MRC Innovations, Inc. v. Hunter MFG., LLP, & CDI International, Inc.
921 F. Supp. 2d 800
N.D. Ohio2013Background
- MRC Innovations owns two design patents: D634,488 (Football Jersey for a Dog) and D634,487 (Baseball Jersey for a Dog).
- Defendants Hunter MFG and CDI moved for summary judgment; plaintiff sought oral argument, which the court denied.
- Cohen, MRC’s inventor and main shareholder, previously supplied Hunter with pet jerseys, including pre-patent designs V2 and Eagles; FiG (through Cohen) manufactured them.
- In 2011 the patents issued; Hunter later contracted with CDI to manufacture pet jerseys.
- Plaintiff alleges infringement via sale/import of dog jerseys by Hunter/retailers; defendants contend the patents are invalid under 35 U.S.C. § 103 (obviousness).
- Court finds both patents invalid under 35 U.S.C. § 103(a); summary judgment granted for defendants; §112 grounds also considered but not dispositive.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Are the '488 and '487 patents invalid as obvious under § 103(a)? | Cohen's declarations show nonobviousness and commercial success. | Prior art V2, Eagles, Sporty K9 render designs obvious; similarities de minimis. | Yes; both patents invalid for obviousness under § 103(a). |
| Do the prior art references anticipate or invalidate the '487 patent under § 102(b) or 103? | Sporty K9 differs in collar/fabric and is not identical; V2/Eagles lack key features. | Sporty K9 single reference with basically the same design; differences are de minimis. | Anticipation/obviousness found; '487 invalid under § 103(a). |
| Is the '488 patent invalid under § 112 for lack of enabling description of interlock fabric? | Drawings indicate mesh vs interlock; areas grid-indicated show mesh; enablement exists. | Patents silent on location/appearance of interlock fabric; not enabling. | No summary judgment; genuine issue exists as to enablement; §112 not dispositive. |
| Should the court consider expert designer testimony for Graham factor 3 (level of ordinary skill) on obviousness? | Cohen as designer offers evidence of nonobviousness. | Obviousness can be assessed by a fictitious skilled designer; expert testimony not required. | Court finds no genuine dispute; third Graham factor supports invalidity. |
Key Cases Cited
- Gorham Mfg. Co. v. White, 81 U.S. 511 (1871) (designs judged by ordinary observer; visual sameness governs infringement)
- Graham v. John Deere Co., 383 U.S. 1 (U.S. 1966) (Graham factors for obviousness analysis)
- Apple, Inc. v. Samsung Electronics Co. Ltd., 678 F.3d 1314 (Fed.Cir. 2012) (two-step obviousness analysis for designed articles)
- Int’l Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233 (Fed.Cir. 2009) (overall appearance; de minimis differences not fatal to invalidity)
- In re Carter, 673 F.2d 1378 (Fed.Cir. 1982) (de minimis differences and ordinary skill considerations in design patents)
- Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714 (Fed.Cir. 1991) (objective vs subjective obviousness considerations)
- In re Nalbandian, 661 F.2d 1214 (CCPA 1981) (design patent obviousness assessment; position of ordinary skill)
- Petersen Mfg. Co. v. Central Purchasing, Inc., 740 F.2d 1541 (Fed.Cir. 1984) (expert testimony on obviousness not strictly required)