Golden Eye Media USA, Inc. v. Evo Lifestyle Products Limited

Case: 21-2096 Document: 51 Page: 1 Filed: 06/22/2022
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
GOLDEN EYE MEDIA USA, INC.,
Plaintiff-Counterdefendant-Appellee
FARZAN DEHMOUBED, JENNIFER DUVALL,
Counterdefendants-Appellees
v.
EVO LIFESTYLE PRODUCTS LIMITED, FKA
TROLLEY BAGS UK LTD,
Defendant-Counterclaimant-Appellant
______________________
2021-2096
______________________
Appeal from the United States District Court for the
Southern District of California in No. 3:18-cv-02109-BEN-
LL, Senior Judge Roger T. Benitez.
______________________
Decided: June 22, 2022
______________________
CODY R. LEJEUNE, LeJeune Law, PC, San Diego, CA,
for appellees.
MATTHEW L. CUTLER, Harness, Dickey & Pierce, PLC,
St. Louis, MO, for appellant. Also represented by Glenn E.
Forbis, Troy MI.
Case: 21-2096 Document: 51 Page: 2 Filed: 06/22/2022
2 GOLDEN EYE MEDIA USA, INC. v.
EVO LIFESTYLE PRODUCTS LIMITED
______________________
Before LOURIE, SCHALL, and REYNA, Circuit Judges.
LOURIE, Circuit Judge.
Evo Lifestyle Products Limited, formerly known as
Trolley Bags UK Ltd (“TB UK”), appeals from a decision of
the United States District Court for the Southern District
of California granting summary judgment in favor of
Golden Eye Media USA, Inc. (“GEM”). The court held that
TB UK’s U.S. Patent D779,828 (the “’828 patent”) is invalid
for reasons of functionality and obviousness, and that, even
if it were valid, GEM did not infringe the patent or TB UK’s
trademark. See Golden Eye Media USA, Inc. v. Trolley
Bags UK Ltd., 525 F. Supp. 3d 1145 (S.D. Cal. 2021) (“De-
cision”). We affirm.
BACKGROUND
TB UK owns the ’828 patent. This patent is directed to
a reusable and foldable shopping bag that fits within a
shopping cart. Figures 1–6 illustrate the claimed design.
1'1
!~
FIG. 1 FIG.2 FIG. 3
FIG. 4 FIG.5 FIG.6
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GOLDEN EYE MEDIA USA, INC. v. 3
EVO LIFESTYLE PRODUCTS LIMITED
’828 patent at Figs. 1–6. TB UK also claims a common law
trademark for “TROLLEY BAGS.” TB UK sells reusable
shopping cart bags that use the mark “TROLLEY BAGS.”
GEM sells reusable shopping cart bags that use the mark
“LOTUS TROLLEY BAGS.”
In July 2017, TB UK sent a cease-and-desist letter to
GEM, asserting that GEM’s sale of Lotus Bags infringed
the ’828 patent and what it asserts is a “TROLLEY BAGS”
common law trademark. 1 In September 2018, GEM then
brought a declaratory judgment action against TB UK in
the district court. GEM requested that the court find that
(1) GEM did not infringe the ’828 patent, (2) that the ’828
patent was invalid for (a) obviousness over Doyle 2 and
Brennan, 3 and (b) functionality, and (3) that GEM did not
infringe TB UK’s common law trademark. Both parties
then moved for summary judgment.
The district court granted GEM’s motion for summary
judgment and held the ’828 patent invalid for functionality
and obviousness, alternatively found that GEM did not in-
fringe the ’828 patent, and found that GEM did not infringe
TB UK’s common law trademark.
TB UK appealed the district court’s grant of summary
judgment. We have jurisdiction pursuant to 28 U.S.C.
§1295(a)(1).
1 As common law trademarks are created by use, see
In re Int’l Flavors & Fragrances Inc., 183 F.3d 1361, 1366
(Fed. Cir. 1999), this suit against products containing such
a mark effectively concedes the mark’s existence.
2 Doyle, Irish Patent Pub. S2009/0718. Doyle is di-
rected to a reusable bag system and is owned by TB UK.
3 Brennan et al., U.S. Patent 5,046,860. Brennan is
directed to reusable shopping bag assemblies.
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4 GOLDEN EYE MEDIA USA, INC. v.
EVO LIFESTYLE PRODUCTS LIMITED
DISCUSSION
We review the grant of summary judgment under the
law of the regional circuit from which the case originates.
See e.g., Grober v. Mako Prods., Inc., 686 F.3d 1335, 1344
(Fed. Cir. 2012). The Ninth Circuit reviews a district
court’s grant of summary judgment de novo. See e.g.,
Branch Banking & Tr. Co. v. D.M.S.I., LLC, 871 F.3d 751,
759 (9th Cir. 2017). Summary judgment 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. See Whitman v. Mineta,
541 F.3d 929, 931 (9th Cir. 2008); see also Celotex Corp. v.
Catrett, 477 U.S. 317, 322 (1986).
I. Functionality
The district court held that the ’828 patent was invalid
because its design was dictated by function. TB UK argues
that the district court errs in that conclusion by asserting
that it misapplied the Sport Dimension five-factor test re-
lating to functionality. TB UK alleges that in the process
of misapplying the test, the court failed to resolve disputed
facts in favor of TB UK, the non-moving party, and applied
the wrong legal standard, finding the patented design “dic-
tated by function” instead of it being “dictated solely by
function.” Appellant’s Br. at 13. GEM responds that the
court properly applied the Sport Dimension test and cor-
rectly found the design of the ’828 patent to be dictated by
function.
A district court’s finding that a patented design is dic-
tated by function is reviewed for clear error. See Ethicon
Endo-Surgery, Inc. v. Covidien, Inc., 796 F.3d 1312, 1328
(Fed. Cir. 2015). For a design to be protectable by a design
patent, “the design must not be governed solely by function,
i.e., that this is not the only possible form of the article that
could perform its function.” Rosco, Inc. v. Mirror Lite Co.,
304 F.3d 1373, 1378 (Fed. Cir. 2002). A design patent is
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invalid if the design is “dictated by the utilitarian purpose
of the article.” High Point Design LLC v. Buyer’s Direct,
Inc., 730 F.3d 1301, 1315 (Fed. Cir. 2013) (internal quota-
tion marks omitted). In determining whether a design is
dictated by function, courts consider whether (1) “the pro-
tected design represents the best design,” (2) “alternative
designs would adversely affect the utility of the specified
article,” (3) “there are any concomitant utility patents,”
(4) “the advertising touts particular features of the design
as having specific utility,” and (5) “there are any elements
in the design or an overall appearance clearly not dictated
by function.” Sport Dimension, Inc. v. Coleman Co., 820
F.3d 1316, 1322 (Fed. Cir. 2016).
We agree with GEM that the district court did not com-
mit clear error when it found the design of the ’828 patent
to be functional. The “availability of alternative designs
[is] an important—if not dispositive—factor in evaluating
the legal functionality of a claimed design.” Ethicon, 796
F.3d at 1329–30. After a thorough analysis, the court
found that the horizontal poles of the claimed design were
necessary for the purpose of the bag to fit in a cart while
standing upright. See Decision at 1188. The court then
found that an alternative design, for the poles or other fea-
tures, would directly and adversely impact the functional-
ity of the bag system and therefore that the first, second,
and fifth Sport Dimension factors weighed in favor of inva-
lidity. As for the third factor, whether there are any con-
comitant utility patents that shed light on the functionality
of the U.S. design patent, the court found that Doyle, while
owned by TB UK, was not classified as a utility patent in
Ireland and that Brennan was not owned by TB UK. Based
on these findings, the court found that this factor did not
weigh in favor or against invalidity.
The court noted that, regarding the fourth factor, TB
UK’s advertisements touted the utility of the bags. The
court cited numerous examples demonstrating this fact, in-
cluding a statement from TB UK’s website boasting that
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6 GOLDEN EYE MEDIA USA, INC. v.
EVO LIFESTYLE PRODUCTS LIMITED
the bags “halve the time at the checkout as packing is
quicker and easier without the hassle of holding bags
open.” Decision at 1192. The court therefore found that
this factor weighed in favor of invalidity. We consider that
these findings are not clearly erroneous, and thus we af-
firm its holding that the design of the ’828 patent is dic-
tated by function. We also find that there are no genuine
issues of material fact precluding summary judgment.
TB UK argues that the district court did not consider
all the alternative designs presented, but that was not nec-
essary. TB UK discussed two alternative designs: (1) using
two, larger bags to fill a shopping cart, and (2) a bag system
in which the designer chooses not to fill the entire capacity
of a shopping cart with the bags. The court properly dis-
posed of those alternatives when it mentioned that “the
only evidence of alternative designs [TB UK has] presented
is that their bags could be smaller or bigger such that they
would or would not fill the entire cart” and that these al-
ternatives “directly impact[] the utility of the [’]828
[p]atent.” Decision at 1186.
II. Obviousness
TB UK also appeals the district court’s invalidation of
the patent on the ground of obviousness. Having affirmed
the patent’s invalidity for functionality we need not go fur-
ther and review the obviousness determination. But, in the
interest of thoroughness and because we are not the court
of last resort, see Cardinal Chemical Co. v. Morton Int’l,
Inc., 508 U.S. 83 (1993), we will address that ground as
well.
TB UK argues that the district court should have found
that factual issues preclude a finding of summary judg-
ment. In addition, it argues that the court erred in decid-
ing that Doyle was a primary reference and that secondary
references could be combined with Doyle to invalidate the
’828 patent. TB UK notes that the United States Patent
and Trademark Office (“USPTO”) determined in its
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reexamination that Doyle was not invalidating prior art
and that it was too different from the design of the ’828 pa-
tent to be considered a primary reference. TB UK asserts
that the USPTO’s determination underscores the incorrect-
ness of the court’s conclusion that no genuine issues of ma-
terial fact existed.
GEM responds that the district court correctly deter-
mined that Doyle was a primary reference that exhibited
design characteristics that were basically the same as in
the ’828 patent. GEM adds that the court properly found
that Brennan was a secondary reference that could have
been combined with Doyle to create a design with the same
overall visual appearance as the claimed design of the ’828
patent.
Obviousness is a question of law that is reviewed de
novo, based on underlying factual questions that are re-
viewed for clear error. Honeywell Int’l, Inc. v. United
States, 609 F.3d 1292, 1297 (Fed. Cir. 2010). The underly-
ing factual inquiries include: (1) 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). Sum-
mary judgment of obviousness is appropriate if “the con-
tent 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.” 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)).
A determination of obviousness in design patents re-
quires a two-step inquiry designed to determine whether a
designer of ordinary skill in the art would have combined
prior art references to create a design with the same overall
visual appearance as the claimed design. See Durling v.
Spectrum Furniture Co., 101 F.3d 100, 103 (Fed. Cir. 1996).
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8 GOLDEN EYE MEDIA USA, INC. v.
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The first step is to identify “a single reference, ‘. . . some-
thing in existence, the design characteristics of which are
basically the same as the claimed design.’” Id. (quoting In
re Rosen, 673 F.2d 388, 391 (C.C.P.A. 1982)). To determine
if a design is “basically the same,” the court looks to the
“visual impression created by the patented design as a
whole.” Id. This court has noted that “the trial court judge
may determine almost instinctively whether the two de-
signs create basically the same visual impression,” but
“must communicate the reasoning behind th[at] decision.”
Id.In the second step, other references “may be used to
modify [the primary reference] to create a design that has
the same overall visual appearance as the claimed design.”
Id. These secondary references must be “so related [to the
primary reference] that the appearance of certain orna-
mental features in one would suggest the application of
those features to the other.” Id.We agree with GEM that the design of the ’828 patent
was properly determined to have been obvious at the time
it was created. In step one, the district court properly con-
sidered Doyle to be a primary reference. Despite Doyle
having a different handle design and location, horizontal
rods that differ in length and design, and a less rectangular
shape compared to the ’828 patent’s design, the court con-
cluded that the two designs created “basically the same”
visual impression:
Doyle Patent: '828 Patent:
,.,,
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Decision at 1198.
The district court’s conclusion is consistent with our
precedent where we have found that primary references
may contain slight differences relative to a patented de-
sign. See Spigen Korea Co. v. Ultraproof, Inc., 955 F.3d
1379, 1383 (Fed. Cir. 2020) (explaining that “slight differ-
ences” do not preclude a “basically the same” finding). Re-
garding the difference in the handles, the court noted that
“the Doyle Patent merely illustrates the flexibility of the
handles while the [’]828 patent shows the handles in an
upright position.” Decision at 1206. The court next con-
cluded that any perceived difference in the length of the
bag’s horizontal rod is slight and does not preclude a find-
ing that the bags are “basically the same.” Lastly, the court
also found the difference in the shape of the bags to be only
slight. These findings regarding the differences between
Doyle and the ’828 patent are not clearly erroneous, and
thus we find that the court properly considered Doyle to be
a primary reference.
In step two, the district court properly analyzed multi-
ple secondary references and concluded that the combina-
tion of Doyle as a primary reference and Brennan as a
secondary reference rendered the ’828 patent obvious.
Brennan contains similar handle stitching to the ’828 pa-
tent, and these handles combined with the bag shape and
handles of Doyle would create a shopping cart bag that
highly resembles the one claimed by the ’828 patent:
+ Brennan
,,. ,
• I
Decision at 1204.
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10 GOLDEN EYE MEDIA USA, INC. v.
EVO LIFESTYLE PRODUCTS LIMITED
The district court therefore did not commit clear error
by combining Doyle and Brennan and determining that the
combination of these two references would have rendered
the ’828 patent obvious. Thus, we affirm the court’s hold-
ing that the combination of Doyle and Brennan invalidated
the ’828 patented design for being obvious.
In light of our affirmance of the district court’s separate
holdings of invalidity on both functionality and obvious-
ness, the court’s decision addressing infringement is moot.
We thus do not address TB UK’s appeal from that portion
of the court’s decision.
III. Trademark Infringement
TB UK argues that the district court improperly
weighed and critiqued underlying evidence when conduct-
ing its likelihood of confusion analysis relating to the trade-
mark claim. GEM responds that TB UK failed to present
any evidence showing a likelihood of confusion, and the
court properly found that there was no genuine dispute of
material fact concerning likelihood of confusion.
We have jurisdiction over the appeal of the district
court’s summary judgment ruling against TB UK’s trade-
mark infringement claim because it was part of a com-
plaint containing non-frivolous claims of patent
infringement. See Atari, Inc. v. JS & A Grp., Inc., 747 F.2d
1422, 1427–30 (Fed. Cir. 1984) (discussing appellate juris-
diction over copyright and other non-patent issues in the
Federal Circuit when a complaint also includes a claim
arising under patent law); see also Zenith Elecs. Corp. v.
Exzec, Inc., 182 F.3d 1340, 1346 (Fed. Cir. 1999) (“Because
the complaint contained patent infringement claims, the
district court’s jurisdiction arose under 28 U.S.C. § 1338(a).
This established the path of appeal, giving exclusive juris-
diction in this court pursuant to . . . [] 1295(a)(1).”); Abbott
Lab’ys v. Brennan, 952 F.2d 1346, 1349–50 (Fed. Cir. 1991)
(“The path of appeal is determined by the basis of jurisdic-
tion in the district court, and is not controlled by the
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district court's decision or the substance of the issues that
are appealed.").
"In a trademark case, we apply the law of the applicable
regional circuit, in this case, the Ninth Circuit." Nautilus
Grp., Inc. v. ICON Health & Fitness, Inc. , 372 F.3d 1330,
1334 (Fed. Cir. 2004). "Likelihood of confusion is the type
of mixed question [that is] suited to clearly erroneous re-
view." Levi Strauss & Co. v. Blue Bell, Inc., 778 F.2d 1352,
1355 (9th Cir. 1985) (en bane). The Ninth Circuit examines
eight factors when evaluating trademark infringement
claims. AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-
49 (9th Cir. 1979). These eight factors are: (1) strength of
the mark, (2) proximity of the goods in trade channels,
(3) similarity of the marks, (4) evidence of actual confusion,
(5) marketing channels used, (6) type of goods and the de-
gree of care likely to be exercised by the purchaser, (7) de-
fendant's intent in selecting the mark, and (8) likelihood of
expansion of the product lines. Id.vVe agree with GEM that the district court properly an-
alyzed the Sleekcraft factors and held that there was no
genuine dispute of material fact as to noninfringement of
TB UK's "TROLLEY BAGS" trademark. In analyzing the
"trolley bag" logo of GEM's product and TB UK's product,
the court first noted that the two logos were markedly dif-
ferent:
GEM's Logo TB UK's Logo
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12 GOLDEN EYE MEDIA USA, INC. v.
EVO LIFESTYLE PRODUCTS LIMITED
See Decision at 1220. A quick inspection, see above, shows
the words TROLLEY BAG to be of quite different size and
location in the overall mark, and the colors are also very
different. Despite these differences, the court construed TB
UK’s trademark infringement claims to pertain to the use
of “TROLLEY BAG” in each logo. Under this construction,
the court analyzed each of the Sleekcraft factors and found
that, while the proximity of the goods factor weighed in TB
UK’s favor, all other factors weighed in GEM’s favor. The
court also noted that, despite both marks using the
“TROLLEY BAG” term, the dominance of other logos on
the bags, distinctive coloring, and overall appearance made
the marks dissimilar. Lastly, the court pointed out that TB
UK failed to provide evidence of actual confusion from use
of the marks. For these reasons, the court found that there
was no genuine dispute of material fact as to the likelihood
of confusion and that TB UK’s common law trademark was
not infringed. The court’s analysis of the Sleekcraft factors
was not clearly erroneous, and we do not find any instance
where the court overstepped its role by improperly weigh-
ing and critiquing underlying evidence. Thus, we affirm
the court’s holding that the “TROLLEY BAGS” common
law trademark was not infringed.
CONCLUSION
We have considered TB UK’s remaining arguments but
find them unpersuasive. For the foregoing reasons, the de-
cision of the district court is affirmed.
AFFIRMED