No.

_______

THE LEX GROUP
DC
1825 K Street, N.W. Suite 103 Washington, D.C. 20006
(202) 955-0001 (800) 856-4419 Fax: (202) 955-0022 www.thelexgroup.com

In The
Supreme Court of the United States

-------------------------- ---------------------------

MRC INNOVATIONS, INC.,
Petitioner,

v.


HUNTER MFG., LLP, and
CDI INTERNATIONAL, INC.,
Respondents.

-------------------------- --------------------------

ON PETITION FOR WRIT OF CERTIORARI TO
THE UNITED STATES COURT OF APPEALS
FOR THE FEDERAL CIRCUIT

-------------------------- --------------------------

PETITION FOR WRIT OF CERTIORARI
-------------------------- --------------------------

















Randolph E. Digges, III
Counsel of Record
Robert A. Sidoti
Jonathan A. Withrow
RANKIN, HILL & CLARK LLP
23755 Lorain Road, Suite 200
North Olmsted, Ohio 44070
(216) 566-9700
digges@rankinhill.com

Counsel for Petitioner Dated: July 1, 2014
i
QUESTION PRESENTED

The question presented is whether the
principle set forth by this Court in KSR Intl v. Co. v.
Teleflex, Inc., 550 U.S. 398 (2007), that when making
an obviousness determination under 35 U.S.C. 103
a court must provide an explicit analysis regarding
whether there was an apparent reason to combine
the known elements in the fashion claimed by the
patent, also applies to design patents.
ii
PARTIES TO THE PROCEEDINGS
AND RULE 29.6 STATEMENT

There are no parties to the proceedings other
than those listed in the caption.

Petitioner, MRC Innovations, Inc., has no
parent corporations and no publicly held company
owns 10% or more of its stock.


iii
TABLE OF CONTENTS
Page

QUESTION PRESENTED ......................................... i

PARTIES TO THE PROCEEDINGS
AND RULE 2.6 STATEMENT .................................. ii

TABLE OF CONTENTS ........................................... iii

TABLE OF CITED AUTHORITIES ........................ vi

OPINIONS BELOW .................................................. 1

BASIS FOR THIS COURTS JURISDICTION ........ 1

STATUTORY PROVISIONS INVOLVED ................ 2

INTRODUCTION ...................................................... 3

STATEMENT OF THE CASE .................................. 6

A. Factual Background ............................. 6

B. District Court Proceedings ................... 8

C. The Federal Circuits Decision............ 17

iv
TABLE OF CONTENTS (Contd)

Page

REASONS FOR GRANTING THE PETITION ....... 18

I. The Federal Circuits Decision
Conflicts With This Courts
Precedent ............................................. 18

II. Unless Reversed, The Federal
Circuits Decision Will Have Far-
Reaching Negative Effects .................. 23

CONCLUSION ......................................................... 25

APPENDICES

Decision of
The United States Court of Appeals for
The Federal Circuit
Re: Affirming District Courts Decision
entered April 2, 2014 .......................... 1a

Memorandum of Opinion and Order of
The United States District Court for
The Northern District of Ohio
Re: Granting Defendants Motion for
Summary Judgment
entered January 31, 2013 ................. 22a

v
Judgment in a Civil Case of
The United States District Court for
The Northern District of Ohio
entered May 16, 2013 ........................ 49a

vi
TABLE OF AUTHORITIES
Page(s)
Cases

Andersons-Black Rock, Inc., v.
Pavement Salvage Co.,
396 U.S. 57 (1969) ....................................... 3, 4

Durling v. Spectrum Furniture Co.,
101 F.3d 100 (Fed. Cir. 1996) ......................... 9

Graham v. John Deere Co. of Kansas City,
383 U.S. 1 (1966) ............................................. 3

In re Borden,
90 F.3d 1570 (Fed. Cir. 1996) ....................... 17

In re Glavas,
230 F.2d 447 (CCPA 1956) ........................... 17

In re Kahn,
441 F. 3d 977 (CA Fed. 2006) ......................... 4

KSR Intl v. Co. v. Teleflex, Inc.,
550 U.S. 398 (2007) ............ i, 3, 5, 6, 18, 19, 23

L.A. Gear, Inc. v. Thom McAn Shoe Co.,
988 F.2d 1117 (Fed. Cir. 1993) ...................... 16

Litton Systems, Inc. v. Whirlpool Corp.,
728 F.2d 1423 (Fed. Cir. 1984) ....................... 5

vii
TABLE OF AUTHORITIES (contd)

Page(s)

Sakraida v. AG Pro, Inc.,
425 U.S. 273 (1976) ..................................... 3, 4

United States v. Adams,
383 U.S. 39 (1966) ........................................... 3


Statutes

28 U.S.C. 1254(1) .................................................... 1

35 U.S.C. 101 ........................................................... 5

35 U.S.C. 103 ............................ i, 2. 3, 5, 6, 9, 16, 18

35 U.S.C. 171 ....................................................... 2, 5

Other Authorities

Sarah Burstein, Visual Invention, Lewis &
Clark Law Review, Vol. 16:1, 169 (March 22,
2012) ....................................................................... 24

1
PETITION FOR A WRIT OF CERTIORARI

Petitioner, MRC Innovations, Inc.,
respectfully petitions for a writ of certiorari to
review the judgment of the United States Court of
Appeals for the Federal Circuit in this case.


OPINIONS BELOW

The decision of the court of appeals (Pet. App.
1a-21a) is reported at 2014 U.S. App. LEXIS 6074
(Fed. Cir. Apr. 2, 2014). The Memorandum of
Opinion and Order of the district court granting
summary judgment in favor of respondents (Pet.
App. 22a-48a) is reported at 921 F. Supp. 2d 800,
2013 U.S. Dist. LEXIS 13302 (N.D. Ohio January 31,
2013). A previous Memorandum of Opinion and
Order of the district court denying petitioners
motion for preliminary injunction is reported at 2012
U.S. Dist. LEXIS 79685 (N.D. Ohio June 7, 2012).


BASIS FOR THIS COURTS JURISDICTION

The judgment of the court of appeals was
entered on April 2, 2014 (Pet. App. 1a-21a). The
jurisdiction of this Court is invoked under 28 U.S.C.
1254(1).
2
STATUTORY PROVISIONS INVOLVED

35 U.S.C. 171:

Whoever invents any new, original and
ornamental design for an article of
manufacture may obtain a patent
therefor, subject to the conditions and
requirements of this title.

The provisions of this title relating to
patents for inventions shall apply to
patents for designs, except as otherwise
provided.


35 U.S.C. 103(a) (pre-America Invents Act):

A patent may not be obtained though
the invention is not identically disclosed
or described as set forth in section 102
of this title, if the differences between
the subject matter sought to be
patented and the prior art are such that
the subject matter as a whole would
have been obvious at the time the
invention was made to a person having
ordinary skill in the art to which said
subject matter pertains. Patentability
shall not be negatived by the manner in
which the invention was made.

3
INTRODUCTION

In KSR Intl v. Co. v. Teleflex, Inc., 550 U.S.
398 (2007), this Court ruled that the teaching,
suggestion or motivation (TSM) test formerly
applied by the Federal Circuit when resolving the
question of obviousness under 35 U.S.C. 103(a) was
too rigid and conflicted with this Courts cases,
perhaps most notably Graham v. John Deere Co. of
Kansas City, 383 U.S. 1 (1966), which set forth an
expansive and flexible approach. In KSR, after
summarizing three cases decided after Graham,
namely United States v. Adams, 383 U.S. 39 (1966),
Andersons-Black Rock, Inc., v. Pavement Salvage
Co., 396 U.S. 57 (1969), and Sakraida v. AG Pro,
Inc., 425 U.S. 273 (1976), the Court noted as follows
(bold emphasis added):

The principles underlying these
cases are instructive when the question
is whether a patent claiming the
combination of elements of prior art is
obvious. When a work is available in
one field of endeavor, design incentives
and other market forces can prompt
variations of it, either in the same field
or a different one. If a person of
ordinary skill can implement a
predictable variation, 103 likely bars
its patentability. For the same reason,
if a technique has been used to improve
one device, and a person of ordinary
skill in the art would recognize that it
would improve similar devices in the
same way, using the technique is
4
obvious unless its actual application is
beyond his or her skill. Sakraida and
Andersons-Black Rock are illustrative
a court must ask whether the
improvement is more than the
predictable use of prior art elements
according to their established functions.

Following these principles may
be more difficult in other cases than it
is here because the claimed subject
matter may involve more than the
simple substitution of one known
element for another or the mere
application of a known technique to a
piece of prior art ready for the
improvement. Often, it will be
necessary for a court to look to
interrelated teachings of multiple
patents; the effects of demands known
to the design community or present in
the marketplace; and the background
knowledge possessed by a person
having ordinary skill in the art, all in
order to determine whether there
was an apparent reason to combine
the known elements in the fashion
claimed by the patent at issue. To
facilitate review, this analysis should
be made explicit. See In re Kahn, 441
F.3d 977, 988 (CA Fed. 2006)
([R]ejections on obviousness grounds
cannot be sustained by mere conclusory
statements; instead, there must be
some articulated reasoning with some
5
rational underpinning to support the
legal conclusion of obviousness). As
our precedents make clear, however,
the analysis need not seek out precise
teachings directed to the specific subject
matter of the challenged claim, for a
court can take account of the inferences
and creative steps that a person of
ordinary skill in the art would employ.

KSR involved application of 35 U.S.C. 103 to
a utility patent issued pursuant to 35 U.S.C. 101.
But 35 U.S.C. 171 provides, in pertinent part, that
[t]he provisions of this title relating to patents for
inventions shall apply to patents for designs, except
as otherwise provided. As properly noted by the
Federal Circuit more than 30 years ago, 35 U.S.C.
103 (and all the case law interpreting that statute)
applies with equal force to a determination of the
obviousness of either a design or utility patent.
Litton Systems, Inc. v. Whirlpool Corp., 728 F.2d
1423, 1441 (Fed. Cir. 1984).

Unfortunately, the Federal Circuit has
significantly departed from this Courts case law
regarding 35 U.S.C. 103 insofar as design patents
are concerned. In particular, the Federal Circuit has
departed from the principle set forth in KSR that a
court when making an obviousness determination
must provide an explicit analysis explaining the
apparent reason to combine known elements in the
fashion claimed by the patent. Instead, the Federal
Circuit utilizes a so related test in design patent
cases that, when applied, entirely dispenses with the
requirement that the court articulate whether there
6
was an apparent reason (i.e., a basis) to combine
the known elements in the fashion claimed by the
patent.

The Federal Circuits utilization of the so
related test conflicts with this Courts prior case law
regarding 35 U.S.C. 103, is unreasonable, and puts
the validity of many issued design patents in
jeopardy. Furthermore, it does not accord the
fundamental truth that a new, original and
ornamental design for an article of manufacture may
consist of or include ornamental elements that can
be found in related prior art articles, but which have
been combined by the inventor in such a manner
that the claimed subject matter as a whole would not
have been obvious at the time the invention was
made to a person having ordinary skill in the art to
which said subject matter pertains. This Court
should grant a petition for writ of certiorari to make
it abundantly clear that the principles pertaining to
obviousness determinations set forth in KSR apply
equally to design patents.


STATEMENT OF THE CASE

A. Factual Background

Petitioner, MRC Innovations, Inc. (hereinafter
MRC), is the owner, by assignment, of U.S. Design
Pat. Nos. D634,488 S (the 488 Patent) (CTA29-
CTA34) and D634,487 S (the 487 Patent) (CTA23-
A28), that claim ornamental designs for a football
jersey and a baseball jersey for a dog, respectively.
7
Both of the designs were invented by Mark R. Cohen
(Cohen), MRCs principal shareholder. Initially,
respondent, Hunter MFG. LLP (Hunter),
purchased jerseys that embodied the designs from
another of Cohens companies and MRCs licensee,
Fun-in-Games, Inc. (FiG). However, when Cohen
complained to Hunter of slow payment issues and
threatened to cease shipping additional jerseys to
Hunter in the future, Hunter provided samples of
both jerseys to respondent, CDI International Inc.
(CDI), without MRCs knowledge or permission,
and later awarded CDI a contract to manufacture
and ship jerseys to Hunter that copied the designs.

Two views (front and back) of the patented
design for a football jersey for a dog at issue, and
photographs showing similar views of a jersey
produced by FiG for Hunter and a copy thereof
produced by CDI for Hunter are shown below:

8

The jerseys produced by CDI for Hunter so
accurately copy the jerseys produced by FiG for
Hunter that Hunters President could not tell them
apart when asked to do so (CTA198-A200). And
CDIs self-designated representative also testified
that it would also be difficult for him to do (CTA205).

B. District Court Proceedings

On March 20, 2012, MRC filed a complaint in
the U.S. District Court for the Northern District of
Ohio against Hunter and CDI for willful
infringement of the 488 Patent, which claims an
ornamental design for a football jersey for a dog. On
September 10, 2012, MRC filed an amended pleading
that added claims against Hunter and CDI for
willful infringement of the 487 Patent, which claims
an ornamental design for a baseball jersey for a dog.

9
On October 10, 2012, Hunter and CDI filed a
joint motion for summary judgment. Hunter and
CDI argued that the 488 Patent was invalid under
35 U.S.C. 103 in view of photographs of two prior
art dog jerseys designed by Cohen (identified during
the litigation as the V2 Jersey and the Eagles
Jersey respectively) and in a photograph of a prior
art dog jersey sold by Sporty K9 (identified during
the litigation as the Sporty K9 Football Jersey),
none of which were considered during prosecution of
the 488 Patent. Hunter argued that the design
claimed in the 487 Patent was invalid under 35
U.S.C. 103 in view of the aforementioned
photographs of prior art dog football jerseys and a
photograph of a baseball jersey sold by Sporty K9
(identified during the litigation as the Sporty K9
Baseball Jersey), which again was not considered
during prosecution of the 487 Patent.

In their motion, Hunter and CDI
acknowledged that each of the prior art dog jerseys
did not disclose the same design as claimed in either
patent-in-suit, but argued that each of them was a
single reference, something in existence, the design
characteristics of which are basically the same as the
claimed design as set forth in Durling v. Spectrum
Furniture Co., 101 F.3d 100, 103 (Fed. Cir. 1996).
Hunter and CDI further argued that each of the
prior art jerseys was so related to the other that
the appearance of certain ornamental features in
one would suggest the application of those features
to the other, and also that the remaining differences
between the claimed designs and what was present
in the prior art were trivial advances or minor
differences that would be regarded as insignificant to
10
an ordinary observer, as a matter of law. Hunter
and CDI did not submit any evidence that attempted
to explain why one having ordinary skill in the art
would have found it obvious to select some of the
ornamental design elements present in the various
prior art dog jerseys of record, while disregarding
other ornamental design elements present in such
designs, and thereupon combine them in such a
manner as to arrive at the designs claimed in the
patents-in-suit.

In its Memorandum in Opposition to the
motion for summary judgment, MRC pointed that a
designer having ordinary skill in the art would have
had to make at least three major design changes to
each of the prior art jerseys identified by Hunter and
CDI in order to arrive at a jersey embodying the
claimed subject matter as a whole.

For example, the following illustration shows
four significant differences between the V2 Jersey
and the design claimed in the 488 Patent:

11


Arrow A points to an interlock fabric panel
that is present in the claimed design, which is not
present in the V2 Jersey (CTA217 at 30). The
panel in the V2 Jersey is made of dazzle fabric,
which provides a different ornamental appearance
(it is shiny) (CTA217 at 30). Arrow B points to
ornamental serge stitching, which appears on the
front of the claimed design and which is not present
in the V2 Jersey (CTA217 at 30). Arrow C points
to a vertical line of ornamental serge stitching,
which appears on the rear of the claimed design and
which is not present in the V2 Jersey (CTA217 at
30). And, Arrow D points to the raglan-style
sleeves in the claimed design, which are different
12
than the drop sleeves in the V2 Jersey (CTA217 at
30).

The following illustration shows three
significant differences between the Eagles Jersey
and the design claimed in the 488 Patent:



Arrow A points to an interlock fabric panel
that is present in the claimed design, which is not
present in the Eagles Jersey (CTA219 at 32).
Arrow B points to a V-neck collar, which is present
in the claimed design and which is not present in the
Eagles Jersey (CTA219 at 32). And, Arrow C
points to a vertical line of ornamental serge
stitching, which appears on the rear of the claimed
13
design and which is not present in the Eagles Jersey
(CTA219 at 32).

The following illustration shows four
significant differences between the Sporty K9
Football Jersey and the design claimed in the 488
Patent:


Arrow A points to an interlock fabric panel
that is present in the claimed design, which is not
present in the Sporty K9 Jersey-the panel in the
Sporty K9 Jersey appears to be made of dazzle fabric
(it is shiny) (CTA220-221 at 34). Arrows B points
to ornamental serge stitching, which appears on the
front of the claimed design and which is not present
in the Sporty K9 Jersey (CTA220-221 at 34).
14
Arrow C points to a vertical line of ornamental
serge stitching, which appears on the rear of the
claimed design and which is not present in the
Sporty K9 Jersey (CTA220-221 at 34). And, Arrow
D points to the raglan-style sleeves in the claimed
design, which are different than the drop sleeves in
the Sporty K9 Jersey (CTA220-221 at 34).

The following illustration shows four
differences between the SportyK9 Baseball Jersey
and the design claimed in the 487 Patent:



Arrow A points to a banded V-neck collar
that is present in the claimed design, which is very
different than the non-banded collar assembly in the
15
Sporty K9 Jersey (baseball version), which is
described as consisting of a faux t-shirt portion
having a crew neck that underlies a second collarless
portion (CTA223-224 at 40). Arrow B points to
the mesh fabric from which the design claimed in the
487 Patent is made, which is different than the
polyester fabric of the Sporty K9 Jersey (baseball
version) (CTA223-224 at 40). Arrow C points to
the comparatively wide difference between the
length of the front of the jersey as compared to the
length of the rear of the jersey in the design claimed
in the 487 Patent, which is different than the
comparatively narrow difference in such lengths in
the Sporty K9 Jersey (baseball version) (CTA223-224
at 40). The Sporty K9 Jersey (baseball version) is
thus much more tubular when donned by a dog as
compared to the design shown in the 487 Patent
(CTA223-224 at 40). Finally, Arrow D points to
the faux t-shirt portion of the Sporty K9 Jersey
(baseball version), which is not present at all in the
design claimed in the 487 Patent (CTA224 at 40).

MRC argued in opposition to the motion for
summary judgment that the movants did not present
any evidence whatsoever regarding what capabilities
are possessed by a designer of ordinary skill or
capability in the field of designing pet jerseys, nor
did they explain why a designer having ordinary
skill in the art would have been motivated to arrive
at the claimed designs in view of the prior art
jerseys, which would require the selection of some,
but not all, ornamental features present therein and,
at least in the case of the design claimed in the 488
Patent, the use of ornamental serge stitching in a
manner that was not shown in any of the prior art of
16
record. Specifically, none of the prior art of record
shows a vertical line of ornamental serge stitching,
which appears on the rear of the claimed design
(Arrow C in the first three figures shown above).
MRC also submitted a Declaration from Cohen who,
as a designer having ordinary skill in the art of
designing pet jerseys, opined that no designer having
such skill would have found the designs claimed in
either patent-in-suit as obvious in view of the prior
art cited by Hunter and CDI (CTA225 at 41). This
evidence was unrebutted.

MRC further argued that when a patented
design includes elements that are in the prior art, a
holding of obviousness requires that there be an
explicit analysis explaining why it would have been
obvious to a designer of ordinary skill to make the
particular selections and combinations of elements
as made by the patentee. Furthermore, MRC argued
that the law recognizes that a reconstruction of
known elements does not invalidate a design patent,
absent some basis whereby a designer of ordinary
skill would be led to create this particular design.
See L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d
1117, 1124 (Fed. Cir. 1993)

On January 31, 2013, the District Court
denied MRCs request for oral argument and entered
a Memorandum Opinion and Order (Pet. App. 22a-
48a), which granted summary judgment in favor of
Hunter and CDI on grounds that both of the design
patents in suit were invalid under 35 U.S.C. 103(a)
in view of the prior art of record.

17
C. The Federal Circuits Decision

A panel of the United States Court of Appeals
for the Federal Circuit affirmed the district courts
entry of summary judgment in favor of Hunter and
CDI. In its appellate brief, MRC argued that district
court erred in declaring the 488 Patent invalid by
failing to explain why a skilled artisan would have
chosen to incorporate some, but not all, of the
features of the V2 and Sporty K9 jerseys with the
Eagles jersey. The panel addressed this question as
follows (Pet. App. 13a, footnote omitted):

We disagree. It is true that [i]n
order for secondary references to be
considered, . . . there must be some
suggestion 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 requirement to mean
that the teachings of prior art designs
may 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 similarity in appearance that
itself provides the suggestion that one
should apply certain features to another
design.

18
The panel reached a similar conclusion insofar
as the 487 Patent as follows (Pet. App. 21a):

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 appearance would suggest the
combination of those features to create
the claimed design.


REASONS FOR GRANTING THE PETITION

I. THE FEDERAL CIRCUITS DECISION
CONFLICTS WITH THIS COURTS
PRECEDENT

The Federal Circuits decision in this case
conflicts with the principle set forth by this Court in
KSR that when making an obviousness
determination under 35 U.S.C. 103 a court must
provide an explicit analysis regarding whether there
was an apparent reason to combine the known
elements in the fashion claimed by the patent. Use
of the so related test in design patent cases simply
eliminates this analysis entirely. It allows a court to
presume that the claimed design would have been
obvious to one having skilled in the art merely
because certain of the ornamental elements present
in the claimed design can be found in related prior
art. This is an over simplification that substitutes
relatedness for obviousness.

19
Hunter and CDI argued to the Court of
Appeals below that it was not clear whether KSR
applies to design patents (Respondents Brief at p.
8):

regardless of whether this Court
decides to apply KSR to design patents,
the ambit of this Courts precedent
remains clear: the obviousness inquiry
simply does not require any express
teaching, suggestion, motivation, or
basis for combining the features of
different prior art designs relating to
the same articles of manufacture.

The statement above misstates the question
presented and the principle set forth in KSR. MRC
is not arguing for application of a rigid test such as
the TSM test at issue in KSR, which required the
references themselves to expressly set forth the
teaching, suggestion or motivation allowing for their
combination. On the contrary, MRC is arguing that
a court must articulate some rational basis for
selecting and combining features found in prior art
articles to arrive at a claimed design. In other
words, if a court is inclined to declare a claimed
design obvious in view of the prior art, the court
ought to be able to explain the reason why it would
have been obvious to one having ordinary skill in the
art to arrive at the claimed design. That reasoning
or basis can come from any reasonable source. This
is the flexible approach that KSR requires and
embraces.

20
The so related test, as opposed to being too
rigid, is too loose. It eliminates the need for a court
to articulate a basis for selectively combining
elements that can be found in related prior art
articles. As noted above, it allows relatedness to be
substituted for obviousness, and essentially allows a
claimed design to be declared invalid on obviousness
grounds because a skilled artisan is capable of
selecting and applying the ornamental element to
such an article without explaining why the skilled
artisan would have found it obvious to make the
particular selections and combine them in the
manner claimed.

In many cases, a patented design may include
ornamental features or elements that appear in
other articles of manufacture, including similar or
related articles of manufacture. But the claimed
design, when considered on the whole, may
nevertheless be new, original and ornamental and
therefore patentable in view of the prior art. The
mere presence of similar design features in articles
of the same type does not show that it would have
been obvious to one having ordinary skill in the art
to combine some of the design features in the
manner claimed. The presence of similar design
features in articles of the same type proves only that
it is possible to use such ornamental features, but
not that it is obvious to do so in any specific manner
in any other design.

In the present case, photographs of several
prior art pet jerseys were offered into evidence, but
there was no evidence explaining the reason why a
person having ordinary skill in the art would have
21
found it obvious to select and combine ornamental
elements from one or more prior art jerseys with
other prior art jerseys so as to arrive at pet jerseys
embodying the claimed designs. As noted above,
each prior art pet jersey had an overall appearance
that differed from the patented designs in at least
three significant respects. Stated differently, in
order to arrive at the patented designs starting from
any one of the prior art pet jerseys of record, one
having ordinary skill in the art would have had to
find it obvious to modify such prior art references in
at least three specific ways. There is no evidence in
the record from which one could rationally articulate
a reason or explanation why a designer having
ordinary skill in the art would have found it obvious
to make such modifications.

In the case of the 488 Patent, the claimed
design includes ornamental serge stitching in a
specific arrangement that is not shown in any prior
art of record. Only the prior art Eagles Jersey shows
the use of ornamental serge stitching, but it does not
show it used on a vertical seam on the rear of the
jersey (there is no seam in the Eagles Jersey
between an interlock panel and a mesh back as in
the claimed design). Nevertheless, the district court
and the court of appeals below both found the 488
Patent to be invalid in view of the prior art. On this
point, the court of appeals stated that (Pet. App. at
16a):

We agree with the district court that
adding ornamental surge stitching on
top of a preexisting seam was an
22
insubstantial change that would have
been obvious to a skilled designer.

The footnote following this sentence is telling.
In footnote 6, the court of appeals further stated
that:

To be clear, we do not intend to suggest
that merely because one prior art
reference used ornamental surge [sic]
stitching, any use of such stitching
would have been a de minimis change.
Rather, the addition of the surge [sic]
stitching 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.

The foregoing statement by the court of
appeals illustrates a significant problem with the so
related test and the notion that design elements not
found in the prior art of record can be considered de
minimis. There is also a vertical seam on the front
of the V2 jersey between the dazzle side panel and
the mesh fabric. If the logic employed by the court of
appeals was applied consistently, a designer having
ordinary skill in the art would also have applied
serge stitching to that seam (i.e., to highlight a
design feature that had already existed in the V2
prior art jersey.). But in so doing, the designer
having ordinary skill in the art would have arrived a
design that differed from that claimed in the 488
23
Patent, which does not include serge stitching on the
vertical seam on the front of the jersey.

The so related test allows for this type of
random picking and choosing of elements from the
prior art without articulating any reasons or basis
for doing so, and thus does not accord the principle of
KSR that a court, when conducting an obviousness
determination, must provide an explicit analysis
regarding whether there was an apparent reason to
combine the known elements in the fashion claimed
by the patent. In design cases this analysis may be
difficult, since there are no words that accompany or
describe the reasons why the designer made the
particular selections and combinations. In such
situations, it may be necessary for the court to
receive evidence and thus properly consider the
effects of demands known to the design community
or present in the marketplace; and the background
knowledge possessed by a person having ordinary
skill in the art as noted by this Court in KSR.


II. UNLESS REVERSED, THE FEDERAL
CIRCUITS DECISION WILL HAVE FAR-
REACHING NEGATIVE EFFECTS

The precedential ruling by the court of
appeals in this case will have far-reaching negative
effects. Handbags, clothing, shoes, furniture and
many other articles of manufacture often incorporate
design elements that can be found in other related
articles, but which have been combined by the
designer in such a way as to define a new, original
and ornamental design. The so related test puts
24
any design that includes ornamental elements that
can be found in related articles at jeopardy of being
declared invalid without requiring a court to provide
an explicit analysis of whether there was an
apparent reason to combine the known elements in
the fashion claimed by the patent. Merely that an
ornamental feature can be found in a related article
of manufacture is all that is required.

Commentators have identified the problems
with the so related test utilized by the Federal
Circuit in design patent cases. See, e.g., Sarah
Burstein, Visual Invention, Lewis & Clark Law
Review, Vol. 16:1, 169, 212 (March 22, 2012)
(agreeing with other commentators that the Federal
Circuits so related test is unclear and, in some
respects, nonsensical.).

Design patents provide a very narrow scope of
protection, yet by application of the Federal Circuits
so related test, they can be invalidated merely
because ornamental elements included in the
claimed design can be found in related articles of
manufacture. The so related test does not require
a court to provide an explicit analysis regarding
whether there was an apparent reason to combine
the known elements in the fashion claimed by the
patent. Until the Federal Circuits so related test
is reviewed and rejected by this Court, uncertainty
and unfairness will continue in the design
community.

25
CONCLUSION

For the foregoing reasons, MRC Innovations,
Inc., respectfully requests that the Court grant this
Petition for Writ of Certiorari.

Dated: July 1, 2014

Respectfully submitted,

RANDOLPH E. DIGGES, III
Counsel of Record
ROBERT A. SIDOTI
JONATHAN A. WITHROW
RANKIN, HILL & CLARK LLP
23755 Lorain Road, Suite 200
North Olmsted, OH 44070
(216) 566-9700
digges@rankinhill.com

Attorneys for Petitioner,
MRC Innovations, Inc.





APPENDIX
ia
TABLE OF CONTENTS

Page

Decision of
The United States Court of Appeals for
The Federal Circuit
Re: Affirming District Courts Decision
entered April 2, 2014 ..................................... 1a

Memorandum of Opinion and Order of
The United States District Court for
The Northern District of Ohio
Re: Granting Defendants Motion for
Summary Judgment
entered January 31, 2013 ............................ 22a

Judgment in a Civil Case of
The United States District Court for
The Northern District of Ohio
entered May 16, 2013................................... 49a

1a
[ENTERED APRIL 2, 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
2a
ROBERT A. SIDOTI. Of counsel was JONATHAN A.
WITHROW.

PERRY J. SAIDMAN, Saidman DesignLaw
Group, LLC, of Silver Spring, Maryland, argued for
defendants-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-insuit. 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:

3a
488 Patent 487 Patent







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 consumer 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
4a
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:



Cohen asserts that in 2009 he designed
another pet jersey, known as the V3 jersey, which
would later become the subject of the 488 patent.
Hunter began purchasing the V3 jersey from FiG
sometime after September 8, 2009. On September 8,
2010, Cohen filed a patent application for both the
5a
V3 jersey and the baseball equivalent that would
later become the subject of the 487 patent.

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 manufacture and supply it
with pet jerseys like the V3. Ultimately, Hunter
contracted with another supplier, appellee CDI
International, Inc., to supply Hunter with pet
jerseys.

Both patents-in-suit eventually issued on
March 15, 2011.

MRC filed suit against both Hunter and CDI
for willful infringement of both patents. The district
court granted 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 courts grant of
summary judgment under the law of the regional
circuit. Grober v. Mako Prods., Inc., 686 F.3d 1335,
6a
1344 (Fed. Cir. 2012). The Sixth Circuit reviews a
district courts grant of summary judgment de novo.
Braun v. Ann Arbor Charter Twp., 519 F.3d 564, 569
(6th Cir. 2008). 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.
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. Honeywell Intl, Inc. v. United States,
609 F.3d 1292, 1297 (Fed. Cir. 2010). The underlying
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). 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. TriMed, Inc. v. Stryker Corp., 608
7a
F.3d 1333, 1341 (Fed. Cir. 2010) (citing KSR Intl 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
characteristics 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 behind that decision.
Id.

Once the primary reference is found, other
secondary references may be used to modify it 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
8a
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 analysis. MRC, 921 F. Supp. 2d at 809.
MRC argues that this was legally erroneous because
there are significant differences between the Eagles
jersey and the patented design of the 488 patent.
Specifically, there are three differences: (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
patented 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
9a
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 courts reasoning in identifying a
primary reference. See id. (citing Durling, 101 F.3d
at 103). It is entirely clear from the district courts
opinion what it considered to be the relevant design
characteristics of the 488 patented design.

First, the district court pointed out three key
similarities 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 courts analysis 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 stitchingboth 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
10a
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 design characteristics of the 488 design created
basically the same overall visual impression as the
Eagles jersey 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

1
This conclusion is not inconsistent with the law of this circuit
on design patent infringement. In that context, we have often
noted that design patents have almost 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 Commission, 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 products (the Groovy DAWGS
shoes and Big DAWGS shoes) contained a wider shoe front
with an additional row of holes, and another infringing product
(the Effervescent Waldies AT shoe) contained square holes on
the top of the shoe rather than round ones. Id. at 1303-06.
11a
great or greater than the differences in this case. See
Jore Corp. v. Kouvato, Inc., 117 F. Appx 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 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 asymmetrical
where the patented tablet was symmetrical; it
contained 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

2
The relatively few other cases in which we evaluated 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.
12a
of the claimed design. Id. These differences 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


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 panelsthe first two differences
described above. MRC argues that the district court

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 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.
13a
erred by failing to explain why a skilled artisan
would have chosen to incorporate 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 suggestion 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 requirement to mean that
the teachings of prior art designs may 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 similarity in appearance that itself provides
the suggestion that one should apply certain
features to another design.
4


4
MRC argues that this conclusion is clearly improper 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 reasoning behind its determination that a
given primary reference 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.
14a

In re Borden also discussed what is required
for a reference 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 the
[primary] container and Bordens 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
similarity 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
designthe presence of additional ornamental surge
stitching running down the rear of the jerseythe
district court acknowledged 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
15a
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 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
different shape of pincers were de minimis
differences in design for tweezers); In re Carter, 673
F.2d at 1380 (modifications 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 Boards conclusion
that numerous changes to the design of a prior art
buildingincluding a single rather than double door
and the addition of windowswere de minimis
because the overall impression was still a building
that looked like a barrel).

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. However, as explained below,
we believe that, even construing the evidence in the light most
favorable to MRC, no reasonable fact-finder could find in
MRCs favor on this issue. See supra at 14.
16a

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 suggested 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 obvious
to a skilled designer.
6


C. Secondary Considerations

In support of the non-obviousness of its
patents, MRC submitted evidence relating to
commercial success, copying, 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
nonpatented designs. And third, MRC points out
that it has granted a license on the 488 patent.


6
To be clear, we do not intend to suggest that merely 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 stitching 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.
17a
The district court noted that the only evidence
in support 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
considerations evidence as if it did not exist, rather
than construing the evidence in the favor of the non-
moving partyin 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 MRCs 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 commercial success and
copying were related to the merits of the claimed
invention. Merely statingwith no supporting
figures or datathat 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 courts analysis of
secondary considerations was admittedly somewhat
18a
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
Hunters alternative 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 courts denial of a motion for summary
judgment.).

II. The 487 Patent

A similar analysis applies to the 487 patent.
The district court also found the 487 patent obvious,
relying on the baseball version of the Sporty K9
jersey as the primary 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 and the Sporty K9
baseball jersey is depicted below:
19a


MRC again argues that there are several
major differences 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 highlevel 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 courts 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 811. In
pointing out the differences between the two designs,
20a
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 sufficiently described the patented design so as
to evoke a visual image consonant with the claimed
design. Durling, 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 tubular 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 garment (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 references 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
21a
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 appearance would suggest the
combination of those features to create the claimed
design.

We therefore affirm the district courts grant
of summary judgment of invalidity of the 487
patent.

AFFIRMED
22a
[ENTERED JANUARY 31, 2013]

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF OHIO
EASTERN DIVISION

MRC Innovations, Inc., )
)
Plaintiff, )
)
vs. )
)
Hunter MFG., LLP, and )
CDI International, Inc., )
)
Defendants. )

CASE NO. 1: 12 CV 684

JUDGE PATRICIA A. GAUGHAN

Memorandum of Opinion and Order

This is a patent infringement action
pertaining to two design patents relating to sports
jerseys for pets. Defendants Hunter MFG, LLP
(Hunter) and CDI International, Inc. (CDI) have
filed a joint motion for summary judgment. (Doc. 42.)
Also pending before the Court is a motion by the
plaintiff for oral argument. (Doc. 51.) For the reasons
stated below, defendants motion for summary
judgment is granted, and plaintiffs motion for oral
argument is denied.

23a
Facts

Plaintiff MRC Innovations, Inc. (MRC) is the
owner by written assignment of all right, title, and
interest to two design patents: U.S. Design Patent
No. D634, 488 (the 488 patent), entitled Football
Jersey for a Dog, and U.S. Design Patent No.
D634,487 (the 487 patent), entitled Baseball Jersey
for a Dog. (Second Am. Complt., Exs. A and B.) The
488 patent claims an ornamental design for a
football jersey for a dog as shown and described in
the patent. The 487 patent claims an ornamental
design for a baseball jersey for a dog as shown and
described. The description in the 488 patent
includes four figures depicting various views (side,
front, and back) of the claimed pet football jersey
and states that [t]he material of the football jersey
is primarily of a mesh and interlock fabric. The
description in the 487 patent likewise includes four
figures depicting various views of the claimed pet
baseball jersey and states that [t]he material of the
baseball jersey is primarily of mesh fabric. Both
patents issued on March 15, 2011 upon applications
filed with the United States Patent and Trademark
Office (USPTO) on September 8, 2010 by Mark
Cohen. Cohen is the named inventor of the patents
and is the principal shareholder of MRC. Cohen
assigned both patents to MRC.

For over twenty years, Hunter has been a
retailer of licensed sports consumer products. (Doc.
9, Neth Dec.) Hunter has sold pet jerseys since at
least as early as 2006. (Neth Dec., 3.) Prior to the
issuance of the design patents in suit, and in
24a
particular prior to September 9, 2009,
1
Cohen
through companies with which he was/is affiliated
supplied Hunter with pet jerseys for dogs that
Hunter sold.

For example, Hunter sold a so-called V2 pet
jersey, depicted on page 2 of defendants
memorandum, prior to September 9, 2009. (Neth
Dec., 1.) Hunter purchased the V2 pet jersey, which
was manufactured in and imported from China, from
Stephen Gould Corporation. Mark Cohen was a
salesperson for Stephen Gould Corporation at least
as early as 2008. (Neth Dec., 2, 3.) Hunter sold V2
jerseys purchased from Stephen Gould to customers
within the United States prior to September 9, 2009.
(Id. at 4.)

Beginning on or about September 2008, Cohen
supplied V2 pet jerseys to Hunter through Fun-in-
Games, Inc. (FiG), another company with which
Cohen had a relationship.
2
Cohen states that FiG
normally supplied pet jerseys to Hunter in specified
colors, and Hunter then applied transfers to the

1
As discussed below, Section 102(b) of the Patent Act provides
that a person is not entitled to a patent where the invention
was patented or described in a printed publication in this or a
foreign country or in public use or on sale in this country, more
than one year prior to the date of the application for patent in
the United States. 35 U.S.C. 102(b). Therefore, September 9,
2009, one year prior to the date the application for the 488
Patent was filed, is a critical date in determining the validity of
the patent.

2
FiG is a sister corporation to MRC and is also owned by
Cohen. FiG is licensed by MRC to manufacture and sell pet
jerseys to third parties.
25a
pet jerseys for particular markets. For example, red
pet jerseys supplied by FiG would be decorated with
Ohio State logos or St. Louis Cardinals logos. Orange
pet jerseys might be decorated with Cleveland
Browns or Cincinnati Bengals logos. In some
instances, FiG applied the transfers itself and
shipped the finished product to Hunter.

In addition, between the years of 2007 and
2009, Cohen also designed and supplied to Hunter,
through FiG, a pet football jersey developed by
Hunter for a special NFL program. (Cohen Dep. at
47-48.) A sample of this jersey is depicted on page 3
of defendants memorandum. It is a green pet jersey
bearing a Philadelphia Eagles logo. Cohen arranged
for this Eagles pet football jersey to be
manufactured in China for Hunter sometime prior to
July 30, 2009. (Id. at 50.) Hunter sold the Eagles
pet jersey through third-party retailers (Wal-Mart
and PetSmart) prior to July 30, 2009.

Cohen asserts that in 2009, he designed
another pet jersey, a so-called V3 jersey, which FiG
subsequently also supplied to Hunter. (Cohen Dec.,
12.) The V3 pet jersey is depicted on page 5 of
Cohens Declaration bearing a Kentucky Wildcats
logo. (Cohen Dec., p. 5.) Hunter began purchasing
the V3 jersey from FiG sometime after September 8,
2009.

In December 2010, issues arose between
Hunter and Cohen, including that Hunter was
experiencing financial difficulties making Hunter
slow at times to pay FiG. For this reason, Cohen
informed Hunter that he did not want to do business
26a
with Hunter any longer. Cohen asserts, however,
that FiG continued to supply Hunter with pet jerseys
for several months thereafter. (Cohen Dec., 19.)
Hunter meanwhile sought proposals from other
companies requesting that they manufacture and
supply it with pet jerseys like the V3 jersey.
Ultimately, Hunter contracted with another
supplier, CDI, to manufacture and supply Hunter
with pet jerseys. After the 487 and 488 patents
issued on March 15, 2011, Cohen assigned both
patents to MRC, which granted a license to FiG to
produce the patented football and baseball pet
jerseys. (Id., 22.) Cohen asserts that after the
patents were issued, Hunter continued to buy some
V3 pet football jerseys from FiG, including those that
bore labels marking them as patented. Hunter did
not purchase any baseball jerseys from FiG after the
487 patent issued although Hunter had purchased
pet baseball jerseys from FiG prior to the issuance of
the patents. (Id. at 18, 22, 23.) By December 2011,
FiG had stopped shipping V3 Jerseys to Hunter
completely.

Plaintiff filed this lawsuit against Hunter and
CDI on March 20, 2011, alleging infringement of the
487 and 488 patents. (Second Am. Complt., Doc.
37.) Plaintiffs Second Amended Complaint alleges
that defendants have infringed the 488 and 487
patents by importing into the United States, offering
to sell and selling, either directly or through third
party retailers such as Petco, pet apparel (in
particular, football and baseball jerseys for dogs)
that are substantially the same as the designs
covered by the 487 and 488 patents. As evidence of
such infringement, plaintiff attaches to its complaint
27a
pages from Hunters website and the website of
third-party retailer Petco (through which Hunter
also sells pet jerseys). These pages depict pet football
and baseball jerseys for dogs currently being offered
for sale by Hunter and supplied by CDI. (Sec. Am.
Complt., Exs. C-H). Plaintiff contends these pet
football and baseball jerseys have designs that are
substantially the same as the designs covered in the
488 and 487 patents and infringe the patents.

Defendants move for summary judgment on
the basis that both patents are invalid.

Standard of Review

Summary judgment is as appropriate in a
patent case as in any other case. Barmag Barmer
Maschinenfabrik AG v. Murata Machinery, Ltd., 731
F.2d 831, 835 (Fed.Cir. 1984). Summary judgment is
appropriate when 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 deciding a motion for summary judgment, the
court views the evidence in the light most favorable
to the non-moving party and draws all reasonable
inferences in the non-moving partys favor. Sagan v.
United States, 342 F.3d 493, 497 (6th Cir.2003). The
court does not weigh the evidence to determine the
truth, but rather, determines whether the evidence
produced creates a genuine issue for trial. Id.

A patent is presumed valid under 35 U.S.C.
282. Consequently, a moving party seeking to
invalidate a patent at summary judgment must
submit such clear and convincing evidence of
28a
invalidity so that no reasonable jury could find
otherwise. Chrimar Sys., Inc. v. Cisco Sys., Inc.,
318 F.Supp.2d 476, 491 (E.D.Mich. 2004) (quoting
Eli Lilly & Co. v. Barr Labs., 251 F.3d 955, 962
(Fed.Cir. 2001)); see also Beckson Marine, Inc. v.
NFM, Inc., 292 F.3d 718, 725 (Fed.Cir.2002) (holding
that a party seeking to establish particular claims as
invalid must overcome the presumption of validity in
35 U.S.C. 282 by clear and convincing evidence).
However, the challengers burden to show invalidity
may be more easily met when the challenger
produces prior art that is more pertinent than that
considered by the Patent and Trademark Office
during prosecution of the patent. Ryco, Inc. v. Ag-
Bag Corp., 857 F.2d 1418, 1423 (Fed. Cir. 1988);
Connell v. Sears, Roebuck & Co., 722 F.2d 1542,
1549 (Fed. Cir.1983).

Discussion

A design patent protects the nonfunctional
aspects of an ornamental design as seen as a whole
and as shown in the patent. Amini Innovation Corp.
v. Anthony Cal., Inc., 439 F.3d 1365, 1371 (Fed. Cir.
2006). Under 35 U.S.C. 171, [w]hoever invents any
new, original and ornamental design for an article of
manufacture may obtain a patent therefor, subject to
the conditions and requirements of this title. 35
U.S.C. 171. To be patentable, a design must be new,
original, ornamental, and nonobvious. Snhnadig
Corp. v. Gaines Mfg., 494 F.2d 383, 387 (6th Cir.
1974). As noted by the Federal Circuit in Egyptian
Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 670 (Fed.
Cir. 2008), in Gorham Mfg. Co. v. White, 81 U.S. 511
(1871), the Supreme Court established that the
29a
ordinary observer test applies to determine
whether a design patent is infringed. Under this
test: if, in the eye of an ordinary observer, giving
such attention as a purchaser usually gives, two
designs are substantially the same, if the
resemblance is such as to deceive such an observer,
inducing him to purchase one supposing it to be the
other, the first one patented is infringed by the
other. Gorham, 81 U.S. at 528.

In addition, like a utility patent, a design
patent may be held invalid if it is deemed obvious
under Section 103(a) of the Patent Act.
3
Under
Section 103(a), a patent is invalid:

if the differences between the subject
matter sought to be patented and the
prior art are such that the subject
matter as a whole would have been
obvious at the time the invention was
made to a person having ordinary skill
in the art to which said subject matter
pertains.

35 U.S.C. 103(a). Section 102(b) of the Patent Act
characterizes what is considered as prior art.
Section 102(b): A person shall be entitled to a
patent unless- . . . .(b) the invention was patented or
described in a printed publication in this or a foreign

3
See In re Haruna, 249 F.3d 1327, 1335 (Fed. Cir.
2001)(Section 103 applies to design patents in much the same
manner as it applies to utility patents); In re Borden, 90 F.3d
1570, 1574 (Fed. Cir. 1996) (Design patents are subject to the
same conditions on patentability as utility patents, including
the nonobviousness requirement of 35 U.S.C. 103).
30a
country or in public use or on sale in this country,
more than one year prior to the date of the
application for patent in the United States. 35
U.S.C. 102(b). Thus, the critical date for purposes
of the applicability of Section 102(b) is the date
exactly one year prior to the date of application for
the patent. . . . Scaltech, Inc. v. Retec/Tetra, LLC,
269 F.3d 1321, 1327 (Fed. Cir. 2001).

In addressing a claim of obviousness, the
ultimate inquiry is whether a claimed design would
have been obvious to a designer of ordinary skill who
designs articles of the type involved. Apple, Inc. v.
Samsung Electronics Co. Ltd., 678 F.3d 1314, 1329
(Fed. Cir. 2012). Further, the Federal Circuit has
explained that:

[t]o determine whether one of ordinary
skill would have combined teachings of
the prior art to create the same overall
appearance of the same design, the
finder of fact must employ a two-step
process. First, one must find a single
reference, a something in existence, the
design characteristics of which are
basically the same as the claimed
design. Second, 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. . . .[T]he secondary
references may only be used to modify
the primary reference if they are so
related to the primary reference that
the appearance of certain ornamental
31a
features in one would suggest the
application of those features to
another.

Id. (citations omitted). Once a piece of prior art has
been constructed, the determination of invalidity for
obviousness, like the determination of
infringement, requires application of the ordinary
observer test. A patented design is obvious if the
patented design as whole is substantially the same,
or has the same overall visual appearance, as the
prior art. See Intl Seaway Trading Corp. v.
Walgreens Corp., 589 F.3d 1233, 1240 (Fed. Cir.
2009). Obviousness is a legal conclusion based on
four general types of underlying facts which must be
considered by the trier of fact: (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) any objective
indicia of nonobviousness. Graham v. John Deere
Co., 383 U.S. 1 (1966) (the Graham factors).

The 488 Patent

Defendants contend the 488 patent is invalid
for obviousness as a matter of law because the
undisputed evidence shows that three different pet
football jerseys, each qualifying as prior art under 35
U.S.C. 102(b) and not considered by the USPTO
during prosecution of the 488 patent, have basically
the same design characteristics as those claimed in
the patent. (Def. Mem. at 12-15.) Specifically,
defendants point to the V2 and Eagles pet football
jerseys discussed above that Stephen Gould
Corporation and FiG supplied to Hunter prior to
32a
September 9, 2009 (depicted on page 3 of defendants
memorandum), as well as to a pet jersey described in
a printed publication and offered for sale in the
United States at least as early as 2007 by Sporty K9,
Ltd., an Arizona corporation (the Sporty K9" jersey).
(Def. Mem., Ex. C.) Defendants assert that each of
these prior art pet jerseys qualifies as a single
reference having design characteristics that are
basically the same as the design claimed in the
488 patent, thus rendering the patent invalid for
obviousness. Defendants assert the claimed design
and the prior art jerseys have the same design
characteristics for the following reasons.

The V2 pet football jersey developed by
Hunter includes: (1) a V-shaped opening having a
collar portion for the neck of the dog; (2) two
openings/sleeves with cuffs stitched to the body of
the jersey for the front two limbs of the dog; (3) cross
stitching between the sleeves; (4) two side portions
extending from the sleeves to the bottom of the
jersey; (5) the neck, sleeve, and side portions of the
jersey are made from a non-mesh material; and (6)
the body of the jersey is made from a mesh material.
This is similar to the elements of the claimed pet
football jersey which also includes: a V-shaped
collar, two sleeves/openings stitched to the body of
the jersey, two side portions extending to the bottom
of the jersey and utilizing two different materials,
i.e., a mesh material for the body and a non-mesh
material for the neck, sleeves and side portions.
(Def. Mem. at 12.)

The Eagles pet football jersey features:
(1) an opening having a collar portion for the neck of
33a
the pet; (2) two openings/sleeves with cuffs for two
limbs of the pet which are stitched to the body of the
jersey, the stitching extends to the neck portion of
the jersey; (3) cross- stitching between the sleeves;
(4) the neck and sleeve portions of the jersey are
made from a non-mesh material; and (5) the body of
the jersey is made from a mesh material. This is also
similar to the design elements of the claimed jersey,
including an opening with a collar, two
sleeves/openings stitched to the body of the jersey, a
mesh material for the body and a non-mesh material
for the neck and sleeve portions. (Id. at 12-13.)

Finally, the Sporty K9 pet jerseys include:
(1) a V-shaped opening having a collar portion for
the head of the pet; (2) two openings/sleeves with
cuffs for two of the limbs of the pet which are
stitched to the body of the jersey; (3) seams between
the sleeves and the body; (4) two side portions
extending from the sleeves to the bottom of the
jersey; (5) the neck, sleeve, and side portions of the
jersey are made from a non-mesh, polyester
material; and (6) the body of the jersey is made from
a mesh material. (Def. Mem. at 13.) The claimed
jersey features these same elements, including the
V-shaped collar, two sleeves/openings stitched to the
body of the jersey, two side portions extending to the
bottom of the jersey and utilizing two different
materials, i.e., a mesh material for the body and a
non-mesh material for the neck, sleeves and side
portions. (Id. at 13.)

Defendants assert that the only modest
difference between the V2 and Sporty K9 jerseys
and the jersey claimed in the 488 patent is that
34a
surge stitching appears along the sleeves of the
claimed jersey, including a horizontal surge stitch
between the two sleeves on the front of the jersey
and vertical surge stitching on the back of the jersey
extending from the sleeves to the bottom of the
jersey. (Def. Mem. at 14.) However, defendants
assert that the Eagles pet jersey includes nearly
identical surge stitching on the front and back.
Defendants argue that the V2 jersey and Eagles
jersey, as primary and modifying prior art
references, demonstrate the invalidity of the 488
design. In this regard, defendants argue:

[T]aking the V2 jersey as the primary
reference for the sake of argument, the
Eagles jersey is clearly so related as to
suggest the application of surge
stitching to any material seams forming
the body, as is done in the design of the
488 Patent. Taking the Eagles jersey as
the primary reference instead, the V2
jersey is also so related to suggest the
addition of a V-neck and non-mesh side
panels. In any case, the end result is the
same: the design of the 488 Patent is
invalid as obvious.

(Id. at 15.) Furthermore, defendants cite law
supporting the proposition that minor or trivial
differences between a patented design and a prior
art reference that are insignificant from the point of
view of an ordinary observer do not preclude a
finding of invalidity on summary judgment. See id.,
citing Intl Seaway, 589 F.3d at 1243 (The
mandated overall comparison is a comparison taking
35a
into account significant differences between the two
designs, not minor or trivial differences that
necessarily exist between any two designs that are
not exact copies of one another.). Defendants
contend that any differences that exist between the
prior art pet football jerseys and the jersey claimed
in the patent are, at best, minor or trivial and do not
prelude a finding of invalidity.

In sum, defendants contend: the pet football
jersey of the 488 Patent merely combines well
known features of prior art jerseys in a way which
would have been obvious to any designer of ordinary
skill in the field of pet jerseys; thus, the patent is
invalid for obviousness under 35 U.S.C. 103. (Def.
Mem. at 16.)

Plaintiff disputes that defendants have
demonstrated facts necessary to find invalidity
under the Graham factors.

Plaintiff disputes defendants position that
any of the prior art references cited by defendants
constitute a primary reference having an overall
appearance, or design characteristics, that are
basically the same as the claimed design, and
plaintiff disputes defendants position that only
trivial or insignificant differences exist between the
claimed design and the prior art.
4
According to
plaintiff, the prior art jerseys differ from the claimed

4
Plaintiff does not dispute the existence of any of the asserted
prior art pet jerseys or that they qualify as prior art under the
Patent Act. Plaintiff also does not dispute that the jerseys were
not disclosed to the USPTO during prosecution of the 488 and
487 patents.
36a
design because the V2 pet football jersey: (1) does
not have an interlock fabric panel that is present in
the claimed design; (2) lacks ornamental surge
stitching on the front and rear portions that is
present on the claimed design; and (3) has drop
sleeves whereas the claimed jersey has raglan-style
sleeves.

The Eagles pet football jersey: (1) does not use
interlock fabric as present in the claimed design;
(2) does not have a V-neck collar as present in the
claimed design; and (3) does not have ornamental
surge stitching on the rear portion of the jersey as
present in the claimed design.

The Sporty K9 jersey: (1) has a panel that
appears to be of a dazzle (i.e., shiny) fabric;
whereas, the claimed design has an interlock fabric
panel; (2) does not have ornamental surge stitching
on the front and rear of jersey as present in the
claimed design; and (3) has drop rather than
raglan-style sleeves. (Pltf. Opp. at 15-21.)

Plaintiffs position is that the cited prior art
references of record do not create the same overall
visual appearance as the claimed design of the 488
patent for two reasons: (1) [t]he portion of the
ornamental serge stitching on the back of the
football jersey for a dog as shown and described in
the 488 Patent is simply not present in any
reference of record, and (2) the only prior art
references of record that show narrow side panels
disposed between front and back mesh panels are
37a
made of dazzle fabric rather than interlock fabric.
(Pltf. Opp. at 23.)
5


5
In his declaration, Cohen stated the following as to the
differences between the V2 and Eagles jerseys and the V3 pet
jersey on which the 488 Patent was allegedly based:

The material of the V3 Jersey is primarily of a
mesh and interlock fabric. No dazzle fabric,
which was used extensively in the V2 Jersey,
was used in the V3 Jersey at all. The design of
the V3 Jersey includes raglan-style sleeves
beneath which narrow panels of interlock fabric
separating front and rear mesh panels extend to
the bottom of the jersey. In contrast, the design
of the V2 Jersey included drop sleeves beneath
which narrow panels of dazzle fabric separating
front and rear mesh panels extended to the
bottom of the V2 Jersey. And, the design of the
Eagles Jersey included raglan-style sleeves, but
no narrow panels of interlock fabric between
mesh front panels and rear panels.

In addition, according to Cohen,

The design of the V3 Jersey also includes
ornamental serge stitching extending from the
neckline underneath both sleeves, horizontally
across the chest and back, and vertically on the
back only between the narrow interlock fabric
panel and the rear mesh panel. This differs from
the V2 Jersey which did not include any
ornamental serge stitching at all, and the Eagles
Jersey which did not include the vertical serge
stitching on the back only. The ornamental serge
stitching in the V3 Jersey is decorative and is
provided over the stitching that binds together the
respective mesh and interlock fabric panels that
form the V3 Jersey.

(Cohen Dec., 13, 14.)
38a
Plaintiff also argues that defendants have
failed to provide the Court with sufficient evidence
as to the required Graham factors to support
summary judgment. Specifically, plaintiff argues
that defendants have not presented the Court with
any evidence as to the third Graham factor (the level
of ordinary skill in the art) because defendants do
not produce evidence from a designer. In contrast,
plaintiff asserts that it has evidence from a designer,
namely Cohen himself, who states that the 488
patent would not have been obvious to a designer in
view of the prior art jerseys. (Pltf. Opp. at 23, citing
Cohen Dec., 30-34.)

Further, plaintiff contends there is objective
evidence of nonobviousness (the fourth Graham
factor) that defendants do not raise, specifically,
evidence that the patented design has had
commercial success, was copied, and has been
accepted by others (factors that have all been
recognized as indicia of nonobviousness). But to
support its position of nonobviousness, plaintiff
relies primarily on Cohens own statements that
sales of the V3 jersey have been more successful
commercially than sales of the V2 jersey, that
Hunter and CDI copied the V3 jersey, and that MRC
has granted a license under the patent to an entity
not wholly owned by MRC or its principals. (Pltf.
Opp. at 22, citing Cohen Declaration.) Plaintiff
contends nonobviousness is also suggested because,
on October 17, 2011, it filed an application for a
design patent for a hockey jersey for a dog and
identified the V2, the V3, and Eagles pet jerseys as
known prior art. According to plaintiff, the Patent
Examiner issued a Notice of Allowance of a patent
39a
on November 12, 2012. Plaintiff contends this
supports a conclusion that the design shown and
described in the 488 patent would not have been
obvious to one having ordinary skill in the art in
view of the V2 and Eagles jerseys. (Pltf. Opp. at 24.)

The Court, however, finds that defendants
have met their burden on summary judgment of
demonstrating invalidity of the 488 patent on the
basis of obviousness in view of undisputed prior art
under the Graham factors. As noted, the first factor,
the scope and content of the prior art, is not in
dispute and consists of the V2, Eagles, and Sporty
K9 football jerseys identified by defendants.

In addition, defendants position is persuasive
that the combined teachings of the prior art are such
that the subject matter of the design claimed in the
488 patent as a whole would have been obvious at
the time the invention was made to a person having
ordinary skill in the art. For instance, defendants
persuasively argue that the prior art Eagles jersey is
sufficient to constitute a single reference, a
something in existence, the design characteristics of
which are basically the same as the claimed design.
The Eagles jersey is clearly a pet football jersey
having an opening at the collar portion for the head
of the pet, two openings and sleeves stitched to the
body of the jersey on either side for limbs of the dog,
and a body portion on which a football logo is applied
(extending from the top of the jersey to the bottom of
the jersey and covering a portion of the body of the
pet). As Cohen himself states in his declaration, the
Eagles jersey is made primarily of a mesh and
interlock fabric, exactly what is claimed in the
40a
description of the 488 patent. (See Cohen Dec. at
10. 488 Patent, Description.) In addition, the
Eagles jersey exhibits ornamental surge stitching,
which plaintiff emphasizes exists in the claimed
design. The only differences identified by the
plaintiff between the Eagles jersey and the pet
football jersey of the 488 patent relate to the V-neck
collar depicted in the patented design, additional
ornamental surge stitching appearing on the claimed
design (i.e., unlike the Eagles jersey, the claimed
design uses ornamental surge stitched down the rear
portion of the jersey in addition to ornamental serge
stitching at the top of the jersey and in between the
sleeves), and to an interlock fabric panel that
appears on the side portion of the claimed design.

Nonetheless, defendants argument is
persuasive that all of these asserted differences are
either de minimis or are plainly suggested by related
secondary prior art references. Taking the Eagles
jersey as the primary prior art reference, the V2 and
Sporty K9 jerseys are clearly so related to the
primary reference as to suggest the application of
the features of a V-neck collar and the use of non-
mesh or other fabric on the side panel portions.
Thus, one of ordinary skill in the art in the field of
pet jersey design would have likely combined the
teachings of the prior art to create the same overall
appearance of the pet jersey in the claimed design.

Furthermore, the presence of additional
ornamental surge stitching on the back of the pet
jersey (as is shown on the claimed design), and the
positioning of a strip of non-mesh, or interlock
fabric on the side of the claimed design, are not
41a
substantial differences between the claimed design
and the prior art so as to create a patently distinct
design. Rather, these differences between the
claimed design and the prior art are at the most de
minimis changes which would be well within the
skill of an ordinary designer in the art. See In re
Carter, 673 F.3d 1378, 1380 (Fed. Cir. 1982).

Plaintiff has not demonstrated that a genuine
dispute exists on the basis of the third Graham
factor, the level of skill of a designer in the art,
because defendants did not present evidence of the
opinion of an actual designer. As the Federal Circuit
has recognized, the trial judge assesses obviousness
from the position of a fictitious person of ordinary
skill in the art. See in re Nalbandian, 661 F.2d 1214,
1216 (CCPA 1981). While expert testimony may be
used to influence the courts decision, expert opinion
on obviousness is not required. See Peterson Mfg. Co.
v. Central Purchasing, Inc., 740 F.2d 1541, 1547-48
(Fed. Cir. 1984), abrogation on other grounds
recognized by, Beatrice Foods Co. v. New England
Printing and Lithographing Co., 899 F.2d 1171 (Fed.
Cir. 1990). Furthermore, subjective evidence of
obviousness from the point of view of the inventor is
not persuasive evidence of nonobviousness. See, e.g.,
Ryko, 950 F.2d at 718 (test is not subjective
obviousness to the inventor, but is objective
obviousness to the artisan); Celanese Corp. v. BP
Chem. Ltd., 846 F. Supp. 542, 547 (S.D. Tex. 1994)
(evidence of the patents subjective obviousness to
the inventor . . . is direct evidence of nothing.).
Thus, Cohens own opinion that the design claimed
in the 488 patent would not have been obvious to a
designer having ordinary skill in the art in view of
42a
the prior art at the time of the invention, and his
own statements of commercial success, copying, and
licensing of his claimed design, are unpersuasive to
demonstrate a genuine dispute.

Finally, the Court does not consider the Notice
of Allowance issued in connection with the currently
pending application for a design patent for a hockey
jersey for a dog to be indicative of a finding by the
USPTO of nonobviousness of the prior 488 design,
and it is not dispositive of the Graham factors in
connection with the 488 design.

For the reasons stated above, defendants
position is persuasive that the 488 patent merely
combines known features of undisputed and clear
and convincing prior art jerseys in a way which
would have been obvious to a designer of ordinary
skill in the field of pet jerseys. The Courts finds, on
the basis of evidence of the Graham factors before it,
that the 488 patent is directed to an obvious design
in view of the prior art and is invalid as a matter of
law under Section 103(a) of the Patent Act.

Defendants challenge the validity of the 488
patent on the alternative ground that it fails to meet
the requirements of 35 U.S.C. 112. The first
paragraph of Section 112 requires that a patent
contain a written description of the invention, and
of the manner and process of making and using it, in
such full, clear, concise, and exact terms as to enable
any person skilled in the art to which it pertains . . .
to make and use the same. 35 U.S.C. 112(a). The
second paragraph of Section 112 requires the patent
to particularly point[] out and distinctly claim[] the
43a
subject matter which the inventor . . . regards as the
invention. 35 U.S.C. 112(b). These requirements
exist because [i]f the limits of a patent are not
adequately defined, a zone of uncertainty is created
which would discourage invention. Semmler v.
American Honda Co., Inc., 990 F. Supp. 967, 974
(S.D. Ohio 1997).

Defendants argue that the 488 patent does
not meet these requirements because it is silent
regarding the location and appearance of any
interlock fabric even though plaintiff contends
interlock fabric is a key feature of the claimed
design. Defendants argue the patent does not
reasonably apprise those skilled in the art of the
nature of the claimed ornamental design. (Def. Mem.
at 21.) Further, because the patent fails to describe
the location of interlock fabric and its ornamental
appearance, the patent cannot enable one to make
invention as claimed, since the location and
ornamentation of the claimed interlock fabric is
unknown and impossible to ascertain from the
specification. (Id. at 22.)

The Court does not find summary judgment
warranted on this alternative ground. Plaintiff
contends in its opposition brief that a designer
having ordinary skill in the art would readily
appreciate where mesh and interlock fabric is used.
In particular, the areas in the drawings of the patent
that are shown with grid lines indicate that such
areas would be constructed of mesh fabric, and the
panels shown without grid lines would be
constructed of interlock fabric. Plaintiff points to
statements by Cohen to this effect as well as
44a
testimony by Hunters president that the area that
looks like a grid in the patent would be constructed
of mesh. The Court finds that the drawings in the
patent are sufficient to indicate where mesh and
interlock fabric are used in the claimed design such
that one reading the patent could ascertain had to
construct the claimed jersey. At a minimum, there is
at least a genuine issue of material fact as to
whether the patent includes information sufficient
for one having ordinary skill in the art to construct a
football jersey for a dog in accordance with the
claimed design such that summary judgment is not
appropriate under 35 U.S.C. 112. (Pltf. Opp. at 29.)

The 487 Patent

Defendants also contend that the 487 patent
is invalid as a matter of law. They assert that the
design claimed in the 487 patent for a baseball
jersey for a dog is obvious under 35 U.S.C. 103(a)
as well as anticipated under 35 U.S.C. 102(b).
[D]esign patent anticipation requires a showing
that a single prior art reference is identical in all
material respects to the claimed invention. Door-
Master Corp. v. Yorktowne, Inc., 256 F.3d 1308, 1312
(Fed.Cir.2001). The ordinary observer test applies
in determining anticipation. See Int'l Seaway
Trading Corp., 589 F.3d at123740.

Defendants contend that the Sporty K9
baseball jersey qualifies as a something in
existence the design characteristics of which are
basically the same as the claimed design for
purposes of both anticipation and obviousness.
Defendants emphasize that the Sporty K9 baseball
45a
jersey has: (1) a V-shaped opening having a collar
portion for the neck of the pet; (2) two
openings/sleeves with cuffs for two of the limbs of the
pet which are stitched to the body of the jersey; (3) a
banded opening at the bottom of the jersey for the
hind portion of the pet; and (4) four buttons
extending vertically down the center of the front of
the jersey. (See Def. Mem., Ex. C.) Defendants argue
that the claimed pet jersey has all of these identical
elements, including the V-shaped collar, two
sleeves/openings stitched to the body of the jersey, a
banded opening at the bottom of the jersey for the
hind end portion of the pet and four buttons
extending vertically down the center of the front of
the jersey. (See 487 Patent, Figure 2.) While
defendants acknowledge that the Sporty K9 jersey
does not appear to be made of the same exact mesh
material as is shown in the 487 Patent, defendants
assert that this is a minor or trivial difference
such that the design claimed in the 487 patent is
anticipated by the Sporty K9 jersey. (Def. Mem. at
19.)

Alternatively, defendants contend the design
is obvious 35 U.S.C. 103(a) in view of the prior art.
In this regard, they assert that the Sporty K9 jersey
qualifies as a single reference for which the design
characteristics are basically the same as the claimed
design and the only different feature disclosed in
the 487 design, the use of mesh material, was well
known long prior to the time the 487 Patent was
filed. (Id.) Indeed, defendants point out that all of
the football jerseys cited . . . by Defendants (which
also qualify as prior art for the 487 Patent . . . ) are
made of mesh material. Thus, defendants contend
46a
the use of mesh material was suggested by prior art
references so as to render the 487 patent obvious.

Plaintiff contends there are significant
differences between the Sporty K9 baseball jersey
and the design claimed in the 487 patent, asserting
that the Sporty K9 jersey has a different collar
assembly (incorporating a faux t-shirt portion that
the claimed design does not have); the claimed
design uses a mesh fabric that is different from the
polyester fabric of which the Sporty K9 jersey is
made; and that the Sporty K9 jersey is shorter and
more tubular when donned by a dog than the
claimed design. (Pltf. Opp. at 27-28.)

The Court, however, agrees with defendants
that the 487 patent, like the 488 patent, is invalid
as obvious in view of the prior art under the Graham
factors. Even assuming the Sporty K9 pet jersey, as
a single prior art reference, is not identical in all
material respects to the design claimed in the 487
patent in order to find anticipation, defendants
argument is persuasive that the Sporty K9 jersey
constitutes a single prior art reference, a something
in existence, having design characteristics that are
basically the same as the claimed design, and the
differences that exist between the Sporty K9 jersey
are either minor, or are plainly disclosed in
modifying secondary primary art references. For
largely the same reasons discussed above with
respect to the 488 patent, the Court finds the 487
patent likewise invalid for obviousness.

The Sporty K9 jersey is undisputably prior art
and falls within the scope of the 487 patent. With
47a
respect to the second Graham factor, the Sporty K9
jersey has basically the same design characteristics
as the design claimed in the 487 patent from the
perspective of an ordinary observer. The Sporty K9
jersey is a pet baseball jersey having: a V-shaped
collar; two opening for sleeves with cuffs for the two
front limbs of the pet; a banded opening at the
bottom of the jersey for the hind end portion of the
pet; and four buttons extending vertically down the
front of the jersey. All of these features are found in
the jersey claimed in the 487 patent. The differences
identified by the plaintiff between the Sporty K9
jersey and the claimed design, in particular the use
of mesh and a somewhat shorter and more tubular
shape, are minor differences or are well known in
the prior art. As defendants point out, use of mesh in
pet jerseys, as exemplified by the V2 jersey, was well
known in the prior art. The V2 and Eagles pet
jerseys exhibit the same shape as depicted in the
claimed design.

Cohens own subjective views as to whether
his design would have been obvious to a designer of
ordinary skill in the field of pet jerseys, and as to
other secondary considerations of nonobviousness,
are not objective or persuasive and are insufficient to
create a genuine dispute as to nonobviousness under
the third and fourth Graham factors.

As with the 488 patent, the Court finds that
the 487 patent is directed to an obvious design in
view of the prior art. The design claimed in the 487
patent merely combines features of the prior art and
would have been obvious to a designer of ordinary
skill in the field.
48a
Conclusion

For the reasons discussed above, defendants
motion for summary judgment is granted on the
ground that the 488 and 487 patents are invalid
under 35 U.S.C. 103(a). Oral argument is not
necessary and, therefore, plaintiffs motion for oral
argument is denied.

IT IS SO ORDERED.

/s/ Patricia A. Gaughan
PATRICIA A. GAUGHAN
United States District Judge

Dated: 1/31/13
49a
[ENTERED MAY 16, 2013]

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF OHIO
EASTERN DIVISION

MRC Innovations, Inc., )
)
Plaintiff, )
)
vs. )
)
Hunter MFG., LLP, et al., )
)
Defendants. )

CASE NO. 1: 12 CV 684

JUDGE PATRICIA A. GAUGHAN

Judgment Entry

In light of the Courts granting of Defendants
Motion for the Voluntary Dismissal of its
Counterclaim for Inequitable Conduct, and the
Courts Memorandum of Opinion and Order dated
January 31, 2013 resolving all of plaintiffs claims in
favor of defendants and against plaintiff, judgment
is now hereby entered in this matter in favor of
defendants and against plaintiff.

50a
IT IS SO ORDERED.

/s/ Patricia A. Gaughan
PATRICIA A. GAUGHAN
United States District Judge

Dated: 5/16/13