955 F.3d 1379
Fed. Cir.2020Background
- Spigen owns three U.S. design patents (D771,607; D775,620; D776,648) claiming a cellular-phone case and sued Ultraproof for infringement.
- Ultraproof moved for summary judgment, arguing the Spigen designs were obvious in view of prior U.S. design patents D729,218 (the ’218 patent) and D772,209 (the ’209 patent).
- The district court granted summary judgment, finding the ’218 patent a proper primary reference that was "basically the same" as Spigen’s designs and thus rendered them obvious.
- Spigen appealed, arguing a genuine factual dispute existed over whether the ’218 patent is "basically the same" (a question for a factfinder); Ultraproof cross‑appealed the denial of attorneys’ fees.
- The Federal Circuit held the district court erred because competing expert evidence created a genuine dispute of material fact about the primary‑reference comparison, reversed and remanded, and dismissed the fees cross‑appeal as moot.
Issues
| Issue | Spigen's Argument | Ultraproof's Argument | Held |
|---|---|---|---|
| Whether the ’218 patent is a proper primary reference for obviousness | Differences are substantial; expert evidence shows not "basically the same" | Designs share core visual features; differences are minor/degree only | Reversed: genuine dispute of material fact exists; summary judgment improper |
| Whether district court may resolve primary‑reference fact at summary judgment | Factfinder must decide; summary judgment inappropriate if disputes exist | Court can find primary reference as matter of law here | Court sides with Spigen: cannot resolve disputed factual comparisons at summary judgment |
| Alternative invalidity grounds raised by Ultraproof (other refs, combinations, inequitable conduct) | N/A (relied on primary‑reference challenge) | Various alternative obviousness and inequitable conduct arguments | Not decided on appeal; remanded for district court to consider in first instance |
| Whether pre‑filing printed publications (copyright registrations) invalidate the designs | Dates and publication status disputed | Registrations show prior publication | District court correctly found a genuine dispute; alternative ground rejected at summary judgment phase |
Key Cases Cited
- Durling v. Spectrum Furniture Co., 101 F.3d 100 (Fed. Cir. 1996) (defines "basically the same" visual‑impression test for primary reference)
- High Point Design LLC v. Buyers Direct, Inc., 730 F.3d 1301 (Fed. Cir. 2013) (finder of fact must identify a primary reference; summary judgment improper if disputes exist)
- MRC Innovations, Inc. v. Hunter Mfg., LLP, 747 F.3d 1326 (Fed. Cir. 2014) (setting summary judgment standards for design‑patent obviousness)
- Ethicon Endo‑Surgery, Inc. v. Covidien, Inc., 796 F.3d 1312 (Fed. Cir. 2015) (design patents enjoy a presumption of validity requiring clear and convincing evidence for invalidation)
- Titan Tire Corp. v. Case New Holland, Inc., 566 F.3d 1372 (Fed. Cir. 2009) (ultimate obviousness inquiry is objective designer’s perspective)
- In re Harvey, 12 F.3d 1061 (Fed. Cir. 1993) (major modifications preclude a primary‑reference finding)
- Lemelson v. TRW, Inc., 760 F.2d 1254 (Fed. Cir. 1985) (fact‑finding is inappropriate at summary judgment when disputes exist)
- Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (1986) (summary judgment standard: no reasonable jury could find for nonmoving party)