were well known in the prior art for pet jerseys. […] For the same reasons as discussed above, we have no trouble concluding that those jerseys are “so related” to the claimed design that the mere similarity in visual appearance would suggest the combination of those features to create the claimed design.
Id. at *18-19.
We therefore affirm the district court’s grant of summary judgment of invalidity of the ’487 patent.
MRC Innovations, Inc. at *19.
 Image Attribution Statement: MRC Innovations, Inc. at *3-4 (altered images).
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