Mrc Innovations, Inc. v. Hunter Mfg., LLP
747 F.3d 1326
| Fed. Cir. | 2014Background
- MRC Innovations (assignee of inventor Mark Cohen) owns U.S. Design Patents D634,488 (football pet jersey) and D634,487 (baseball pet jersey). Cohen designed earlier V2 and Eagles pet jerseys and later the V3 design claimed in the patents.
- Hunter Manufacturing and CDI sold pet jerseys; Hunter previously purchased V2 and Eagles jerseys from Cohen-affiliated suppliers before the asserted patents issued.
- Cohen supplied Hunter with the allegedly patented V3 design after September 2009; patent applications were filed September 8, 2010; both patents issued March 15, 2011.
- MRC sued Hunter and CDI for willful infringement. The district court granted summary judgment holding both design patents invalid as obvious under 35 U.S.C. § 103(a); summary judgment under § 112 was denied.
- On appeal, the Federal Circuit reviewed obviousness de novo (with Sixth Circuit summary-judgment standards applied) and analyzed whether prior pet-jersey designs could serve as a primary reference and whether secondary references would suggest combining features to produce the claimed overall visual appearance.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the D'488 design patent is obvious over prior pet-jersey designs | MRC: District court failed to verbalize design and ignored material differences (V-neck vs round neck, interlock vs mesh panels, extra rear surge stitching); differences preclude a primary reference finding and create factual dispute | Hunter/CDI: Eagles jersey (and V2/Sporty K9) create the same overall visual impression; secondary references suggest V-neck and fabric/shape changes; stitching is de minimis | Held: Affirmed obviousness. Eagles (or V2) is a valid primary reference; V2/Sporty K9 supply related secondary teachings; additional stitching was de minimis and obvious to a designer of ordinary skill. |
| Whether secondary considerations (commercial success, copying, licensing) create a genuine issue of nonobviousness | MRC: Sales increase, copying by defendants, and a license show nexus and nonobviousness | Hunter/CDI: MRC offered only inventor testimony and self-interested license; no evidentiary nexus tying success to claimed design | Held: The evidence fails to establish the required nexus; district court did not err to treat secondary evidence as insufficient to defeat summary judgment. |
| Whether the D'487 design patent is obvious over prior pet-jersey designs | MRC: Sporty K9 baseball jersey differs materially (mesh, tubularity, collar) and district court failed to verbalize design differences | Hunter/CDI: Sporty K9 is basically the same overall visual appearance; V2/Eagles supply mesh and shape teachings as secondary references | Held: Affirmed obviousness. Sporty K9 is a proper primary reference; secondary references render claimed design obvious. |
| Whether the court should reach §112 invalidity argument | MRC: Not applicable on appeal because district court denied §112 summary judgment | Hunter/CDI: Alternative invalidity argument not necessary if obviousness affirmed | Held: Court affirmed on obviousness and declined to decide §112 issue as unnecessary and nonfinal for appeal. |
Key Cases Cited
- KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) (framework for obviousness and combining prior art)
- Graham v. John Deere Co., 383 U.S. 1 (1966) (Graham factual inquiries for obviousness)
- Durling v. Spectrum Furniture Co., 101 F.3d 100 (Fed. Cir. 1996) (design-patent obviousness: identify a primary reference that is "basically the same" visually)
- In re Rosen, 673 F.2d 388 (C.C.P.A. 1982) (definition of a primary reference in design patents)
- In re Borden, 90 F.3d 1570 (Fed. Cir. 1996) (use of secondary references when designs are "so related" that features suggest application to each other)
- High Point Design LLC v. Buyers Direct, Inc., 730 F.3d 1301 (Fed. Cir. 2013) (requirement to explain claimed design in words to reveal the court’s reasoning)
- Apple, Inc. v. Samsung Elecs. Co., 678 F.3d 1314 (Fed. Cir. 2012) (focus on distinctive visual appearances in design comparisons)
- Crocs, Inc. v. Int’l Trade Comm’n, 598 F.3d 1294 (Fed. Cir. 2010) (design patents evaluated by overall visual impression; differences can be de minimis)
- Titan Tire Corp. v. Case New Holland, 566 F.3d 1372 (Fed. Cir. 2009) (design-patent obviousness standard applied to vehicle-related designs)
- Honeywell Int’l, Inc. v. United States, 609 F.3d 1292 (Fed. Cir. 2010) (standard of review for obviousness determinations)