Competing Evidence Regarding Whether Reference Qualifies as Primary Reference Precludes Summary Judgment of Obviousness of a Design Patent

SPIGEN KOREA CO., LTD. v. ULTRAPROOF, INC.

Before Newman, Lourie, and Reyna. Appeal from the Central District of California.

Summary: Summary judgment of obviousness is improper for a design patent if there is a genuine dispute as to whether a prior art design is “basically the same” as the claimed design.

Spigen sued Ultraproof for infringement of its design patents. Ultraproof filed a motion for summary judgment of invalidity, arguing that the design patents were obvious in view of primary and secondary references. After hearing competing expert testimony regarding whether a reference qualified as a primary reference because it was “basically the same” as the asserted design patents, the district court granted summary judgment of invalidity and held that the design patents were obvious.

The Federal Circuit reversed the district court’s decision. The Federal Circuit noted that although a trial court judge may determine almost instinctively whether two designs create basically the same visual impression, the trial court must deny summary judgment of obviousness if there is a genuine dispute of material fact as to whether the designs were basically the same. The Federal Circuit concluded that there was a genuine dispute of material fact because a reasonable factfinder could find that the relevant prior art design did not qualify as a primary reference in view of the competing evidence of record. Accordingly, the Federal Circuit reversed the district court’s grant of summary judgment and remanded for further proceedings.

Editor: Paul Stewart