The Federal Circuit, in reversing a court’s decision to grant summary judgment of invalidity of claims of three design patents, held that the identification of multiple differences between the claimed design and a cited reference created a factual issue as to “whether [the cited reference] is a proper primary reference” to support an obviousness inquiry for design patents. Spigen Korea Co., LTD. v. Ultraproof, Inc., 2019-1435 (Fed. Cir. Apr. 17, 2020) (patents-in-suit are U.S. Design Patent Nos. D771,607; D775,620; and D776,648). This was a precedential opinion authored by Judge Reyna and joined by Judge Newman. Judge Lourie dissented without opinion.
The court first noted that “[s]ummary judgment of obviousness is appropriate if “the content of the prior art, the scope of the patent claim, and the level of ordinary skill in the art are not in material dispute, and the obviousness of the claim is apparent in light of these factors.” MRC Innovations, Inc. v. Hunter Mfg., LLP, 747 F.3d 1326, 1331 (Fed. Cir. 2014). Spigen argued that “there is a material factual dispute over whether [U.S. Design Patent No. D729,218] is a proper primary reference that precludes summary judgement.”
The court then explained that “[a] ‘primary reference’ is ‘a single reference that creates “basically the same” visual impression’ as the claimed design,’” High Point Design LLC v. Buyers Direct, Inc., 730 F.3d 1301, 1312 (Fed. Cir. 2013), which means that the designs “cannot have ‘substantial differences in the[ir] overall visual appearance[s].’” Apple, Inc. v. Samsung Elecs. Co., 678 F.3d 1314, 1330 (Fed. Cir. 2012) (alterations in original). However, as the court noted, slight differences “do not necessarily preclude a ‘basically the same’ finding.” MRC Innovations, 747 F.3d at 1333.
The ‘607 patent is representative of the patents-in-suit. A comparison of the ‘607 patent and the prior art ‘218 patent is shown here.
Ultraproof argued that the ‘218 patent and the ‘607 patent were basically the same because “the ‘only perceivable difference[s]’ between the ‘218 patent and [the ‘607 patent] were the ‘circular cutout in the upper third of the back surface and the horizontal parting line on the back and side surfaces.’” (Alterations in original). Spigen countered with expert testimony that “unlike the [‘607 patent], the ’218 patent ‘“[has] unusually broad front and rear chamfers and side surfaces” and a “substantially wider surface,” “lack[s] any outer shell-like feature or parting lines,” lacks an aperture on its rear side, and “[has] small triangular elements illustrated on its chamfers.”’” (Alterations in original).
In this case, the Federal Circuit found that the district court had improperly ignored a genuine factual question: “[a]lthough ‘trial court judge may determine almost instinctively whether the two designs create basically the same visual impression,’ Durling v. Spectrum Furniture Co., 101 F.3d 100, 103 (Fed. Cir. 1996), a trial court is not free to find facts at the summary judgment phase.” Lemelson v. TRW, Inc., 760 F.2d 1254, 1260 (Fed. Cir. 1985). Here, the Federal Circuit concluded that based on the “competing evidence…, a reasonable factfinder could conclude that the ‘218 patent and the [‘607 patent] have substantial differences, and, thus, are not basically the same.” Therefore, the court reversed the district court’s decision to grant summary judgment of obviousness and remanded for further proceedings.
Lessons for Practice
For a design patent, an obviousness analysis is premised on identifying a prior art reference that is “basically the same” as the claimed design, somewhat similar to an infringement analysis. This requires ascertaining the differences between the overall visual appearance of the claimed design and the prior art. As this case illustrates, expert testimony identifying multiple differences between the claimed design and the prior art can raise a factual question about whether the identified differences are “substantial”, which would preclude a “basically the same” finding, or “slight”, which may permit a “basically the same” finding.