Identifying Obviousness in Design Patent

Mark Cohen, the named inventor of two patents (baseball and football) for sport jersey designs for dogs. Hunter, a retailer that had a previous professional relationship with Cohen has created jerseys that are similar to designs by Cohen. See image below:

Cohen's company, MRC, has sued Hunter for infringement. The case went through the Federal Circuit's two-step test. 1) a primary reference of something that already exists that appears basically the same. 2) other references that are related to the primary reference, with same overall visual appearance.

The references that the court chose was the Sporty K9 jersey and the V2 jersey. The court and MRC disagreed on the difference between the primary reference and the secondary reference. In the end the court ruled the Cohen's patent themselves are not valid due to prior art. MRC said that court should have leaned on revealing why a skilled artisan would take the extra step to achieve the secondary reference from the primary. Furthermore, MRC argues that the court should have looked at the commercial success and acceptance of the new product showing that they made an extra step towards innovation that has been more well received that previous products.

To me this argument is blurring the line too much. I do agree that at times a success of a product could be attributed to the fact that it is novel and innovative, going beyond the solutions that are currently available. Yet, at the same time it may not be nonobvious therefore making it not patentable. What's even more important is that success of products could be due to the big brand name of the company, the timing of the release, and the marketing tactics that was utilized. Therefore the court made the right decision and the argument made by MRC is weak.



http://patentlyo.com/patent/2014/04/design-nonobviousness-jurisprudence.html