SUMMARY JUDGMENT HOLDING DESIGN PATENTS OBVIOUS REVERSED - Mobile Phones and Sausages: A Nonobvious Combination

In a case that is extraordinarily ordinary - Spigen Korea Co., Ltd., v. Ultraproof, Inc., et al - the U.S. Court of Appeals for the Federal Circuit on April 17, 2020 reversed the lower court’s finding that 3 of Spigen’s design patents on a cover for a mobile phone (D771, 607; D775, 620; and D776,648) were obvious as a matter of law.

It’s too bad that the Spigen decision didn’t come down a few weeks earlier, so that the district court in another summary judgment case involving obviousness of sausage packages – Johnsonville Sausage LLC v. Klement Sausage Co Inc. (E.D. Wisc., 16-C-938, 3/27/2020) – could take its lesson to heart.

The district court in Spigen found that U.S. Pat. No. D729,218 was a proper primary reference and invalidated Spigen’s patents on summary judgment (the secondary reference D772,209 was immaterial to the decision). The Federal Circuit found that a reasonable jury could have found that the ‘218 reference was not a proper primary reference, and therefore reversed on that ground. Note that the Court did not decide that the ‘218 reference was or was not a proper primary reference, only that a reasonable jury could find either way and therefore the question was inappropriate for disposition on summary judgment. The Court used the following illustration in its opinion to compare the ‘607 design with the ‘218 design:

It is black letter law that in order to find a design patent obvious, there must be a single prior art reference – a something in existence – that is “basically the same” in appearance as the claimed design to a designer of ordinary skill. The Federal Circuit reviewed the district court record to note similarities and differences between the ‘607 claimed design and the purported primary reference - the ‘218 patent.

For example, with respect to the ‘607 design the patentee Spigen argued that the ‘218 design was deficient in that it lacked an outer shell that wraps around the back and side surfaces, lateral parting lines, and a large circular aperture on the rear surface. Also, it argued that the ‘218 design’s side surfaces and chamfers were too large, and had ornamental triangular elements on its front surface. Ultraproof advanced counterarguments.

In view of the competing evidence introduced by Spigen and Ultraproof as to whether the ‘218 design was basically the same as the ‘607 design, and because a reasonable jury could find either way, the Court reversed the lower court’s summary conclusion that it was.

There were two mildly interesting parts of this decision. First, the Court did not compare the ‘218 patent – the alleged primary reference – with the other two Spigen design patents, the ‘620 and ‘648 patents. This is significant because the latter two patents disclaimed many of the features that were claimed in the ‘607 patent. Thus, it is possible that the ‘218 patent is a proper primary reference against the plaintiff’s two broader patents.

As seen above, the ‘648 patent disclaimed the prominent, large circular aperture on the rear face of the cover – a feature that had been argued to be absent from the alleged primary reference. Thus, it would seem that the Court’s opinion may have been different had it compared the alleged primary reference to Spigen’s broadest design claim (the ‘648 patent) rather than only to the narrowest (the ‘607 patent).

The second curious thing about this decision was that Judge Lourie dissented, without opinion. We therefore do not know what he disagreed with; perhaps it was the basic finding that the ‘218 patent was not a proper primary reference. Note that Judge Lourie also wrote the opinion in the earlier Columbia v. Seirus design patent case, one having a very questionable finding that the infringer’s logos on its product should be taken into account in determining infringement (see my earlier blog post).

Turning to the Johnsonville case, the district court similarly granted the defendant’s motion for summary judgment that the plaintiff’s claimed design for a sausage tray, U.S. Pat. No. D633,754, was invalid based on obviousness in view of U.S. Pat. No. 3,761,011 as the purported primary reference, and U.S. Pat. No. D198,544 as the secondary reference (the ‘544 secondary reference is not material to this discussion). The ‘754 claimed design (FIGS. 7 & 8) and the ‘011 tray (FIGS. 1 & 2) are shown below:

Note first that the ‘754 patent asserted by the plaintiff claimed only the curved end walls of the tray – every other element was shown in broken lines. The district court regarded the ‘011 patent as “a straightforward primary reference”. The ‘011 patent illustrates what the court correctly characterized as “a generic food tray”. The court believed that both the ‘754 end walls and those of the ‘011 patent created “the same visual impression as the ratio of the depth, width and spacing of the end walls in the claimed design”. The court astutely noted that the “only visual difference” between the two was that the end walls were curved in the patented design and straight in the purported primary reference. Then - somewhat astonishingly - it relied on “the striking similarity” between the generic ‘011 design and the generic rectangular sausage tray that Johnsonville used before it adopted the ‘754 design to “reinforce” its conclusion that the ‘011 patent is an appropriate primary reference.

It used to be black letter law that a purported primary reference that is missing a significant visual feature of the claimed design could not be a proper primary reference. However, the Federal Circuit’s recent Campbell Soup case – not cited by the district court here - found to the contrary in that the primary reference there was missing a significant visual element of the claimed design – a can – but the Court nevertheless found the reference to be a proper primary reference, (cf. the persuasive dissent by Judge Newman); see my earlier blog post.

Perhaps on appeal the Johnsonville case would be decided differently than was the Campbell case, because in the former, the curved end walls were not simply a significant visual feature, but virtually the only significant visual feature, whereas in the latter the can was but one of three significant visual features.

Similar to the Spigen decision, it would seem that at the very least, the Johnsonville case was not one to be disposed of on summary judgment, since the question of whether the ‘011 patent was a proper primary reference is reasonably in doubt and thus triable to a jury. Thus, if appealed, the Johnsonville case would seem to stand a reasonably good chance of being reversed and remanded.