Mosaic Brands, Inc. v. Ridge Wallet LLC ( 2022 )

Case: 22-1001 Document: 48 Page: 1 Filed: 12/20/2022
United States Court of Appeals
for the Federal Circuit
______________________
MOSAIC BRANDS, INC.,
Plaintiff/Counterclaim Defendant-Appellant
LE HOLDINGS LLC, JGL ENTERPRISES INC.,
Third-Party Defendants-Appellees
v.
RIDGE WALLET LLC,
Defendant/Third Party Plaintiff/Counterclaimant-Cross-
Appellant
______________________
2022-1001, 2022-1002
______________________
Appeals from the United States District Court for the
Central District of California in No. 2:20-cv-04556-AB-JC,
Judge Andre Birotte, Jr.
______________________
Decided: December 20, 2022
______________________
STEPHEN M. LOBBIN, SML Avvocati PC, La Jolla, CA,
argued for plaintiff/counterclaim defendant-appellant and
third-party defendants-appellees.
BENJAMIN EDWARD WEED, K&L Gates LLP, Chicago,
IL, argued for defendant/third party plaintiff/counter-
claimant-cross-appellant. Also represented by GINA A.
Case: 22-1001 Document: 48 Page: 2 Filed: 12/20/2022
2 MOSAIC BRANDS, INC. v. RIDGE WALLET LLC
JOHNSON; MICHAEL HARRIS, JONATHAN PEARCE, SoCal IP
Law Group LLP, Westlake Village, CA.
______________________
Before NEWMAN, PROST, and STARK, Circuit Judges.
STARK, Circuit Judge.
This is an intellectual property case about wallets. Mo-
saic Brands, Inc. d/b/a Storus (“Mosaic”) and Ridge Wallet
LLC (“Ridge”) make similar money-clip wallets. Each com-
pany accuses the other of patent infringement. Mosaic as-
serts that Ridge infringes its U.S. Patent No. 7,334,616(“’616 patent”) as well as Mosaic’s trade dress. Ridge de-
nies these allegations and further contends that Mosaic in-
fringes its U.S. Patent No. 10,791,808 (“’808 patent”).
Following claim construction, the parties stipulated
that Mosaic cannot prove infringement of its ’616 patent.
The District Court then granted summary judgment of in-
validity of Ridge’s ’808 patent, based on anticipation, and
denied Mosaic’s motion for summary judgment that Ridge
had obtained its ’808 patent through inequitable conduct.
The District Court also granted summary judgment to
Ridge on Mosaic’s trade dress claim, finding the trade dress
invalid on multiple grounds. Mosaic and Ridge both ap-
pealed.
As explained below, we affirm the District Court’s
claim construction and, accordingly, its dismissal of Mo-
saic’s claim that Ridge infringes the ’616 patent. However,
because we find genuine disputes of material fact as to
whether Mosaic’s Smart Money Clip II product is prior art
to Ridge’s patent, we reverse the grant of summary judg-
ment of invalidity of Ridge’s ’808 patent. We also vacate
the District Court’s denial of summary judgment on Mo-
saic’s inequitable conduct defense. Finally, we affirm the
District Court’s grant of summary judgment that Mosaic’s
trade dress is invalid.
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MOSAIC BRANDS, INC. v. RIDGE WALLET LLC 3
I
Mosaic manufactures a money-clip wallet called the
Smart Money Clip II (“SMCII”). Ridge makes a wallet,
named the Ridge Wallet, 1 that is nearly identical to the
SMCII. When Mosaic learned of the Ridge Wallet, it sued
Ridge for infringement of its ’616 patent and its trade
dress. A few months later, the U.S. Patent and Trademark
Office (“PTO”) issued the ’808 patent to Ridge, and Ridge
promptly asserted a counterclaim against Mosaic for in-
fringing the newly issued patent. 2 Mosaic then raised af-
firmative defenses of invalidity and unenforceability due to
inequitable conduct; it did not, however, assert inequitable
conduct as a counterclaim. 3
1 We refer to the company as “Ridge” and the product
as the “Ridge Wallet.”
2 Ridge also filed a third-party complaint against LE
Holdings, LLC and JGL Enterprises, seeking a declaratory
judgment of unenforceability of Mosaic’s ’616 patent and
Mosaic’s alleged trade dress. Mosaic contends it has re-
ceived an exclusive license to this intellectual property
from LE Holdings and that JGL Enterprises is the owner
of any trade dress in the SMCII. No issues concerning the
accusations noted in this footnote are part of this appeal.
In light of our disposition, it will be for the District Court
to determine whether – and, if so, what – additional pro-
ceedings are needed with respect to these matters.
3 See generally Agfa Corp. v. Creo Prods. Inc., 451
F.3d 1366, 1371 (Fed. Cir. 2006) (recognizing that inequi-
table conduct may be raised as either defense or counter-
claim); see also Cardinal Chem. Co. v. Morton Int’l, Inc.,
508 U.S. 83, 93–94 (1993) (distinguishing between affirm-
ative defenses and counterclaims in patent cases).
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4 MOSAIC BRANDS, INC. v. RIDGE WALLET LLC
The District Court treated the first claims of Mosaic’s
’616 patent and Ridge’s ’808 patent as representative, and
neither party argues this was error. Claim 1 of the ’616
patent recites (with emphasis added):
[a] holder for securely and simultaneously retain-
ing flexible articles and rigid cards, said holder
comprising:
a) a nominally rectangular and nominally flat pla-
nar first panel having interior and exterior sur-
faces, a lip extending nominally around three
edges of said first panel along said interior sur-
faces, said lip being at right angles to the plane
of said first panel;
b) a nominally rectangular and nominally flat pla-
nar second panel having interior and exterior
surfaces, a lip extending nominally around
three edges of said second panel along said in-
terior surface and configured to form a mirror
image of said first panel, said second panel be-
ing adapted to be attached to said first panel
along said three edges to form an open-ended
enclosure of sufficient size to store said rigid
cards within said interior of said enclosure, said
enclosure being nominally rectangular with two
longitudinal sides, an open end, and a closed
end;
c) a resilient article retaining member having an
attached end and a free end extending from one
end of said enclosure and over the exterior of
said first panel, said free end of said article re-
taining member being biased toward said exte-
rior surface of said first panel;
wherein said first panel and said second panel
each has lips of varying thickness.
Claim 1 of the ’808 patent recites:
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MOSAIC BRANDS, INC. v. RIDGE WALLET LLC 5
[a] compact wallet, comprising:
at least two rigid plates interposed to sandwich
card-like contents there between, each rigid plate
having a longitudinal extent;
at least one encircling elastic band interposed with
the at least two rigid plates along longitudinal ex-
tents thereof to bias them inwardly and securely
hold the card-like contents while providing elastic
volume there between for adding or removing con-
tents;
a channeling means configured to minimize the
profile of the wallet and hold position of the at least
one encircling elastic band with respect to each
rigid plate while allowing freedom for the dynamic
extension and contraction of the band over the en-
tire running length thereof; and
an auxiliary feature removably attached to at least
one of the at least two rigid plates, the auxiliary
feature having a tang insertable into a recess
formed inside the at least two rigid plates, the tang
having a hook, the hook extending at an angle to
the tang, the hook engaging an undercut of the re-
cess to prevent inadvertent dislodgement of the
auxiliary feature from the recess,
whereby, card-like contents may be carried with
minimal silhouette on or with a person while allow-
ing expandable capacity and ready access to indi-
vidual contents from between the at least two rigid
plates.
The District Court construed two terms of the ’616 pa-
tent that are contested in this appeal. First, it construed
“lip” as a “connector made of extrudable or injectable plas-
tic material that defines the outer dimension of enclosure”
and explained that the first and second panels must have
“separate and independent” lips. J.A. 21-22. Second, it
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6 MOSAIC BRANDS, INC. v. RIDGE WALLET LLC
construed “of varying thickness” to mean “having a thick-
ness, defining the outer dimensions of the holder, that
causes the outer dimensions of the holder to be thicker in
some parts and thinner in others.” J.A. 25. Following
claim construction, Mosaic conceded that it could not pre-
vail on its ’616 patent infringement claims and stipulated
with Ridge to a dismissal subject to the right to appeal the
Court’s constructions.
Subsequently, both parties moved for summary judg-
ment on other issues, and the District Court found that (1)
certain claims of the ’808 patent 4 were invalid as antici-
pated by Mosaic’s SMCII, (2) Mosaic’s motion for summary
judgment with respect to inequitable conduct making
Ridge’s ’808 patent unenforceable was moot, and (3) Mo-
saic’s putative trade dress was invalid as functional, lack-
ing in secondary meaning, and abandoned.
Mosaic filed a motion for reconsideration, asking the
Court to address inequitable conduct despite its mootness,
on the grounds that the “defense is still relevant to [Mo-
saic’s] request for attorney’s fees under 35 U.S.C. § 285”
and that “as a practical matter of judicial economy” it
4 The District Court’s order broadly declares it is
granting Mosaic’s motion “that the ’808 patent is invalid
under §102(a),” without identifying which claims are being
found invalid. J.A. 728. The record before us is unclear as
to which claims Ridge asserted against Mosaic. See J.A.
835 (referencing only claim 1); J.A. 838 (generally alleging
“Mosaic Brands infringes Ridge’s ’808 patent”). Mosaic ap-
pears to cite only claim 1 in its counterclaim for invalidity,
but its brief supporting summary judgment argues for in-
validity of claims 1-3, 6, 9, and 13-18. Because we remand
for further proceedings, we leave it to the District Court to
clarify which claims are being adjudicated with respect to
infringement and validity.
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MOSAIC BRANDS, INC. v. RIDGE WALLET LLC 7
would be helpful for the parties to know the Court’s views
before any appeal. J.A. 9 (internal quotation marks omit-
ted). The District Court agreed that “addressing Plaintiff’s
inequitable conduct defense now would help clarify certain
issues with Plaintiff’s defense,” and it went on to assess the
merits of Mosaic’s arguments, as it had discretion to do. 5
J.A. 11. The Court then explained that Mosaic had met
part, but only part, of its burden of proving inequitable con-
duct and suggested there would be later proceedings at
which Mosaic might have another opportunity to present
additional evidence. Based on this reasoning, the Court
granted Mosaic’s request for reconsideration but denied its
motion for summary judgment on inequitable conduct.
The Court entered final judgment of no liability for
both Mosaic and Ridge. Both parties timely appealed.
II
We have jurisdiction under 28 U.S.C. § 1295(a)(1).
In the course of this case, we questioned the parties as
to whether, given the status of the inequitable conduct de-
fense, there is a reviewable final judgment. See Dkt. No.
45. In the same order in which the District Court granted
summary judgment of invalidity with respect to Ridge’s
’808 patent, the Court denied as moot Mosaic’s motion for
summary judgment that the patent is also unenforceable
5 While it was well within the District Court’s discre-
tion to consider inequitable conduct in connection with Mo-
saic’s motion to recover attorney’s fees, the District Court
likewise had discretion to refrain from addressing any is-
sues solely related to § 285 until after completion of any
appeals from a final judgment on other issues. See, e.g.,
Nova Chems. Corp. (Canada) v. Dow Chem. Co., 856 F.3d
1012, 1015-16 (Fed. Cir. 2017); iLOR, LLC v. Google, Inc.,
631 F.3d 1372, 1375 (Fed. Cir. 2011).
Case: 22-1001 Document: 48 Page: 8 Filed: 12/20/2022
8 MOSAIC BRANDS, INC. v. RIDGE WALLET LLC
due to inequitable conduct. The District Court was correct:
once it had found Ridge’s patent claims invalid as antici-
pated, Mosaic could not have been found liable for infring-
ing invalid claims, so Mosaic’s defense that those same
claims were unenforceable due to inequitable conduct be-
came a moot issue. See Commil USA, LLC v. Cisco Sys.,
Inc., 575 U.S. 632, 644 (2015) (“[I]f . . . an act that would
have been an infringement . . . pertains to a patent that is
shown to be invalid, there is no patent to be infringed.”);
Liebel-Flarsheim Co. v. Medrad, Inc., 481 F.3d 1371, 1383
(Fed. Cir. 2007). But see Zenith Elecs. Corp. v. PDI
Commc’n Sys., Inc., 522 F.3d 1348, 1366 & n.11 (Fed. Cir.
2008) (explaining that finding of invalidity of certain
claims does not moot counterclaim for inequitable conduct
directed to entire patent).
That the District Court went on to analyze the merits
of inequitable conduct in connection with Mosaic’s motion
for reconsideration also does not deprive us of jurisdiction.
On reconsideration, the District Court concluded that Mo-
saic’s SMCII was material prior art that Ridge should have
disclosed to the PTO during prosecution of Ridge’s ’808 pa-
tent, but also that Mosaic had not (yet, at least) proven that
Ridge intended to deceive the PTO. Because inequitable
conduct was in the case only as an affirmative defense, the
denial of summary judgment – whether due to mootness or
an insufficient showing on the merits – merged with the
final judgment entered by the District Court, and we have
jurisdiction. See Hendler v. United States, 952 F.2d 1364,
1368 (Fed. Cir. 1991); see also W.L. Gore v. Int’l Med. Pros-
thetics Rsch. Assocs., Inc., 975 F.2d 858, 863 (Fed. Cir.
1992) (stating “undecided defense does not render the judg-
ment nonfinal”).
III
A
With respect to Mosaic’s assertion that Ridge infringes
its ’616 patent, Mosaic appeals the District Court’s
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MOSAIC BRANDS, INC. v. RIDGE WALLET LLC 9
construction of two terms: “lip” and “of varying thickness.”
“We review a district court’s claim construction de novo”
and review any “underlying factual determinations for
clear error.” Genuine Enabling Tech. LLC v. Nintendo Co.,
29 F.4th 1365, 1372 (Fed. Cir. 2022).
1
The District Court construed the claim term “lip” as a
“connector made of extrudable or injectable plastic mate-
rial that defines the outer dimensions of enclosure.” J.A.
21. Mosaic argues this construction is too narrow as the
“lip” of the claims need not be made of “extruded plastic”
but may, instead, be manufactured with any “softer, flexi-
ble material,” including silicone or elastic. See Mosaic’s
Principal Br. 32. Mosaic’s proposed construction is “con-
nector defining outer dimension of enclosure.” 6 Id. Ridge
defends the District Court’s construction.
We agree with the District Court. The written descrip-
tion of the ’616 patent expressly states that “the device of
the present invention is constructed of extrudable plastic
materials.” J.A. 1444 (’616 patent at 1:22-23); see also J.A.
1438 (’616 patent Abstract) (“The product is constructed of
three extrudable plastic material parts . . . .”). The patent
also emphasizes the benefits of using extrudable plastic
and describes them as benefits from the invention as a
6 Mosaic also suggests that the first and second pan-
els do not need to have separate and independent lips. To
the extent Mosaic is challenging the District Court’s con-
struction of “said first and second panel having lips” as re-
quiring “separate and independent lips,” the patent is
clear: both the first and second panels must “each” have
lips. J.A. 1446 (’616 patent at 5:33-34); see also J.A. 1446
(’616 patent at 5:22) (requiring panels to be “mirror im-
age[s]” of one another).
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10 MOSAIC BRANDS, INC. v. RIDGE WALLET LLC
whole. See J.A. 1444-45 (’616 patent at 1:22-25, 3:17-22,
4:13-15). While claims are not always limited to what a
patent describes as “the present invention,” see Cont’l Cirs.
LLC v. Intel Corp., 915 F.3d 788, 798-99 (Fed. Cir. 2019)
(finding no disclaimer where use of “the present invention”
does not describe invention as a whole), here, in context, a
person of ordinary skill in the art would have understood
the “present invention” statements as describing the
claimed invention as a whole, see Verizon Servs. Corp. v.
Vonage Holdings Corp., 503 F.3d 1295, 1308 (Fed. Cir.
2007) (“When a patent . . . describes the features of the ‘pre-
sent invention’ as a whole, this description functions as a
disclaimer that limits the scope of the invention.”) (empha-
sis added). Contrary to Mosaic’s suggestions, these state-
ments are not limited to a best mode or particular
embodiments. Instead, the ’616 patent uses “the present
invention” to describe the invention as a whole, thereby
disclaiming inventions constructed out of materials other
than extrudable plastic.
Thus, the District Court did not err in construing “lip”
as being limited to extrudable plastic materials.
2
The District Court construed “of varying thickness” as
“having a thickness, defining the outer dimensions of the
holder, that causes the outer dimensions of the holder to be
thicker in some parts and thinner in others.” J.A. 24-25.
Mosaic contends that the proper construction is plain and
ordinary meaning. Ridge responds that the District
Court’s construction is correct and also that it is the term’s
plain and ordinary meaning.
Mosaic insists “it is clear that ‘of varying thickness’ is
used in its plain and ordinary meaning throughout the pa-
tent.” Mosaic’s Principal Br. 34. But it offers no intrinsic
evidence for this position, only extrinsic dictionary defini-
tions and attorney argument. Mosaic also fails to explain
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MOSAIC BRANDS, INC. v. RIDGE WALLET LLC 11
what is incorrect about the District Court’s construction or
how it deviates from the plain and ordinary meaning. 7
The District Court’s construction is correct, and we af-
firm it.
B
The District Court granted Mosaic’s motion for sum-
mary judgment that the challenged claims of Ridge’s ’808
patent are invalid as anticipated by Mosaic’s SMCII. Be-
cause the record reveals a genuine dispute of material fact
as to whether the SMCII is prior art, we reverse.
We review grants of summary judgment under the law
of the regional circuit in which the District Court sits, here
the Ninth Circuit. See Columbia Sportswear N. Am., Inc.
v. Seirus Innovative Accessories, Inc., 942 F.3d 1119, 1129
(Fed. Cir. 2019). The Ninth Circuit reviews summary judg-
ment rulings de novo. See City of Pomona v. SQM N. Am.
Corp., 750 F.3d 1036, 1043 (9th Cir. 2014). We must draw
all reasonable inferences in the non-moving party’s favor.
See In re Oracle Corp. Sec. Litig., 627 F.3d 376, 387 (9th
Cir. 2010). Therefore, “a moving party seeking to invali-
date a patent at summary judgment must submit such
clear and convincing evidence of facts underlying invalidity
7 In its reply brief, Mosaic argues the District Court
read additional limitations into the term when it held that
the lips “defin[e] the outer dimensions of the holder” and
“caus[e] the outer dimensions of the holder to be thicker in
some parts and thinner in others.” Mosaic’s Resp. & Reply
Br. 18. Mosaic did not clearly argue these portions of the
District Court’s claim construction were incorrect in its
opening brief. “Arguments raised for the first time in a re-
ply brief are not properly before this court.” United States
v. Ford Motor Co., 463 F.3d 1267, 1276 (Fed. Cir. 2006).
Hence, we have not considered this untimely contention.
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12 MOSAIC BRANDS, INC. v. RIDGE WALLET LLC
that no reasonable jury could find otherwise.” SRAM Corp.
v. AD-II Eng’g, Inc., 465 F.3d 1351, 1357 (Fed. Cir. 2006).
Whether the SMCII is prior art to Ridge’s ’808 patent
depends on when units of the SMCII, which indisputably
contained all of the elements of Ridge’s claims, 8 were first
sold. Mosaic, based in large part on the testimony of the
SMCII’s inventor, Scott Kaminski, contends the SMCII
was first sold in 2011, more than a year before Ridge filed
its application that became the ’808 patent. The District
Court agreed with Mosaic. Ridge argues that the District
Court erred in two respects. First, in Ridge’s view, Kamin-
ski’s testimony lacked sufficient corroboration as a matter
of law. Second, Ridge asserts there is a genuine dispute as
to the material fact of Kaminski’s credibility. While we re-
ject Ridge’s first contention, we agree with the second.
We first consider whether Mosaic produced sufficient
evidence of corroboration. When a party claims that its
own invention predates, and thereby anticipates, a patent
asserted against it, the oral testimony of the inventor of the
purported prior art must be corroborated. 9 See TransWeb,
8 On appeal, Ridge insists there is a genuine dispute
as to whether the SMCII practices each limitation of the
’808 patent. Ridge forfeited its arguments on this point by
not raising them in District Court, and we do not address
them here. See Cal. Ridge Wind Energy LLC v. United
States, 959 F.3d 1345, 1351 (Fed. Cir. 2020) (“We may deem
an argument forfeited when a party raises it for the first
time on appeal.”).
9 Our cases on corroboration of an inventor’s testi-
mony have arisen in various contexts and procedural pos-
tures. We apply the same standard to determine if
inventor testimony is sufficiently corroborated for all § 102
issues. See, e.g., Finnigan Corp. v. Int’l Trade Comm’n, 180
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MOSAIC BRANDS, INC. v. RIDGE WALLET LLC 13
LLC v. 3M Innovative Props. Co., 812 F.3d 1295, 1301 (Fed.
Cir. 2016); Sandt Tech., Ltd. v. Resco Metal & Plastics
Corp., 264 F.3d 1344, 1350 (Fed. Cir. 2001). This is to pro-
tect against fraud and “provide[] an additional safeguard
against courts being deceived by inventors who may be
tempted to mischaracterize the events of the past.” Medi-
chem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1170 (Fed. Cir.
2006). Possible corroborating evidence, from most to least
probative, includes documentary and physical evidence
created at the time of conception or reduction to practice,
circumstantial documentary evidence about the inventive
process, and oral testimony by someone other than the in-
ventor. See Sandt, 264 F.3d at 1350-51.
“When determining whether an alleged inventor’s tes-
timony is sufficiently corroborated, we apply a rule-of-rea-
son analysis and consider all pertinent evidence.” Martek
Biosciences Corp. v. Nutrinova, Inc., 579 F.3d 1363, 1374
(Fed. Cir. 2009). This rule-of-reason analysis does not re-
quire every aspect of an inventor’s testimony to be explic-
itly corroborated with a source independent of the inventor.
See TransWeb, 812 F.3d at 1301-02; see also Medichem, 437
F.3d at 1171 (“[T]he law does not impose an impossible
standard of independence on corroborative evidence by re-
quiring that every point of a reduction to practice be cor-
roborated by evidence having a source totally independent
of the inventor.”) (internal alterations, quotation marks,
and citation omitted).
F.3d 1354, 1367 (Fed. Cir. 1999) (“While this court has in
the past applied the requirement of corroboration more of-
ten in the context of priority disputes under 35 U.S.C.
§ 102(g), corroboration has been required to prove invalid-
ity under other subsections of § 102 as well.”) (internal foot-
note omitted).
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14 MOSAIC BRANDS, INC. v. RIDGE WALLET LLC
“In applying the rule of reason test, all pertinent evi-
dence is examined in order to determine whether the in-
ventor’s story is credible.” Sandt, 264 F.3d at 1350(internal quotation marks and citation omitted). “[T]he
credibility (and therefore corroborative value) of an inven-
tor’s [documentary evidence] may vary” and may well,
therefore, be subject to dispute. Medichem, 437 F.3d at
1170. Whether testimony is sufficiently corroborated is ul-
timately a question of fact. See TransWeb, 812 F.3d at
1302; see also Lazare Kaplan Int’l v. Photoscribe Techs.,
Inc., 628 F.3d 1359, (Fed. Cir. 2010) (“Under this [rule-of-
reason] analysis, this court evaluates all of the pertinent
evidence so that a sound determination of the credibility of
the [witness’s] story may be reached.”) (bracketed altera-
tions in original; internal quotation marks and citation
omitted); Adenta GmbH v. Orthoarm, Inc., 501 F.3d 1364,
1371-72 (Fed. Cir. 2007) (“Assessing the sufficiency of evi-
dence which corroborates a witness’s testimony concerning
invalidating activities has been analyzed under the ‘rule of
reason’ test, and it is a jury question.”). Hence, “each cor-
roboration case must be decided on its own facts with a
view to deciding whether the evidence as a whole is persua-
sive.” Cooper v. Goldfarb, 154 F.3d 1321, 1331 (Fed. Cir.
1998).
Here, the SMCII’s inventor, Kaminski, testified that
the SMCII was first sold in 2011. In support, he attached
to his declaration (1) design plans for the SMCII from Oc-
tober 19, 2010, and (2) invoices seemingly showing that the
SMCII was sold at a trade show in 2011. If a reasonable
factfinder credits Kaminski’s testimony and finds his doc-
uments to be authentic, which she could, this collection of
evidence would provide a sufficient basis from which the
factfinder could find that the SMCII was on sale by 2011.
See Sandt, 264 F.3d at 1351-52. As the District Court ac-
curately explained, the design drawings in our record are
akin to the abandoned patent application and design draw-
ings we had before us in Sandt; and the invoices here are
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MOSAIC BRANDS, INC. v. RIDGE WALLET LLC 15
comparable to the invoices in that case as well. Indeed, the
documents attached to Kaminski’s declaration could be
found to fall into what we have described as the “most reli-
able” form of corroboration: “[d]ocumentary . . . evidence
that is made contemporaneously with” the events requiring
corroboration. Id. at 1350-51. Therefore, consistent with
the District Court’s analysis, “a reasonable fact finder
could have concluded that clear and convincing evidence
showed that a public use or sale” of Mosaic’s SCMII oc-
curred more than a year before Ridge presented its claims
to the PTO. Adenta, 501 F.3d at 1372.
While the District Court correctly concluded that the
evidence was sufficient to satisfy the corroboration require-
ment, the District Court erred by proceeding to grant sum-
mary judgment of anticipation. Finding that Mosaic
presented legally sufficient evidence to corroborate the in-
ventor’s testimony does not necessarily mean that Mosaic’s
evidence would also lead every reasonable factfinder – tak-
ing the evidence in the light most favorable to Ridge, as the
non-moving party – to find by clear and convincing evi-
dence that the SMCII does, in fact, predate the ’808 pa-
tent’s critical date. See Sandt, 264 F.3d at 1352 (affirming
grant of summary judgment where “[a] reasonable jury
could only conclude that the drawing shows the second
stainless steel plate”) (emphasis added). Before the antici-
pation issue presented in this case can be resolved, a fact-
finder will have to evaluate the credibility and
persuasiveness of the evidence of corroboration and make
its own judgment as to whether Mosaic has proven, clearly
and convincingly, that the SMCII is prior art to Ridge’s ’818
patent. See id. at 1357 (Dyk, J., concurring) (“Even where
our corroboration requirement is satisfied, in many cases
summary judgment cannot be granted unless the prior in-
ventor’s testimony is considered to be credible. Even where
there are no affidavits from the party opposing judgment
(the patent holder), it will often be appropriate to deny
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16 MOSAIC BRANDS, INC. v. RIDGE WALLET LLC
summary judgment because the prior inventor’s testimony
raises issues of credibility that require a trial.”). 10
Here the corroborating documents are only persuasive
if the factfinder determines Kaminski is credible. Ridge
has identified specific facts in the record that create doubt
as to Kaminski’s credibility and, relatedly, as to the au-
thenticity of the documents Mosaic offered as corroboration
of his testimony. See Ridge’s Principal & Resp. Br. 30 (ar-
guing that documents Kaminski provides “readily [could]
have been back-dated”); D. Ct. Dkt. No. 115 at 4 (“Kamin-
ski[’]s[] credibility is an issue of material fact.”); id. at 4–5
(“Mr. Kaminski’s credibility and the dearth of evidence re-
mains a disputed issue of material fact.”); see also J.A. 7
(District Court noting Ridge’s challenge to authenticity of
Kaminski documents); J.A. 724 (“Defendant argues that
Mr. Kaminski and his supporting documents lack credibil-
ity . . . .”). In particular, Ridge points to the lack of any
contemporaneous images of the SMCII from 2011, the lack
of documented sales from 2012 to 2019, Kaminski’s motive
to mispresent his invention date, the lack of any metadata
confirming the documents’ authenticity, and other alleged
inconsistencies in Kaminski’s representations. The ab-
sence of any third-party corroborating evidence further
supports our conclusion that there is a genuine dispute as
to the material fact of whether the SCMII is prior art.
Under these circumstances, Ridge is entitled to an op-
portunity to cross-examine Kaminski, in order to allow the
10 In Sandt, the party opposing summary judgment of
anticipation waived any challenge to the credibility of the
witness supporting the motion. See 264 F.3d at 1353 n.2.
Here, by contrast, Ridge has consistently raised issues as
to Kaminski’s credibility and the authenticity of his docu-
ments.
Case: 22-1001 Document: 48 Page: 17 Filed: 12/20/2022
MOSAIC BRANDS, INC. v. RIDGE WALLET LLC 17
factfinder to evaluate his credibility and the related issue
of the authenticity of the corroborating documentary evi-
dence. If the factfinder were to find that Kaminski is not
credible, and that the documents on which Mosaic relies
are not authentic, the record would then lack the requisite
corroborating evidence and Mosaic would be unable to
meet its clear and convincing burden. See TypeRight Key-
board Corp. v. Microsoft Corp., 374 F.3d 1151, 1158 (Fed.
Cir. 2004) (“[S]ummary judgment is not appropriate where
the opposing party offers specific facts that call into ques-
tion the credibility of the movant[’]s witnesses.”).
The District Court appears to have based its summary
judgment decision, at least in part, on its belief that Ridge
produced no affirmative evidence challenging Kaminski’s
testimony. This was not consistent with our precedent,
which holds that affirmative evidence is not always neces-
sary in order to create a genuine dispute. See Zenith, 522
F.3d at 1363 (“A non-movant need not always provide affi-
davits or other evidence to defeat a summary judgment mo-
tion. If, for example, the movant bears the burden and its
motion fails to satisfy that burden, the non-movant is not
required to come forward with opposing evidence.”) (inter-
nal quotation marks and citation omitted); Saab Cars USA,
Inc. v. United States, 434 F.3d 1359, 1368 (Fed. Cir. 2006)
(same); see also Cross v. United States, 336 F.2d 431 (2d
Cir. 1964) (reversing summary judgment, notwithstanding
non-movant’s failure to present affirmative evidence, be-
cause “disputed questions of fact turn[ed] exclusively on
the credibility of movants’ witnesses”); Fed. R. Civ. P. 56
Notes of Advisory Committee on Rules to 1963 Amend.
(“Where an issue as to a material fact cannot be resolved
without observation of the demeanor of witnesses in order
to evaluate their credibility, summary judgment is not ap-
propriate.”).
Moreover, Ridge did present evidence, including at
least a declaration from its Chief Executive Officer, Daniel
Kane, who claims to have knowledge of the relevant
Case: 22-1001 Document: 48 Page: 18 Filed: 12/20/2022
18 MOSAIC BRANDS, INC. v. RIDGE WALLET LLC
marketplace but had not heard of Mosaic or its product be-
fore 2019. He does not believe it was first sold in 2011.
Instead, Kane’s investigation of Mosaic’s online presence
led him to believe “that Mosaic first sold the wallet in 2019
it claims it sold in 2011.” J.A. 1574-76. The District Court
did not acknowledge this declaration testimony.
While Ridge did not depose any customer listed on the
Mosaic invoices attached to the Kaminski declaration, and
did not present an affidavit from any customer of Ridge or
Mosaic, these arguable deficiencies do not change the real-
ity that the record, taken as a whole – and, especially, when
taken in the light most favorable to Ridge – shows a genu-
ine dispute of material fact as to whether sales of the
SCMII occurred prior to the critical date of Ridge’s patent.
The burden of proof to invalidate Ridge’s patent claims
is a heavy one – clear and convincing evidence – and it is a
burden that rests squarely on Mosaic. See Microsoft Corp.
v. i4i Ltd., 564 U.S. 91, 95 (2011). To obtain summary judg-
ment of invalidity, Mosaic’s challenge was even greater: to
show that no reasonable factfinder, taking the evidence in
the light most favorable to Ridge, could do anything other
than find clear and convincing evidence of anticipation.
Mosaic failed to clear this high bar. To the contrary, Ridge
showed that Kaminski’s credibility is a genuinely disputed
material fact, thereby raising a related genuine dispute as
to whether Mosaic’s corroborating documentary evidence is
what it purports to be. Ridge’s challenges to Kaminski’s
credibility and to the authenticity of Mosaic’s documentary
evidence render summary judgment unwarranted on the
record before us. See Core Wireless Licensing S.A.R.L. v.
LG Elecs., Inc., 880 F.3d 1356, 1364 (Fed. Cir. 2019) (“Be-
cause the burden rests with the alleged infringer to present
clear and convincing evidence supporting a finding of inva-
lidity, granting judgment as a matter of law for the party
carrying the burden of proof is generally reserved for ex-
treme cases, such as when the opposing party’s witness
Case: 22-1001 Document: 48 Page: 19 Filed: 12/20/2022
MOSAIC BRANDS, INC. v. RIDGE WALLET LLC 19
makes a key admission.”) (internal quotation marks and ci-
tation omitted).
Thus, we reverse and remand for further proceedings
on whether the SMCII anticipates the ’808 patent.
C
Because we reverse the District Court’s summary judg-
ment of invalidity, we also vacate its denial of summary
judgment on Mosaic’s inequitable conduct defense. The
District Court’s conclusion that the SMCII was material
prior art to Ridge’s ’808 patent will need to be reevaluated,
as our ruling means it has not been determined whether
the SMCII is even prior art. Because Ridge’s infringement
claim against Mosaic may now proceed, Mosaic is free to
continue to assert inequitable conduct as an affirmative de-
fense to infringement.
D
Finally, we consider whether the District Court
properly granted summary judgment to Ridge on Mosaic’s
trade dress claim. Mosaic alleged it has a valid trade dress
for money-clip wallets consisting of the combination of (1)
rounded edges, (2) a pronounced, off center, half-circle
notch, (3) seven visible rivets along the border, (4) a “beer-
glass” shaped money clip with a raised end, and (5) a car-
bon fiber exterior look. The District Court concluded that
the asserted trade dress is invalid on three independent
and sufficient grounds: (1) it is functional, (2) it lacks sec-
ondary meaning, and (3) it is abandoned. Applying de novo
review, see Clicks Billiards, Inc. v. Sixshooters, Inc., 251
F.3d 1252, 1257 (9th Cir. 2001), we affirm on the ground
that the SMCII’s design is functional. We have no need to
decide whether to affirm the District Court on additional
grounds as well. See Creo Prods., Inc. v. Presstek, Inc., 305
F.3d 1337, 1351-52 (Fed. Cir. 2002) (affirming on one of
three sufficient grounds and not considering other two).
Case: 22-1001 Document: 48 Page: 20 Filed: 12/20/2022
20 MOSAIC BRANDS, INC. v. RIDGE WALLET LLC
We apply regional circuit law to issues relating to trade
dress. See High Point Design LLC v. Buyers Direct, Inc.,
730 F.3d 1301, 1317 (Fed. Cir. 2013). Trade dress protects
the “total image, design, and appearance of a product and
may include features such as size, shape, color, color com-
binations, texture or graphics.” Clicks Billiards, 251 F.3d
at 1257 (internal quotation marks and citation omitted).
To show trade dress infringement under Ninth Circuit law,
Mosaic must prove “(1) the trade dress is nonfunctional, (2)
the trade dress has acquired secondary meaning, and (3)
there is a substantial likelihood of confusion between the
plaintiff’s and defendant’s products.” Art Attacks Ink, LLC
v. MGA Ent. Inc., 581 F.3d 1138, 1145 (9th Cir. 2009).
When evaluating a trade dress claim, “it is crucial that we
focus not on the individual elements, but rather on the
overall visual impression that the combination and ar-
rangement of those elements create.” Clicks Billiards, 251
F.3d at 1259.
“A product feature is functional and cannot serve as a
trademark if the product feature is essential to the use or
purpose of the article or if it affects the cost or quality of
the article, that is, if exclusive use of the feature would put
competitors at a significant, non-reputation-related disad-
vantage.” Kendall-Jackson Winery, Ltd. v. E. & J. Gallo
Winery, 150 F.3d 1042, 1048 (9th Cir. 1998) (internal alter-
ations and quotation marks omitted). “Functional features
of a product are features which constitute the actual bene-
fit that the consumer wishes to purchase, as distinguished
from an assurance that a particular entity made, spon-
sored, or endorsed a product.” Rachel v. Banana Republic,
Inc., 831 F.3d 1503, 1506 (9th Cir. 1987) (internal quota-
tion marks and citation omitted). The party “who asserts
trade dress protection has the burden of proving that the
matter sought to be protected is not functional.” 15 U.S.C.
§ 1125(a)(3).
Reviewing the record in the light most favorable to Mo-
saic as the non-moving party, the District Court correctly
Case: 22-1001 Document: 48 Page: 21 Filed: 12/20/2022
MOSAIC BRANDS, INC. v. RIDGE WALLET LLC 21
concluded there is no genuine dispute of material fact as to
whether Mosaic’s putative trade dress is functional. Ridge
introduced unrebutted testimony and documentary evi-
dence explaining the utility of each aspect of Mosaic’s as-
serted trade dress and further testimony explaining why
the overall design is functional as a whole. For instance,
the rounded edges help prevent snagging, J.A. 1444 (’616
patent at 1:66-2:1), and the notch allows users to easily re-
move cards from the wallet, J.A. 1445 (’616 patent at 4:50-
57), J.A. 1431. The “beer glass” shaped clip is tapered, al-
lowing the wallet to “slide in and out of a pocket without
ripping or tearing the fabric.” J.A. 1433.
Mosaic did not introduce evidence from which a reason-
able factfinder could refuse to credit Ridge’s position on
these points. To the contrary, Mosaic does not dispute that
the rivets in its design hold the wallet together and the car-
bon fiber acts as a radio frequency identification blocking
material. Mosaic also admits that the carbon fiber is light
and its use in the wallet has an aesthetic function that is
not merely source identifying. D. Ct. Dkt. No. 103-3 at 10
(Mosaic’s expert explaining that SCMII’s carbon fiber “pro-
vide[s] a very sleek, distinctive, and attractive look and feel
for the product”).
Mosaic’s expert opined that Mosaic’s design choices
have “no utilitarian advantage[s] over alternative” design
options. J.A. 207-08. Even crediting this view does not al-
low Mosaic to defeat summary judgment, as “the mere ex-
istence of alternatives does not render a product
nonfunctional.” Talking Rain Beverage Co. v. S. Beach
Beverage Co., 349 F.3d 601, 604 (9th Cir. 2003) (citing
TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23,
33-34 (2001)).
In short, Mosaic did not meaningfully dispute the rele-
vant facts, even though it bears the burden to show that its
trade dress is non-functional. Therefore, even taking the
facts in the light most favorable to Mosaic, any reasonable
Case: 22-1001 Document: 48 Page: 22 Filed: 12/20/2022
22 MOSAIC BRANDS, INC. v. RIDGE WALLET LLC
factfinder, when confronted with this record, would have to
conclude that the overall design of the SMCII reflects func-
tional considerations that are intended to satisfy consumer
preferences. Thus, the design is not protectable trade
dress, and summary judgment for Ridge was appropriate.
We affirm this portion of the District Court’s order.
IV
We have considered the parties’ remaining arguments
and find they neither merit discussion nor impact the out-
come. Hence, we affirm Ridge’s non-infringement of Mo-
saic’s ’616 patent, reverse the grant of summary judgment
of invalidity of Ridge’s ’808 patent, vacate the District
Court’s denial of summary judgment on Mosaic’s inequita-
ble conduct defense, affirm Ridge’s non-infringement of
Mosaic’s purported trade dress, and remand for further
proceedings consistent with this opinion.
AFFIRMED IN PART, REVERSED IN PART,
VACATED IN PART, AND REMANDED
COSTS
Each party to bear its own costs.