January 13, 2015
By: Francis J. Ciaramella
Section 103(a) denies patentability “if the difference 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.”
Recently, in the case of MRC Innovations, Inc. v. Hunter Mfg., LLP, 747 F.3d 1326, 110 U.S.P.Q.2d 1235 (Fed. Cir. 2014), the Federal Circuit rejected a patent for Football jerseys made for pets as obvious. Mark Cohen licensed an original patent for pet jerseys to Hunter Manufacturing. Hunter then sold the Football-inspired pet jerseys to third party retailers via licensing agreements with organizations like the National Football League.
Subsequently, Cohen redesigned his pet jersey into a new form. Not wanting to do business with Hunter, due to lack of prompt payments, Cohen entered into business with MRC Innovations. Cohen then assigned his rights in both the original patent as well as the redesigned patent.
Hunter, nevertheless, contracted with another manufacturing company to produce the redesigned pet jerseys, and again sold them to third party retailers with football teams names and logos emblazoned on the jerseys.
MRC sued Hunter for patent infringement. The Federal Court held that the redesigned pet jersey patent had basically the same overall visual impression as the prior art (i.e. original pet jersey and its patent) having similar shape, fabric, and stitching. The Court further found that a person of ordinary skill would have combined the teachings of the prior pet jersey patent to create the same overall visual appearance as in the claimed redesigned pet jersey patent.
The Court used a two-part test to determine whether the redesign patent failed for obviousness. First, whether there was prior art, and second, whether there were secondary references that could be used to modify the original to create the same basic visual appearance as was claimed in the redesigned patent.
In affirming the trial court, the Federal Circuit held that the original pet jersey and its patent were prior art, and that secondary references present in the marketplace, made the redesign of the original pet jersey patent obvious. Accordingly, the redesigned pet jersey patent was invalidated for being obvious.
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