Case: 19-1435 Document: 76 Page: 1 Filed: 04/17/2020
United States Court of Appeals
for the Federal Circuit
______________________
SPIGEN KOREA CO., LTD., A REPUBLIC OF
KOREA CORPORATION,
Plaintiff-Appellant
v.
ULTRAPROOF, INC., A CALIFORNIA
CORPORATION, ULTRAPROOF, INC., A NEVADA
CORPORATION, ENDLISS TECHNOLOGY, INC., A
CALIFORNIA CORPORATION,
Defendants-Cross-Appellants
DOES, 1 THROUGH 10, INCLUSIVE,
Defendant
______________________
2019-1435, 2019-1717
______________________
Appeals from the United States District Court for the
Central District of California in Nos. 2:16-cv-09185-DOC-
DFM, 2:17-cv-01161-DOC-DFM, Judge David O. Carter.
______________________
Decided: April 17, 2020
______________________
JOSHUA DAVID CURRY, Lewis Brisbois Bisgaard &
Smith LLP, Atlanta, GA, argued for plaintiff-appellant.
Also represented by BRIAN G. ARNOLD, JOSEPHINE BROSAS,
JEAN KIM, Los Angeles, CA.
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2 SPIGEN KOREA CO., LTD. v. ULTRAPROOF, INC.
BENJAMIN ADAM CAMPBELL, Bishop Diehl & Lee, Ltd.,
Schaumburg, IL, argued for defendants-cross-appellants.
Also represented by EDWARD L. BISHOP, JAMES JAGODA.
______________________
Before NEWMAN, LOURIE, and REYNA, Circuit Judges.
Opinion for the court filed by Circuit Judge REYNA.
Circuit Judge LOURIE dissents.
REYNA, Circuit Judge.
Spigen Korea Co., Ltd., appeals the decision of the
United States District Court for the Central District of Cal-
ifornia granting summary judgment of invalidity of three
asserted design patents. Ultraproof, Inc., cross-appeals the
district court’s denial of its motion for attorneys’ fees. Be-
cause the district court improperly resolved a genuine dis-
pute of material fact at summary judgment, we reverse the
district court’s decision and remand for further proceed-
ings. We dismiss the cross-appeal as moot.
BACKGROUND
Spigen Korea Co., Ltd., (“Spigen”) owns U.S. Design
Patent Nos. D771,607 (“the ’607 patent”), D775,620 (“the
’620 patent”), and D776,648 (“the ’648 patent”) (collectively
the “Spigen Design Patents”), which each claim a case for
a cellular phone. Figures 3–5 of the ’607 patent are illus-
trative of the claimed design:
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SPIGEN KOREA CO., LTD. v. ULTRAPROOF, INC. 3
J.A. 88–90.
The ’620 patent disclaims certain elements present in
the ’607 patent. Figures 3–5 of the ’620 patent are illustra-
tive of the claimed design 1:
J.A. 99–101.
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 2:
J.A. 110–12.
On February 13, 2017, Spigen sued Ultraproof, Inc.,
(“Ultraproof”) for infringement of the Spigen Design Pa-
tents in the United States District Court for the Central
1 The design figures of the patent contain solid and
broken lines. The broken lines depict features disclaimed
from of the claimed design.
2 See supra note 1.
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4 SPIGEN KOREA CO., LTD. v. ULTRAPROOF, INC.
District of California. Ultraproof filed a motion for sum-
mary judgment of invalidity of the Spigen Design Patents.
Ultraproof argued that the Spigen Design Patents were ob-
vious as a matter of law in view of a primary reference, U.S.
Design Patent No. D729,218 (“the ’218 patent”), and a sec-
ondary reference, U.S. Design Patent No. D772,209 (“the
’209 patent”). Spigen opposed the motion, arguing that as
a matter of law, the Spigen Design Patents were not ren-
dered obvious by the ’218 patent and the ’209 patent. Al-
ternatively, Spigen argued, various underlying factual
disputes precluded summary judgment. The district court
held as a matter of law that the Spigen Design Patents
were obvious over the ’218 patent and the ’209 patent and
granted summary judgment of invalidity in favor of Ultrap-
roof.
Subsequently, Ultraproof moved for attorneys’ fees
pursuant to 35 U.S.C. § 285. The district court denied the
motion. Spigen timely appeals the obviousness determina-
tion. Ultraproof cross-appeals the denial of attorneys’ fees.
We have jurisdiction pursuant to 28 U.S.C.
§ 1295(a)(1).
DISCUSSION
We review a grant of summary judgment under the law
of the regional circuit, which in this case is the Ninth Cir-
cuit. See, e.g., Cheetah Omni LLC v. AT&T Servs., Inc.,
949
F.3d 691, 693 (Fed. Cir. 2020). The Ninth Circuit reviews
a district court’s grant of summary judgment de novo. See,
e.g., L.F. v. Lake Wash. Sch. Dist. #414,
947 F.3d 621, 625
(9th Cir. 2020). Summary judgment is appropriate when
the moving party demonstrates 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(a). In
other words, summary judgment may only be granted
when no “reasonable jury could return a verdict for the
nonmoving party.” Anderson v. Liberty Lobby, Inc.,
477
U.S. 242, 248 (1986).
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SPIGEN KOREA CO., LTD. v. ULTRAPROOF, INC. 5
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 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) (citation
and quotation marks omitted). Design patents are pre-
sumed valid and, thus, a moving party seeking to invali-
date a design patent at summary judgment must submit
such clear and convincing evidence of facts underlying in-
validity that no reasonable jury could find otherwise. See
Ethicon Endo-Surgery, Inc. v. Covidien, Inc.,
796 F.3d
1312, 1328 (Fed. Cir. 2015).
I
Spigen raises several grounds for reversing the district
court’s grant of summary judgment. First, Spigen argues
that there is a material factual dispute over whether the
’218 patent is a proper primary reference that precludes
summary judgment. We agree.
For design patents, the ultimate inquiry for obvious-
ness “is whether the claimed design would have been obvi-
ous 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)). This inquiry is a question of law based on un-
derlying factual findings. See, e.g., MRC
Innovations, 747
F.3d at 1331. One underlying factual issue is whether a
prior art design qualifies as a “primary reference.” High
Point Design LLC v. Buyers Direct, Inc.,
730 F.3d 1301,
1311 (Fed. Cir. 2013) (explaining that a “finder of fact”
must identify a primary reference); see also Campbell Soup
Co. v. Gamon Plus, Inc.,
939 F.3d 1335, 1340 (Fed Cir.
2019) (same); Apple, Inc. v. Samsung Elecs. Co.,
678 F.3d
1314, 1329 (Fed. Cir. 2012) (same).
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6 SPIGEN KOREA CO., LTD. v. ULTRAPROOF, INC.
A “primary reference” is “a single reference that creates
‘basically the same’ visual impression” as the claimed de-
sign. High Point
Design, 730 F.3d at 1312 (quoting Durl-
ing, 101 F.3d at 103). To be “basically the same,” the
designs at issue cannot have “substantial differences in
the[ir] overall visual appearance[s].”
Apple, 678 F.3d at
1330. Additionally, if “major modifications” would be re-
quired to make a design look like the claimed design, then
the two designs are not “basically the same.” In re Harvey,
12 F.3d 1061, 1063 (Fed. Cir. 1993). “[S]light differences”
in design, however, do not necessarily preclude a “basically
the same” finding. MRC
Innovations, 747 F.3d at 1333.
Although a “trial court judge may determine almost in-
stinctively whether the two designs create basically the
same visual impression,” Durl
ing, 101 F.3d at 103, 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) (“For summary judgment, fact-finding is an in-
appropriate exercise, at either the appellate or the district
court level. If a dispute requiring a finding exists as to any
material fact, summary judgment is improper.”). 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. See High
Point
Design, 730 F.3d at 1314–15 (reversing the district
court’s grant of summary judgment because “there appear
to be genuine issues of material fact as to whether the
Woolrich Prior Art are, in fact, proper primary references”).
Here, the district court found that despite “slight dif-
ferences,” the ’218 patent undisputedly was “basically the
same” as the Spigen Design Patents, and, thus, a proper
primary reference. J.A. 27. This determination was error
because, based on the competing evidence before the dis-
trict court, a reasonable factfinder could find otherwise.
Spigen’s expert, Mr. Delman, testified that the Spigen
Design Patents and the ’218 patent are not “at all similar,
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SPIGEN KOREA CO., LTD. v. ULTRAPROOF, INC. 7
let alone ‘basically the same.’” J.A. 4703 (quoting Delman
Rebuttal Expert Report ¶176). He also testified that unlike
the Spigen Design Patents, the ’218 patent “‘[has] unusu-
ally 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.’”
Id. The following side-by-side comparison of
Spigen’s ’607 patent, representative of the Spigen Design
Patents, and the ’218 patent, displays these differences:
J.A. 86, 90, 161, 163.
Spigen also argued before the district court that:
[d]efendants have proposed so many modifications
to the ’218 Patent to make it look more like the
Spigen patents (e.g., add outer shell that wraps
around back and side surfaces, add lateral parting
lines, add large circular aperture to rear, shrink
the side surfaces, shrink the chamfers, and remove
ornamental triangular elements), that the ’218 pa-
tent can no longer qualify as a primary reference.
J.A. 4704.
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8 SPIGEN KOREA CO., LTD. v. ULTRAPROOF, INC.
Ultraproof, contrastingly, argued below that the ’218
patent was “‘basically the same’ as the claimed designs” be-
cause all of the designs had (1) a “generally rectangular ap-
pearance with rounded corners,” (2) a “prominent rear
chamfer and front chamfer,” and (3) “elongated buttons cor-
responding to the location of the buttons of the underlying
phone.” J.A. 374–75. Ultraproof argued that the “only per-
ceivable difference[s]” between the ’218 patent and the
Spigen Design Patents were the “circular cutout in the up-
per third of the back surface and the horizontal parting
lines on the back and side surfaces.” J.A. 375 (footnote
omitted). 3
In the light of the competing evidence in the record, a
reasonable factfinder could conclude that the ’218 patent
and the Spigen Design Patents have substantial differ-
ences, and, thus, are not basically the same. See Fed. R.
Civ. P. 56(c). Accordingly, the district court’s grant of sum-
mary judgment of obviousness was in error and must be
reversed. See
Durling, 101 F.3d at 105 (“Without . . . a pri-
mary reference, it is improper to invalidate a design patent
on grounds of obviousness.”); see also High
Point, 730 F.3d
at 1314–15. We therefore need not address Spigen’s
3 On appeal, Ultraproof argues that many of the dif-
ferences between the Spigen Design Patents and the ’218
patent are “largely differences of degree, not characteris-
tic,” and, thus, irrelevant to the “basically the same” in-
quiry. For example, Ultraproof asserts that the ’218
patent’s “bulkier appearance” is “a difference of degree
(large vs small) as opposed to a difference in characteris-
tics, such as [a] sunken screen.” We reject this argument.
No precedent makes such a distinction, and we decline to
do so today.
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SPIGEN KOREA CO., LTD. v. ULTRAPROOF, INC. 9
alternative grounds for reversal. 4 We now turn to Ultrap-
roof’s alternative grounds for affirmance.
II
Ultraproof presents four alternative grounds for af-
firming if we determine the district court’s obviousness
analysis was flawed. Three of these grounds—obviousness
over the ’209 patent as the primary reference and the ’218
patent as the secondary reference; obviousness over vari-
ous combinations of other prior art; and inequitable con-
duct—were not decided by the district court. We therefore
decline to decide these issues in the first instance. See
TriMed, Inc. v. Stryker Corp.,
608 F.3d 1333, 1339 (Fed.
Cir. 2010) (“Because, as a general matter, a federal appel-
late court does not consider an issue not passed upon
below, . . . we decline to address these arguments in the
first instance and refer them to the district court for con-
sideration on remand.” (citation and quotation marks omit-
ted)). The district court is free to consider these grounds
on remand.
As to the fourth ground, Ultraproof argues that we
must affirm because the Spigen Design Patents’ claimed
designs were described in a printed publication before their
effective filing date and are thus precluded from patent
protection under 35 U.S.C § 102(a). Ultraproof cites to two
copyright registrations for support. The district court,
4 Spigen’s alternative grounds for reversal are that
the district court erred by determining that the ’209 patent
was an appropriate secondary reference and that Ultrap-
roof’s hypothetical combination of the ’218 patent and the
’209 patent rendered obvious the Spigen Design Patents.
Spigen also asserts that even if Ultraproof had made a
prima facie case of obviousness, secondary considerations
of non-obviousness present a genuine dispute of material
fact, precluding summary judgment.
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10 SPIGEN KOREA CO., LTD. v. ULTRAPROOF, INC.
however, determined that a genuine dispute of material
fact exists regarding the publication date of the copyright
registration certificates. The district court thus denied this
ground of invalidity at the summary judgment phase. We
agree with the district court and thus reject this alterna-
tive ground.
CONCLUSION
We have considered the parties’ remaining arguments
and find them unpersuasive. We determine 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. We thus reverse the
district court’s grant of summary judgment of invalidity
and remand for further proceedings. Because we remand
for further proceedings, Ultraproof is no longer the prevail-
ing party. We thus dismiss Ultraproof’s cross-appeal of the
district court’s denial of attorneys’ fees as moot. Circuit
Judge Lourie dissents.
REVERSED AND REMANDED
COSTS
No Costs.
