Petitioner MRC Innovations, Inc. on September 5, 2014 filed a Reply Brief regarding its Petition for Certiorari in the Supreme Court in the MRC Innovations, Inc. v. Hunter Mfg., LLP design patent case (No. 14-5). MRC’s Reply Brief was in response to the Respondent Hunter’s Brief in Opposition filed on August 27, 2014.
The main issue in this case is whether the Supreme Court’s KSR ruling for determining the obviousness of a utility patent should apply to design patents, and whether the Federal Circuit’s “so-related” test applied in its earlier decision comports with KSR.
The rules of the Supreme Court do not allow for the Respondent to file a supplemental brief, except to call the Court’s attention to “new cases, new legislation, or other intervening matter not available at the time of the party’s last filing”. In view of that, we will provide our comments regarding MRC’s three arguments presented in its Reply Brief.
- MRC first argues that rejection of the “so related” test does not require reversal of 60 years of precedent. The said that the Federal Circuit’s MRC v. Hunter decision, 747 F .3d 1326 (Fed Cir. 2014), was the first one in which that court said “that the ‘so related’ test ‘subsumes’ the requirement that a court provide an explicit analysis to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.
COMMENT: No one, neither the Federal Circuit, nor Hunter, has said that the “so related” test “subsumes” the explicit analysis “requirement” of KSR. Moreover, KSR did not require an explicit analysis; the Supreme Court said that an “explicit analysis should” be made to facilitate review of the decision on appeal.
MRC also makes the following assertion: “MRC has not been able to find any other case in which the Federal Circuit has affirmatively stated that the mere relatedness of prior art articles eliminates the requirement of the court to explain why a person having ordinary skill in the art would have found it obvious to select design elements in such related articles and combine them in the fashion claimed.”
COMMENT: Throughout their Petition and Reply Brief, MRC has conveniently overlooked a critical element of the “so related” test. That is, as stated many times by the Federal Circuit, the teachings of prior art references in design cases may be combined only when the designs are related in appearance. If two designs are “merely related”, e.g., two coffee cups, one cannot combine their features in an obviousness analysis merely because they are coffee cups. They need to look alike. As found by the Federal Circuit in the instant case: “the strikingly similar in appearance across all three jerseys would have motivated a skilled designer to combine features from one with features of another”, 747 F.3d 1326 at 1334-35 (emphasis added).
In response to MRC’s assertion that it was unable to find any other case in which the Federal Circuit said that “mere relatedness of prior art articles eliminates the requirement of the court to explain why [ it would have been obvious to combine their features] in the fashion claimed”, there is no other case, because the Federal Circuit would never make such an assertion, and did not do so in its MRC v. Hunter decision. This is what the Federal Circuit actually said:
“… it is the mere similarity in appearance that itself provides the suggestion that one should apply certain features to another design.” MRC at 1334.
Note the critical use of the words “similarity in appearance”; again, it is not “mere relatedness of prior art articles” that provides a basis to combine, as repeatedly misstated by MRC, it is similarity in appearance- a big difference.
- MRC next argues that the “so related” test does not comport with 103 and KSR. They chide Respondent’s brief that says: “In the context of designs, the inferences and creative steps courts can take into account are ‘subsumed’ in the analysis that results in a court’s determination of whether or not the visual features in prior art references are ‘so related’ that they may be combined”. MRC says that the foregoing statement “makes no sense” (Reply Brief, p.9).
COMMENT: After its “makes no sense” statement, MRC immediately displays, once again, its fundemental misunderstanding of the “so related” test by ignoring the need for the prior art design to be so related in appearance to be combinable:
“The ‘so related’ test does not involve any analysis of ‘inferences and creative steps.’ It merely requires that the articles in the applied prior art be related to the article claimed in the patent at issue. If the articles are related (e.g., they are both pet jerseys), then the ‘so related’ test allows the court to select and combine elements from such articles in any manner without explaining any reason or basis for doing so.” (MRC Reply Brief at 9).
- Finally, MRC argues in its Reply Brief that the “so related: test will have “far-reaching negative effects”. The only negative effect MRC suggests is a purportedly higher risk of invalidity, giving as the only example its own U.S. Pat. No. D692,624 for a “hockey jersey”, saying that all prior art in the present case was cited in the hockey jersey case and the USPTO issued it anyways, suggesting that the PTO’s finding of non-obviousness in MRC v. Hunter now puts its ‘624 patent at risk.
COMMENT: To borrow a phrase, this argument makes no sense. The ‘624 patent was itself issued by the USPTO under the “so-related” test. In other words, the USPTO’s actual application of the “so-related” test had no negative effect on the patentability of the ‘624 claimed design. Having issued under the tried and true “so-related” test, the ‘624 patent is presumed valid over all prior art cited during prosecution. The reverse of MRC’s risk analysis is more likely to be true: doing away with the “so-related” test because of a purported conflict with KSR would raise a cloud over the validity of all design patents issued during the last 60 years.