April 20, 2020

Selection of Primary Reference in Design Patent Case is a Question of Fact that Should Not be Resolved on Summary Judgment

In Spigen Korea Co. Ltd. v. Ultraproof, Inc.[2019-1435, 2019-1717] (April 17. 2020) the Federal Circuit reversed summary judgment of invalidity of three asserted design patents — U.S. Design Patent Nos. D771,607, D775,620, and D776,648, all directed to a cell phone case — because the district court resolved a genuine dispute of material fact at summary judgment.

Figures 3 – 5 of the ’607 patent are illustrative of the claimed design:

The ’620 patent disclaims certain elements present in the ’607 patent. Figures 3–5 of the ’620 patent are illustrative of the claimed design:

Lastly, the ’648 patent disclaims most of the elements present in the ’607 and ’620 patents. Figures 3–5 of the ’648 patent are illustrative of the claimed design:

Ultraproof filed a motion for summary judgment of invalidity of the design patents, arguing that the designs were obvious as a matter of law in view of a primary reference, U.S. Design Patent No. D729,218 in view of U.S. Design Patent No. D772,209.

Spigen argued that there was a material factual dispute over whether the ’218 patent is a proper primary reference that precludes summary judgment, and the Federal Circuit agreed.

For design patents, the ultimate inquiry for obviousness is whether the claimed design would have been obvious to a designer of ordinary skill who designs articles of the type involved. This inquiry is a question of law based on underlying factual findings. One underlying factual issue is whether a prior art design qualifies as a “primary reference.”

A “primary reference” is a single reference that creates basically the same visual impression as the claimed design. To be basically the same, the designs at issue cannot have substantial differences in their overall visual appearances. If “major modifications” would be required to make a design look like the claimed design, then the two designs are not “basically the same.” “Slight differences” in design, however, do not necessarily preclude a “basically the same” finding.

Although a trial court judge may determine almost instinctively whether the two designs create basically the same visual impression, a trial court is not free to find facts at the summary judgment phase. Thus, if based on the evidence, a reasonable jury could find in favor of the non-moving party, a trial court must stay its hand and deny summary judgment of obviousness.

The Federal Circuit determined that a genuine dispute of material fact exists as to whether the ’218 patent is basically the same as the Spigen design patents and, hence, a proper primary reference.

The Federal Circuit reversed the district court’s grant of summary judgment of invalidity and remand for further proceedings.