Mrc Innovations, Inc. v. Hunter Mfg., LLP , 747 F.3d 1326 ( 2014 )

United States Court of Appeals
for the Federal Circuit
______________________
MRC INNOVATIONS, INC.,
Plaintiff-Appellant,
v.
HUNTER MFG., LLP,
Defendant-Appellee,
AND
CDI INTERNATIONAL, INC.,
Defendant-Appellee.
______________________
2013-1433
______________________
Appeal from the United States District Court for the
Northern District of Ohio in No. 12-CV-0684, Judge
Patricia A. Gaughan.
______________________
Decided: April 2, 2014
______________________
RANDOLPH E. DIGGES, III, of Rankin, Hill & Clark
LLP, of North Olmsted, Ohio, argued for plaintiff-
appellant. With him on the brief were ROBERT A. SIDOTI.
Of counsel was JONATHAN A. WITHROW.
PERRY J. SAIDMAN, Saidman DesignLaw Group, LLC,
of Silver Spring, Maryland, argued for defendants-
2 MRC INNOVATIONS, INC. v. HUNTER MFG., LLP
appellees. With him on the brief were ANDREW D.
DORISIO and TREVOR T. GRAVES, King & Schickli, PLLC, of
Lexington, Kentucky, and EDWARD D. MANZO and MARK J.
MURPHY, Husch Blackwell LLP, of Chicago, Illinois.
______________________
Before RADER, Chief Judge, PROST and CHEN, Circuit
Judges.
PROST, Circuit Judge.
MRC Innovations, Inc. appeals from a final judgment
of the U.S. District Court for the Northern District of Ohio
granting summary judgment of invalidity with respect to
U.S. Design Patent Nos. D634,488 S (“’488 patent”) and
D634,487 S (“’487 patent”). For the reasons stated below,
we affirm.
BACKGROUND
MRC is the owner by assignment of both patents-in-
suit. The ’488 patent claims an ornamental design for a
football jersey for a dog, while the ’487 patent does the
same for a baseball jersey, as shown below:
’488 Patent ’487 Patent
MRC INNOVATIONS, INC. v. HUNTER MFG., LLP 3
Mark Cohen is the named inventor of both patents; he
is the principal shareholder of MRC and assigned his
rights in both patents to that company. Appellee Hunter
Manufacturing, LLP, is a retailer of licensed sports con-
sumer products, including pet jerseys. Prior to September
9, 2009, Hunter purchased pet jerseys for dogs from Mark
Cohen through companies with which he was affiliated.
For example, Cohen supplied Hunter with a “V2” football
jersey through the Stephen Gould Corporation and
through Fun-in-Games, Inc. (“FiG”). Similarly, Cohen
supplied Hunter, through FiG, with a green pet jersey
bearing a Philadelphia Eagles logo, which Hunter then
sold through third-party retailers such as Wal-Mart and
PetSmart prior to July 30, 2009. The V2 and Eagles
jerseys are depicted below:
4 MRC INNOVATIONS, INC. v. HUNTER MFG., LLP
Cohen asserts that in 2009 he designed another pet
jersey, known as the “V3” jersey, which would later be-
come the subject of the ’488 patent. Hunter began pur-
chasing the V3 jersey from FiG sometime after September
8, 2009. On September 8, 2010, Cohen filed a patent
application for both the V3 jersey and the baseball equiva-
lent that would later become the subject of the ’487 pa-
tent.
In December 2010, Cohen informed Hunter that he no
longer intended to do business with Hunter because
Hunter was having difficulty making payments. Hunter
then sought proposals from other companies to manufac-
ture and supply it with pet jerseys like the V3. Ultimate-
ly, Hunter contracted with another supplier, appellee CDI
International, Inc., to supply Hunter with pet jerseys.
MRC INNOVATIONS, INC. v. HUNTER MFG., LLP 5
Both patents-in-suit eventually issued on March 15,
2011.
MRC filed suit against both Hunter and CDI for will-
ful infringement of both patents. The district court grant-
ed summary judgment in favor of Hunter and CDI on the
grounds that both patents are invalid as obvious under 35
U.S.C. § 103(a). MRC Innovations, Inc. v. Hunter Mfg.,
LLP, 921 F. Supp. 2d 800, 812 (N.D. Ohio 2013). The
district court denied summary judgment of invalidity
based on 35 U.S.C. § 112. Id. at 810-11.
MRC appealed the grant of summary judgment. We
have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).
DISCUSSION
This court reviews a district court’s grant of summary
judgment under the law of the regional circuit. Grober v.
Mako Prods., Inc., 686 F.3d 1335, 1344 (Fed. Cir. 2012).
The Sixth Circuit reviews a district court’s grant of sum-
mary judgment de novo. Braun v. Ann Arbor Charter
Twp., 519 F.3d 564, 569 (6th Cir. 2008). Summary judg-
ment is appropriate if, viewing the evidence in the light
most favorable to the non-moving party, the movant
shows that there is no genuine dispute as to any material
fact and the movant is entitled to judgment as a matter of
law. Fed. R. Civ. P. 56(c); Anderson v. Liberty Lobby, Inc.,
477 U.S. 242, 255 (1986).
I. The ’488 Patent
The district court concluded that the ’488 patent
would have been obvious in view of several prior art pet
jerseys. MRC now appeals that determination.
Obviousness is a question of law that is reviewed de
novo, based on underlying factual questions that are
reviewed for clear error following a bench trial. Honey-
well Int’l, Inc. v. United States, 609 F.3d 1292, 1297 (Fed.
Cir. 2010). The underlying factual inquiries include: (1)
6 MRC INNOVATIONS, INC. v. HUNTER MFG., LLP
the scope and content of the prior art; (2) the level of
ordinary skill in the art; (3) the differences between the
claimed invention and the prior art; and (4) objective
evidence of non-obviousness. Graham v. John Deere Co.
of Kan. City, 383 U.S. 1, 17 (1966). Summary 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 obvi-
ousness of the claim is apparent in light of these factors.”
TriMed, Inc. v. Stryker Corp., 608 F.3d 1333, 1341 (Fed.
Cir. 2010) (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 427 (2007)).
In the context of design patents, “‘the ultimate inquiry
under section 103 is whether the claimed design would
have been obvious to a designer of ordinary skill who
designs articles of the type involved.’” Titan Tire Corp. v.
Case New Holland, Inc., 566 F.3d 1372, 1380-81 (Fed. Cir.
2009) (quoting Durling v. Spectrum Furniture Co., 101
F.3d 100, 103 (Fed. Cir. 1996)). To answer this question,
a court must first determine “whether one of ordinary
skill would have combined teachings of the prior art to
create the same overall visual appearance as the claimed
design.” Durling, 101 F.3d at 103. That inquiry involves
a two-step process. First, the court must identify “a single
reference, ‘a something in existence, the design character-
istics of which are basically the same as the claimed
design.’” Id. (quoting In re Rosen, 673 F.2d 388, 391
(CCPA 1982)). The “basically the same” test requires
consideration of the “visual impression created by the
patented design as a whole.” Id. We have noted that “the
trial court judge may determine almost instinctively
whether the two designs create basically the same visual
impression,” but “must communicate the reasoning be-
hind that decision.” Id.Once the primary reference is found, other “second-
ary” references “may be used to modify it to create a
design that has the same overall visual appearance as the
MRC INNOVATIONS, INC. v. HUNTER MFG., LLP 7
claimed design.” Id. These secondary references 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. (quoting In
re Borden, 90 F.3d 1570, 1575 (Fed. Cir. 1996) (alteration
in original)).
A. Primary Reference
The district court used the “Eagles” pet jersey as the
“primary reference” under step one of the Durling analy-
sis. MRC, 921 F. Supp. 2d at 809. MRC argues that this
was legally erroneous because there are significant differ-
ences between the Eagles jersey and the patented design
of the ’488 patent. Specifically, there are three differ-
ences: (1) the patented design has a V-neck collar where
the Eagles jersey has a round neck; (2) the patented
design contains an interlock fabric panel on the side
portion of the design rather than mesh; and (3) the pa-
tented design contains additional ornamental surge
stitching on the rear portion of the jersey. MRC argues
that the district court overlooked these differences by
focusing on the claimed design at “too high a level of
abstraction.” High Point Design LLC v. Buyers Direct,
Inc., 730 F.3d 1301, 1314 (Fed. Cir. 2013) (citing Apple,
Inc. v. Samsung Elecs. Co., Ltd., 678 F.3d 1314, 1331
(Fed. Cir. 2012)). If the district court had translated the
claimed design into a verbal description as required by
High Point, MRC insists, it would have concluded that
neither the Eagles jersey nor any other prior art reference
contained design characteristics that were “basically the
same” as the claimed design.
As an initial matter, it is true that the district court
did not expressly undertake to translate the claimed
design into a verbal description. However, High Point
makes clear that the purpose of requiring district courts
to describe the claimed design in words is so that the
parties and appellate courts can discern the trial court’s
8 MRC INNOVATIONS, INC. v. HUNTER MFG., LLP
reasoning in identifying a primary reference. See id.(citing Durling, 101 F.3d at 103). It is entirely clear from
the district court’s opinion what it considered to be the
relevant design characteristics of the ’488 patented de-
sign.
First, the district court pointed out three key similari-
ties between the claimed design and the Eagles jersey: an
opening at the collar portion for the head, two openings
and sleeves stitched to the body of the jersey for limbs,
and a body portion on which a football logo is applied.
MRC, 921 F. Supp. 2d at 809. If the district court’s analy-
sis had ended there, it might indeed have failed to meet
the High Point verbal description requirement. However,
the district court went on to point out two additional
similarities between the two designs: first, the Eagles
jersey is made “primarily of a mesh and interlock fabric”;
and second, it contains at least some ornamental surge
stitching—both features found in the ’488 claimed design.
Id. The district court also went on to acknowledge the
three major differences between the two designs that are
enumerated above. See id. Taking all of those things
together (the at least five design characteristics that the
claimed design shares with the Eagles jersey and three
design characteristics that differ from it), the district
court painted a clear picture of the claimed design. The
district court did far more than merely ask whether the
Eagles jersey disclosed the “general concept” of a pet
jersey; it thoroughly considered the “distinctive ‘visual
appearances’ of the reference and the claimed design.”
Apple, 678 F.3d at 1332 (quoting Durling, 101 F.3d at
104). Thus, the district court did not err by failing to
provide an express verbal description of the claimed
design; rather, it described the claimed design in the
context of comparing it to the prior art.
Nor did the district court err in finding that the de-
sign characteristics of the ’488 design created “basically
the same” overall visual impression as the Eagles jersey
MRC INNOVATIONS, INC. v. HUNTER MFG., LLP 9
prior art reference. As the district court noted, both
designs contain the same overall shape, similar fabric,
and ornamental surge stitching. That there are slight
differences in the precise placement of the interlock fabric
and the ornamental stitching does not defeat a claim of
obviousness; if the designs were identical, no obviousness
analysis would be required. 1 Indeed, we have permitted
prior art designs to serve as “primary references” when
their differences are as great or greater than the differ-
ences in this case. See Jore Corp. v. Kouvato, Inc., 117 F.
App’x 761, 763 (Fed. Cir. 2005) (finding prior art drill bit
to be a primary reference despite containing a smooth
cylindrical shaft rather than the grooved hexagonal shaft
of the claimed design); In re Nalbandian, 661 F.2d 1214,
1217-18 (CCPA 1981) (finding tweezer design obvious in
light of prior art reference that contained vertical rather
1 This conclusion is not inconsistent with the law of
this circuit on design patent infringement. In that con-
text, we have often noted that design patents have “al-
most no scope” beyond the precise images shown in the
drawings. In re Mann, 861 F.2d 1581, 1582 (Fed. Cir.
1988). However, in practice, our focus on the “overall
visual appearance” of a claimed design rather than on
individual features has led us to find products infringing
despite differences in specific ornamental features. For
example, in Crocs, Inc. v. International Trade Commis-
sion, 598 F.3d 1294 (Fed. Cir. 2010), we concluded that all
of the accused products infringed the asserted design
patents despite the fact that two of the infringing prod-
ucts (the Groovy DAWGS™ shoes and Big DAWGS™
shoes) contained a wider shoe front with an additional
row of holes, and another infringing product (the Effer-
vescent Waldies AT shoe) contained square holes on the
top of the shoe rather than round ones. Id. at 1303-06.
10 MRC INNOVATIONS, INC. v. HUNTER MFG., LLP
than horizontal fluting and straight rather than curved
pincers). 2
Apple, 678 F.3d 1314, on which MRC relies, is not to
the contrary. There, we faulted the district court for
finding that the prior art Fidler tablet could serve as a
primary reference to the patented tablet design. Id. at
1330-31. However, in that case we noted “substantial
differences in the overall visual appearance between the
patented design and the Fidler reference,” and described
no fewer than six differences between the two products.
Id. Among other things, the Fidler tablet was asymmet-
rical where the patented tablet was symmetrical; it con-
tained a sunken screen that created a “picture frame”
effect rather than the visual impression of “an unbroken
slab of glass extending from edge to edge on the front side
of the [patented] tablet”; and it contained two card-like
projections and an indentation on its sides rather than
the smooth sides of the claimed design. Id. These differ-
ences rendered the Fidler tablet significantly different in
overall visual appearance from the patented design; the
same cannot be said of the ’488 patented design and the
Eagles jersey, which we agree are “basically the same.” 3
2 The relatively few other cases in which we evalu-
ated whether a prior art design can serve as a “primary
reference” are unhelpful, as they either conclude that a
reference that is more similar to the claimed design than
we have in this case can serve as a primary reference, see,
e.g., Titan Tire Corp., 566 F.3d at 1380-82; In re Borden,
90 F.3d at 1575, or that a less similar reference cannot,
see, e.g., Durling, 101 F.3d at 103-04; Rosen, 673 F.2d at
391.
3 Alternatively, the district court could have relied
on the V2 jersey as the primary reference. The only
differences between the V2 jersey and the claimed design
MRC INNOVATIONS, INC. v. HUNTER MFG., LLP 11
B. Secondary References
After concluding that the Eagles jersey could be a
“primary reference,” the district court determined that the
V2 jersey and another reference known as the “Sporty K9”
jersey were “so related to the primary reference” that they
could serve as “secondary references” that would motivate
the skilled artisan to make the claimed design. MRC, 921
F. Supp. 2d at 809.
The district court found that both jerseys suggested
the use of a V-neck pattern and non-mesh fabric on the
side panels—the first two differences described above.
MRC argues that the district court erred by failing to
explain why a skilled artisan would have chosen to incor-
porate those features of the V2 and Sporty K9 jerseys
with the Eagles jersey.
We disagree. It is true that “[i]n order for secondary
references to be considered, . . . there must be some sug-
gestion in the prior art to modify the basic design with
features from the secondary references.” In re Borden, 90
F.3d at 1574. However, we have explained this require-
ment to mean that “the teachings of prior art designs may
are: (1) that the V2 jersey does not contain an “interlock”
fabric panel; (2) it has “drop” sleeves while the claimed
jersey has “raglan-style” sleeves; and (3) the V2 jersey
lacks any ornamental surge stitching. MRC, 921 F. Supp.
2d at 807. A side-by-side comparison of the two designs
demonstrates that of those three differences, only the
ornamental surge stitching truly alters the “overall visual
appearance” of the design. Moreover, the ornamental
stitching on the claimed design is suggested by the seam
lines on the V2 jersey, further minimizing the difference
in overall appearance. Thus, either the “Eagles” jersey or
the V2 jersey could have served as a “primary reference”
for purposes of the obviousness analysis.
12 MRC INNOVATIONS, INC. v. HUNTER MFG., LLP
be combined only when the designs are ‘so related that
the appearance of certain ornamental features in one
would suggest the application of those features to the
other.’” Id. at 1575 (quoting In re Glavas, 230 F.2d 447,
450 (CCPA 1956)). In other words, it is the mere similari-
ty in appearance that itself provides the suggestion that
one should apply certain features to another design. 4
In re Borden also discussed what is required for a ref-
erence to be considered sufficiently “related” for that test
to apply. There, we noted that the secondary references
were “closely akin” to the claimed design, and relied
heavily on the fact that “the two missing design elements
[were] not taken from unrelated references, but [were]
found in other dual-chamber containers.” Id. Thus, those
references could be used “to bridge the small gap between
4 MRC argues that this conclusion is “clearly im-
proper” in light of our recent decision in High Point, 730
F.3d 1301. However, that case is not on point. There, we
faulted the district court for failing to explain the reason-
ing behind its determination that a given “primary refer-
ence” was “basically the same as the claimed design,” and
so we remanded for the district court to do a side-by-side
comparison of the designs and determine if they create
the same visual impression. Id. at 1314. The district
court here did exactly that, when it listed five specific
features that rendered the Eagles jersey “basically the
same” as the patented design and explained that the
three minor differences did not defeat the similarity in
overall visual appearance. See supra Section I.A. High
Point did not address the situation presented here, where
the district court relied on the visual similarity between
the patented design and the various secondary references
to conclude that the secondary references would have
suggested particular design modifications to a skilled
designer.
MRC INNOVATIONS, INC. v. HUNTER MFG., LLP 13
the [primary] container and Borden’s claimed design.” Id.
So too, here, the secondary references that the district
court relied on were not furniture, or drapes, or dresses,
or even human football jerseys; they were football jerseys
designed to be worn by dogs. Moreover, as discussed
above, the V2 could easily have served as a primary
reference itself, so similar is its overall visual appearance
to that of the claimed design and the Eagles jersey. See
supra n.3. We therefore agree that those references were
“so related” to the Eagles jersey that the striking similari-
ty in appearance across all three jerseys would have
motivated a skilled designer to combine features from one
with features of another.
With respect to the only remaining difference between
the Eagles jersey and the ’488 claimed design—the pres-
ence of additional ornamental surge stitching running
down the rear of the jersey—the district court acknowl-
edged that no prior art reference contained exactly that
same stitching on the rear of the jersey, but nevertheless
concluded that this was not a “substantial” difference that
created a patentably distinct design, but rather was a “de
minimis change[] which would be well within the skill of
an ordinary designer in the art.” MRC, 921 F. Supp. 2d at
809 (citing In re Carter, 673 F.2d 1378, 1380 (CCPA
1982)).
MRC argues that adding any ornamental feature to a
primary reference that is not suggested by the prior art is,
by definition, more than de minimis. 5 But our case law
5 Alternatively, MRC argues that, at the very least,
the differences between the prior art and the claimed
design are not insignificant as a matter of law, but rather
give rise to a genuine issue of material fact as to how the
designs would be viewed by an ordinary designer. How-
ever, as explained below, we believe that, even construing
the evidence in the light most favorable to MRC, no
14 MRC INNOVATIONS, INC. v. HUNTER MFG., LLP
plainly contradicts that position; on numerous occasions
we have invalidated design patents despite the inclusion
of ornamental features that were entirely absent from
prior art designs. See, e.g., In re Nalbandian, 661 F.2d at
1217 (different shape of fluting on finger grips and differ-
ent shape of pincers were de minimis differences in design
for tweezers); In re Carter, 673 F.2d at 1380 (modifica-
tions to the waistband of an infant garment were “de
minimis changes which would be well within the skill of
an ordinary designer in the art”); In re Chung, No. 00-
1148, 2000 WL 1476861, at *3 (Fed. Cir. Oct. 4, 2000) (two
small depressions in the design of a cigarette package
were de minimis changes); In re Cooper, 480 F.2d 900,
901-02 (CCPA 1973) (affirming Board’s conclusion that
numerous changes to the design of a prior art building—
including a single rather than double door and the addi-
tion of windows—were de minimis because the overall
impression was still a building that looked like a barrel).
Here, the Eagles jersey had already disclosed the use
of ornamental surge stitching. The only additional step
needed was to extend the stitching down the sides of the
rear of the jersey. Moreover, the V2 jersey plainly sug-
gested the addition of vertical lines down the rear of the
jersey through the use of the seams between the two types
of fabric. We agree with the district court that adding
ornamental surge stitching on top of a preexisting seam
was an insubstantial change that would have been obvi-
ous to a skilled designer. 6
reasonable fact-finder could find in MRC’s favor on this
issue. See supra at 14.
6 To be clear, we do not intend to suggest that mere-
ly because one prior art reference used ornamental surge
stitching, any use of such stitching would have been a de
minimis change. Rather, the addition of the surge stitch-
MRC INNOVATIONS, INC. v. HUNTER MFG., LLP 15
C. Secondary Considerations
In support of the non-obviousness of its patents, MRC
submitted evidence relating to commercial success, copy-
ing, and acceptance by others. First, with respect to
commercial success, MRC argued that the sales of the V3
jersey (which embodied the patented design) were more
successful than sales of the V2 design it replaced. Second,
MRC alleged that Hunter and CDI chose to copy the
patented V3 design rather than other available non-
patented designs. And third, MRC points out that it has
granted a license on the ’488 patent.
The district court noted that the only evidence in sup-
port of these secondary considerations was the testimony
of the inventor himself, which was “unpersuasive to
demonstrate a genuine dispute” of fact sufficient to defeat
summary judgment of obviousness. MRC, 921 F. Supp.
2d at 810. MRC argues that in so doing, the district court
effectively dismissed the uncontroverted secondary con-
siderations evidence as if it did not exist, rather than
construing the evidence in the favor of the non-moving
party—in this case, MRC. MRC also points out that
Hunter and CDI failed to provide any evidence of another
explanation for those secondary considerations besides a
nexus with the claimed design.
Here, however, MRC has the standard backwards. As
the patentee, it was MRC’s burden of production to
demonstrate a nexus between the claimed design and the
secondary considerations. See Crocs, 598 F.3d at 1311.
MRC presented no evidence whatsoever that the commer-
cial success and copying were related to the merits of the
ing in this case was de minimis because it merely followed
the visual lines created by the seams of the V2 jersey; in
other words, it served only to highlight a design feature
that had already existed in the V2 prior art jersey.
16 MRC INNOVATIONS, INC. v. HUNTER MFG., LLP
claimed invention. Merely stating—with no supporting
figures or data—that the V3 was more successful than the
V2 is insufficient on its own to establish that the V3 has
been a “commercial success” and that its success was
attributable to the claimed design features. Moreover,
the only license MRC produced was between MRC and
FiG, a company that is at least partially owned by Mark
Cohen, who also owns MRC.
Thus, although the district court’s analysis of second-
ary considerations was admittedly somewhat cursory, we
do not believe that the evidence of record before the
district court created a genuine dispute of material fact; to
the contrary, even construing the evidence in the light
most favorable to MRC, MRC had not established a nexus
between the secondary considerations and the claimed
design that was sufficient to overcome the other evidence
of obviousness.
Because we affirm the invalidity of the ’488 patent on
obviousness grounds, we need not reach Hunter’s alterna-
tive argument that the patent is invalid under 35 U.S.C.
§ 112. Nor would it be appropriate for us to do so, as a
denial of a motion for summary judgment is not a final
appealable decision. See Lermer Ger. GmbH v. Lermer
Corp., 94 F.3d 1575, 1576 (Fed. Cir. 1996) (“The final
judgment rule prohibits a party from appealing a district
court’s denial of a motion for summary judgment.”).
II. The ’487 Patent
A similar analysis applies to the ’487 patent. The dis-
trict court also found the ’487 patent obvious, relying on
the baseball version of the Sporty K9 jersey as the “pri-
mary reference,” and the V2 and Eagles football jerseys as
the secondary references. MRC, 921 F. Supp. 2d at 811-
12. A side-by-side comparison of the ’487 design
MRC INNOVATIONS, INC. v. HUNTER MFG., LLP 17
and the Sporty K9 baseball jersey is depicted below:
MRC again argues that there are several major differ-
ences between the Sporty K9 baseball jersey and the
design claimed in the ’487 patent, and that the district
court erred by failing to translate the patented design into
a verbal description and instead focusing only on high-
level similarities between the two designs.
As with the ’488 patent, although the district court
did not expressly undertake to translate the patented
design by itself, a description can easily be seen from the
court’s discussion of the similarities and differences
between the Sporty K9 baseball jersey and the patented
design. Specifically, the court noted that the patented
design has a V-shaped collar, two openings for sleeves
with cuffs for the front limbs, a banded opening at the
bottom for the hind portion of the pet, and four buttons
extending vertically down the front of the jersey. Id. at
18 MRC INNOVATIONS, INC. v. HUNTER MFG., LLP
811. In pointing out the differences between the two
designs, the court noted that the patented design contains
a mesh fabric not found in the Sporty K9 jersey, that it is
less “tubular” in shape than the Sporty K9 jersey, and
that it lacks the “faux t-shirt” collar portion of the Sporty
K9 jersey. Id. at 811-12. Thus, the district court suffi-
ciently described the patented design so as to “evoke a
visual image consonant with the claimed design.” Durl-
ing, 101 F.3d at 104.
Moreover, we agree with the district court that the
overall visual impression of the Sporty K9 baseball jersey
is “basically the same” as the ’487 patented design.
Indeed, of the several minor differences the district court
pointed out between the two products, only the less tubu-
lar shape of the ’487 design truly affects the overall visual
impression of the design as a whole. As to that difference,
Hunter provided evidence that the Sporty K9 jersey more
closely resembles the patented design when actually worn
by a pet, rather than when depicted in plan view; an
image from the Sporty K9 brochure reveals that a gar-
ment (there, a dog sports jacket) which appears quite
tubular in plan view (just like the Sporty K9 baseball
jersey) actually appears much shorter in the front when
worn by a dog. J.A. 160. Thus, the Sporty K9 baseball
jersey can reasonably be considered a “primary reference”
for purposes of the obviousness analysis.
Additionally, once the Sporty K9 baseball jersey is
identified as the primary reference, the secondary refer-
ences would easily have led an ordinary designer to make
the claimed design. The district court relied on both the
V2 and Eagles football jerseys to demonstrate that the
use of mesh and a less “tubular” shape were well known
in the prior art for pet jerseys. MRC, 921 F. Supp. 2d at
812. For the same reasons as discussed above, we have
no trouble concluding that those jerseys are “so related” to
the claimed design that the mere similarity in visual
MRC INNOVATIONS, INC. v. HUNTER MFG., LLP 19
appearance would suggest the combination of those
features to create the claimed design.
We therefore affirm the district court’s grant of sum-
mary judgment of invalidity of the ’487 patent.
AFFIRMED