Revision Military, Inc. v. Balboa Manufacturing Co.
700 F.3d 524
Fed. Cir.2012Background
- Revision Military and Balboa Mfg design, manufacture, and sell protective eyewear; Bobster Bravo allegedly copies Revision’s Bullet Ant goggles under the ’098 and ’039 design patents.
- Revision moved for a preliminary injunction to stop Balboa from selling Bobster Bravo during litigation; district court denied the injunction.
- Court of appeals held the district court erred in applying the Second Circuit’s heightened likelihood standard, and must apply the Federal Circuit standard.
- Design patent infringement analysis uses Gorham Co. v. White’s ‘ordinary observer’ test, as clarified by Egyptian Goddess en banc, with no “point of novelty” requirement.
- District court on remand must consider the designs as a whole, apply the more-likely-than-not standard, and use prior art as context in the comparison.
- Overall ruling: vacate denial of preliminary injunction and remand for redetermination under Federal Circuit criteria.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| What standard governs likelihood of success on merits for a design-patent injunction? | Revision argues Federal Circuit standard: more likely than not. | Balboa argues continued Second Circuit standard applies. | Federal Circuit standard applies. |
| Did district court err by applying a heightened ‘clear/substantial likelihood’ test? | Revision contends no heightened standard is required. | Balboa contends the district court’s approach was correct under applicable precedent. | Yes, district court erred; apply Federal Circuit standard. |
| What test governs design-ppatent infringement, and can prior art frame of reference be used? | Revision asserts ‘ordinary observer’ test with prior art context supports infringement likelihood. | Balboa maintains the court should focus on distinct features. | Ordinary observer test governs; prior art context may be used on remand. |
| Should the case be remanded for redetermination under the correct standard? | Revision seeks reinstitution of injunction under proper standard. | Balboa opposes remand or argues limited reconsideration. | Yes, remand to apply Federal Circuit criteria. |
Key Cases Cited
- Hybritech Inc. v. Abbott Labs., 849 F.2d 1446 (Fed. Cir. 1988) (infringement injunctions under patent law governed by Federal Circuit law)
- Reebok Int’l Ltd. v. J. Baker, Inc., 32 F.3d 1552 (Fed. Cir. 1994) (appeals from denials of preliminary injunction involve patent-law issues)
- Purdue Pharma L.P. v. Boehringer Ingelheim GMBH, 237 F.3d 1359 (Fed. Cir. 2001) (Federal Circuit law governs certain pretrial patent issues on appeal)
- Mikohn Gaming Corp. v. Acres Gaming, Inc., 165 F.3d 891 (Fed. Cir. 1998) (disposition on injunctions relates to patent issues, but focus on content)
- Gorham Co. v. White, 81 U.S. 511 (U.S. 1871) (design patent infringement test: ordinary observer, substantial sameness)
- Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008) (en banc: abolishes ‘point of novelty’; uses ordinary observer test with frame of reference)
- Crocs, Inc. v. International Trade Commission, 598 F.3d 1294 (Fed. Cir. 2010) (focus on overall design in determining infringement)
- Winter v. Natural Resources Defense Council, Inc., 555 U.S. 7 (S. Ct. 2008) (four-factor test for preliminary injunctions)