No Summary Judgment Where Primary Reference Might Not Be “Basically the Same” as Asserted Design Patent
The US Court of Appeals for the Federal Circuit found that the district court improperly resolved a genuine dispute of material fact with respect to summary judgment of invalidity for design patent obviousness because a reasonable fact finder could have concluded that the primary prior art reference did not create “basically the same” visual impression as the asserted designed patent. Spigen Korea Co., Ltd. v. Ultraproof Inc. et al., Case Nos. 19-1435; -1717 (Fed. Cir. Apr. 17, 2020) (Reyna, J.) (Lourie, J., dissented without opinion).
Spigen filed a lawsuit against Ultraproof alleging infringement of three design patents directed to a cellular phone case. Ultraproof filed a motion for summary judgment of invalidity, arguing that Spigen’s design patents were obvious in view of a combination of a primary prior art reference and a secondary prior art reference. Spigen opposed Ultraproof’s motion, arguing that its design patents were not obvious, and that underlying factual disputes precluded a summary judgment. The district court found Spigen’s design patents were obvious and granted summary judgment of invalidity. Spigen appealed.
The Federal Circuit reversed, finding that there was a material factual dispute over whether the primary reference was a proper primary reference. The Court explained that in the context of an obviousness analysis for design patents, a fact finder must identify a primary reference that creates “basically the same” visual impression as the claimed design. The Court explained that the district court had found that, despite “slight differences,” the primary reference was “basically the same” as Spigen’s design patents, and, thus, a proper primary reference. Reviewing the decision de novo, the Court found that a genuine dispute of material fact existed as to whether the primary reference was “basically the same” as Spigen’s design patents, since a reasonable fact finder could have concluded that the primary reference and Spigen design patents did not create “basically the same” visual impression—the standard for a primary reference determination in design patent cases. The Court also rejected Ultraproof’s arguments that the differences between the primary reference and Spigen’s design patents were “largely differences of degree, not characteristic,” and therefore irrelevant to the “basically the same” inquiry. The Federal Circuit thus held that the district court improperly resolved a genuine dispute of material fact at summary judgment and reversed and remanded.