To Establish That The Prior Art Is 'Basically The Same' As A Design Patent, The District Court Only Needs To Describe The Relevant Design Characteristics Of The Claimed Design In Comparison With The Prior Art

In MRC Innovations, Inc. v. Hunter Manufacturing, LLP, No. 13-1433 (Fed. Cir. Apr. 2, 2014), the Federal Circuit affirmed the district court's SJ of invalidity with respect to U.S. Design Patent Nos. D634,488 S ("the '488 patent") and D634,487 S ("the '487 patent").

Plaintiff MRC Innovations, Inc. ("MRC"), the assignee of both patents-in-suit, sued Defendants Hunter Manufacturing, LLP and CDI International, Inc. (collectively "Hunter") for willful infringement of the '487 and '488 patents. The '487 patent claims an ornamental design for a baseball jersey for a dog, and the '488 patent claims an ornamental design for a football jersey for a dog. The district court granted SJ on the ground that both patents are obvious in view of several prior art pet jerseys. The district court specifically found that the '488 patent was obvious in view of a green pet jersey bearing a Philadelphia Eagles logo ("the Eagles Jersey"), as a primary reference, together with a "V2" football jersey ("the V2 Jersey") and a "Sporty K9" jersey ("the Sporty K9 Jersey"), as secondary references. The district court also found that the '487 patent was obvious over the baseball version of the Sporty K9 Jersey ("the Sporty K9 Baseball Jersey"), as a primary reference, together with the V2 Jersey and the Eagles Jersey, as secondary references. MRC appealed.

The pictures of the claimed design of the '488 patent, the Eagles Jersey, and the V2 Jersey are presented below:

On appeal, the Federal Circuit noted the obviousness inquiry, in the context of design patents, is whether a designer of ordinary skill "would have combined teachings of the prior art to create the same overall visual appearance as the claimed design." Slip op. at 6 (quoting Durling v. Spectrum Furniture Co., 101 F.3d 100, 103 (Fed. Cir. 1996)). Such an inquiry involves a two-step process. First, a single primary reference must be identified that creates "basically the same" visual impression created by the patented design as a whole, and the reasoning behind choosing such a primary reference must be provided.

Second, secondary references may be identified, which must be "so related [to the primary reference] that the appearance of certain ornamental features in one would suggest the application of those features to the other." Id. at 7 (alteration in original) (quoting Durling, 101 F.3d at 103).

"As an initial matter, it is true that the district court did not expressly undertake to translate the claimed...