Monday, April 20, 2020

CAFC reverses summary judgment ruling of CD California in Spigen case

The outcome was reversal of CD California:

Spigen Korea Co., Ltd., appeals the decision of the
United States District Court for the Central District of California
granting summary judgment of invalidity of three
asserted design patents. Ultraproof, Inc., cross-appeals the
district court’s denial of its motion for attorneys’ fees. Because the
district court improperly resolved a genuine dispute of material fact at summary judgment, we reverse the
district court’s decision and remand for further proceedings. We dismiss the cross-appeal as moot.

As to the factual dispute:

Spigen raises several grounds for reversing the district
court’s grant of summary judgment. First, Spigen argues
that there is a material factual dispute over whether the
’218 patent is a proper primary reference that precludes
summary judgment. We agree.


Here, the district court found that despite “slight differences,”
the ’218 patent undisputedly was “basically the
same” as the Spigen Design Patents, and, thus, a proper
primary reference. J.A. 27. This determination was error
because, based on the competing evidence before the district court, a reasonable factfinder could find otherwise.

A “primary reference” is “a single reference that creates
‘basically the same’ visual impression” as the claimed design.
High Point Design, 730 F.3d at 1312
(quoting Durling, 101 F.3d at 103). To be “basically the same,” the
designs at issue cannot have “substantial differences in
the[ir] overall visual appearance[s].” Apple, 678 F.3d at
1330. Additionally, if “major modifications” would be required to make a design look like the claimed design, then
the two designs are not “basically the same.” In re Harvey,
12 F.3d 1061, 1063 (Fed. Cir. 1993). “[S]light differences”
in design, however, do not necessarily preclude a “basically
the same” finding. MRC Innovations, 747 F.3d at 1333.


In the light of the competing evidence in the record, a
reasonable factfinder could conclude that the ’218 patent
and the Spigen Design Patents have substantial differences, and, thus, are not basically the same. See Fed. R.
Civ. P. 56(c). Accordingly, the district court’s grant of summary judgment of obviousness was in error and must be
reversed. See Durling, 101 F.3d at 105 (“Without . . . a primary reference, it is improper to invalidate a design patent
on grounds of obviousness.”);


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