Spigen Korea Co., Ltd. v. Ultraproof Inc. et al., No. 19-1435 (Fed. Cir. Apr. 17, 2020)
In Spigen, the Court of Appeals for the Federal Circuit (CAFC) reversed a district court grant of summary judgment that three of Spigen’s design patents for a cellular phone case were obvious in view of prior art references.
Spigen owns U.S. Design Patents D771,607, D775,620, and D776,648 (the Spigen Design Patents), which each claim a “case for electronic device.” Spigen sued Ultraproof for infringement of the Spigen Design Patents in the U.S. District Court for the Central District of California. Ultraproof filed a motion for summary judgment of invalidity of the Spigen Design Patents. The district court held as a matter of law that the Spigen Design Patents were each obvious over U.S. Design Patent D729,218 (the Wilson patent) in view of U.S. Design Patent D772,209 (the Kim patent).
Before determining whether a design patent would have been obvious to a designer of ordinary skill in the art, the court must first determine whether a prior art reference is properly a “primary reference.” A primary reference is a single prior art reference that creates basically the same visual impression as the claimed design. A prior art reference and a claimed design may be found to be “basically the same” when there are slight differences between the two, but not where major modifications would be required to make the prior art reference look like the claimed design. Noting slight differences between the Wilson patent and the Spigen Design Patents, the district court found the Wilson patent was a proper primary reference. The district court held as a matter of law that the Spigen Design Patents were obvious over the Wilson patent and the Kim patent.
On appeal, Spigen argued there was a material factual dispute over whether the Wilson patent is a proper primary reference. Spigen presented expert testimony that the Spigen Design Patents and the Wilson patent are not at all similar, let alone “basically the same.” Spigen pointed to differences between the side surfaces and the front and rear chamfers in the Wilson patent and the Spigen ‘607 patent. Spigen also pointed out that the Wilson patent includes small triangular elements on its chamfers and lacks an outer shell-like feature, parting lines, or an aperture. Figures from the Spigen ‘607 patent and the Wilson patent are shown below.
In the district court, Ultraproof had argued that the Wilson patent was basically the same as the Spigen patents and that the only perceivable differences between the Wilson patent and the Spigen Design Patents were the circular cutout in the upper third of the back surface and the horizontal parting lines on the back and side surfaces.
The CAFC noted that a reasonable factfinder could conclude that the Wilson patent and the Spigen Design Patents have substantial differences and, thus, are not “basically the same.” The CAFC rejected Ultraproof’s argument that many of the differences between the Wilson patent and the Spigen Design Patents are “largely differences of degree, not characteristic” and are therefore irrelevant to the “basically the same” inquiry.
In a 2-1 split with Judge Lourie dissenting without an opinion, the CAFC panel reversed the grant of summary judgment and remanded the case to the district court for further proceedings.
Key takeaway: A determination that a design patent is obvious as a matter of law is improper where, based on competing evidence, a reasonable factfinder could find “substantial differences” between the claimed design and the prior art.