U.S. Supreme Court Considers Design Patent Case



The U.S. Supreme Court has not decided a substantive design patent case in well over 100 years. That may change.

On July 1, 2014, MRC Innovations, Inc. filed a Petition for Writ of Certiorari asking the U.S. Supreme Court to review a decision of the Court of Appeals for the Federal Circuit that earlier this year upheld summary judgement that two MRC design patents were invalid as obvious over the prior art (MRC Innovations, Inc. v. Hunter Mfg, LLP, 747 F. 3d 1326 (Fed. Cir. 2014).

Essentially, MRC faults the Federal Circuit for not having applied KSR v. Teleflex, 550 U.S. 398 (2007) to its analysis of design patent obviousness. MRC couched it’s “Question Presented” for review as follows:

“The question presented is whether the principle set forth by this Court in KSR Int’l vs. 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”

On August 27, 2014, Hunter, as Respondent, filed a Brief in Opposition to MRC’s Petition. Hunter stated its “Question Presented” for review as follows:

“Whether Petitioner presented compelling reasons for this Court to grant certiorari and review a well-reasoned decision of the U.S. Court of Appeals for the Federal Circuit (“Court of Appeals”) affirming the district court’s summary judgment finding two design patents invalid through an established obviousness framework that is consonant with KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 415 (2007) such that the Court of Appeals decision does not implicate an important federal question in a way that conflicts with relevant decisions of this Court or the Court of Appeals.

Respondent framed the dispute in its Introduction section of the brief as follows:

“Petitioner contends that more than sixty years of design patent jurisprudence on the issue of obviousness and the decisions below conflict with this Court’s holding in KSR. Petitioner complains that the longstanding “so related” test for combining known prior art designs to render a design patent obvious is “too loose” and therefore somehow at offs with the flexible approach required by KSR in connection with combining known elements in analyzing the obviousness of a utility patent. Respondent submits that there is no conflict at all- finding and articulating that two designs are “so related” based on their overall appearance comports with KSR, and is entirely consistent with this Court’s and lower courts’ design patent jurisprudence.

The Supreme Court grants certiorari review of only a handful of cases a year, a very small percentage of the thousands of Petitions that are filed. A decision on the Petition is expected to be handed down in the coming term.

Perry Saidman and George Raynal of Saidman DesignLaw Group penned the Respondent’s Brief, along with Andrew Dorsio and Trevor Graves of King & Schickli in Lousville, KY.