No.

14-5

THE LEX GROUP
DC
1825 K Street, N.W. Suite 103 Washington, D.C. 20006
(202) 955-0001 (800) 856-4419 Fax: (202) 955-0022 www.thelexgroup.com

In The
Supreme Court of the United States

-------------------------- ---------------------------

MRC INNOVATIONS, INC.,
Petitioner,
v.

HUNTER MFG., LLP, and
CDI INTERNATIONAL, INC.,
Respondents.

-------------------------- --------------------------

ON PETITION FOR WRIT OF CERTIORARI TO
THE UNITED STATES COURT OF APPEALS
FOR THE FEDERAL CIRCUIT
-------------------------- --------------------------

BRIEF IN OPPOSITION
-------------------------- --------------------------










Perry J. Saidman
Counsel of Record
SAIDMAN DESIGNLAW GROUP, LLC
8601 Georgia Avenue, Suite 603
Silver Spring, Maryland 20910
(301) 585-8601
perry.saidman@designlawgroup.com

Edward D. Manzo Andrew D. Dorisio
Mark J. Murphy Trevor T. Graves
HUSCH BLACKWELL LLP KING & SCHICKLI, PLLC
120 South Riverside Plaza, Suite 2200 247 N. Broadway
Chicago, Illinois 60606 Lexington, Kentucky 40507
(312) 655-1500 (859) 252-0889
edward.manzo@huschblackwell.com andrew@iplaw1.net
mark.murphy@huschblackwell.com trevor@iplaw1.net


Counsel for Respondents Dated: August 27, 2014
i
QUESTION PRESENTED

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 courts summary judgment finding two
design patents invalid through an established
obviousness framework that is consonant with KSR
Intl 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.


ii
RULE 29.6 STATEMENT

Respondents have no parent corporations and
no publicly held company owns 10% or more of its
stock.
iii
TABLE OF CONTENTS

Page

QUESTION PRESENTED .......................................... i

RULE 29.6 STATEMENT .......................................... ii

TABLE OF CONTENTS ............................................ iii

TABLE OF AUTHORITIES ...................................... iv

INTRODUCTION ....................................................... 1

STATEMENT OF THE CASE ................................... 4

REASONS FOR DENYING THE PETITION ........... 8

1. Petitioner Glosses Over the Fact
that Design Patents are
Fundamentally Different than
Utility Patents ....................................... 8

2. Based on Similarity in Appearance,
the So Related Standard
Comports with the Visual Nature
of Designs and the Flexible
Approach Advanced by KSR ................13

3. The Far-Reaching Negative
Effects of Denying Review are
Illusory ..................................................20

CONCLUSION ......................................................... 21
iv
TABLE OF AUTHORITIES

Page(s)

CASES

Apple, Inc. v. Samsung Elecs. Co.,
678 F.3d 1314 (Fed. Cir. 2012) ...................... 11

Dobson v. Dornan,
118 U.S. 10 (1886) ............................................ 9

Durling v. Spectrum Furniture Co.,
101 F.3d 100 (Fed. Cir. 1996) ........................ 11

Egyptian Goddess, Inc. v. Swisa, Inc.,
543 F.3d 665 (Fed. Cir. 2008) .................... 9, 19

High Point Design LLC v. Buyers Direct, Inc.,
730 F.3d 1301 (Fed. Cir. 2013) ...................... 11

In re Borden,
90 F.3d 1570 (Fed. Cir. 1996) .................. 10, 18

In re Glavas,
230 F.2d 447 (C.C.P.A. 1956) ...... 11, 12, 18, 20

In re Harvey,
12 F.3d 1061 (Fed. Cir. 1993) ........................ 11

In re Kahn,
441 F.3d 977 (Fed. Cir. 2006) .................. 15, 16

In re Rosen,
673 F.2d 388 (C.C.P.A. 1982) .................. 10, 12
v
KSR Intl Co. v. Teleflex, Inc.,
550 U.S. 398 (2007) ................................ passim

Titan Tire Corp. v. Case New Holland, Inc.,
566 F.3d 1372 (Fed. Cir. 2009) ........................ 2

MRC Innovations, Inc. v. Hunter MFG, LLP,
921 F. Supp. 2d 800
(N.D. Ohio 2013) .............................. 3, 7, 17, 19

MRC Innovations, Inc. v. Hunter MFG, LLP,
747 F.3d 1326 (Fed. Cir. 2014) .................. 8, 13

STATUTES

35 U.S.C. 101 ........................................................ 1, 8

35 U.S.C. 103 .................................................... 10, 20

35 U.S.C. 103(a) ....................................................... 7

35 U.S.C. 171 ........................................................ 1, 8

RULE

Sup Ct. R. 10 ............................................................... 1

REGULATION

37 C.F.R. 1.153 ......................................................... 9

vi
OTHER AUTHORITIES

Prof. Janice M. Mueller and Daniel Brean,
Overcoming the Impossible Issue of
Nonobviousness in Design Patents, Legal
Studies Research Paper Series, Working Paper
No. 2009-30, University of Pittsburgh School of
Law, November, 2009 .................................................. 8

Manual of Patent Examining Procedure .................. 21
1
INTRODUCTION

Petitioner presents no compelling reasons
for granting its Petition for a Writ of Certiorari
(Petition). See Sup Ct. R. 10. The decisions below
apply a longstanding design patent obviousness test
that accords with this Courts decision in KSR Intl
Co. v. Teleflex, Inc., 550 U.S. 398 (2007). Petitioner
is mistaken to argue otherwise, and is mistaken that
review is necessary to ameliorate far-reaching
negative effects, which Petitioner fails to
substantiate. Therefore, the Petition should be
denied.

Petitioner contends that more than sixty years
of design patent jurisprudence on the issue of
obviousness and the decisions below conflict with
this Courts 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 odds
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
Courts and lower courts design patent
jurisprudence.

KSR involved a utility patent (governed by 35
U.S.C. 101), which is fundamentally different than
a design patent (governed by 35 U.S.C. 171),
which is involved in the present case. KSR expressly
2
rejected any rigidly applied standard to the analysis
of obviousness, such as the teaching, suggestion, or
motivation, or TSM, test that had become prevalent
in utility patent obviousness analysis. KSR at 415,
418-421. This Court recognized the need to remain
flexible in the obviousness analysis and consider
other factors, such as whether market forces might
prompt a skilled artisan to vary a prior art approach
in a manner that would fail to create a patentable
improvement. Id. at 417. This Court particularly
emphasized the need for caution in granting a
patent based on the combination of elements found
in the prior art. Id. at 415. The overly stringent
obviousness analysis of utility patents that gave rise
to KSR does not occur in the design patent
obviousness framework, which is based not on a
textual analysis but a visual comparison.

Assuming the intent of KSR applies to the
analysis of obviousness of a design patent (this Court
made no explicit reference to design patents in
KSR)
1
, its expansive and flexible approach is already
imbued in the design patent standard for combining
two references and was in fact followed here by the
lower courts, which thoroughly discussed and

1
The Court of Appeals has cited KSR in just one design patent
decision, saying that this Court did not necessarily intend to
exclude design patents from the reach of KSR. Titan Tire
Corp. v. Case New Holland, Inc., 566 F.3d 1372, 1384 (Fed. Cir.
2009). The application of KSR to design patents has not been
more explicitly considered because it hasnt been necessary
the design patent so related test for combining secondary
references comports with KSRs mandate of a flexible approach.
KSR addressed an overly rigid obviousness framework that was
being applied in utility patents which has not been the case
with design patents.
3
ultimately found that the prior art pet jersey designs
at issue are so related in visual appearance to
warrant their combination. Indeed, it cannot be
disputed that the district court expressly articulated
its reasoning, observing and characterizing the
designs, then concluding that because the prior art
designs at issue are so related to one another in
appearance that it is not a matter of extraordinary
skill to combine their features. See MRC
Innovations, Inc. v. Hunter MFG, LLP, 921 F. Supp.
2d 800, 809 (N.D. Ohio 2013). Accordingly, the lower
court fully complied with the spirit of KSR by
providing an articulation supporting the legal
conclusion of obviousness.

Dissatisfied that its design patents stand
invalid on prevailing law, Petitioner seeks to lower
the standards for patentability. This Court should
decline Petitioners suggestion to harken back to a
time when the failure to say some magic words or
otherwise meet some rigid standard too easily
precluded obviousness. The flexibility promoted by
KSR does not allow this, and there is no reason for
this Court to inject a rigid analysis into the
obviousness framework for design patents, which,
although fundamentally different than utility
patents, are governed by the same statutory
requirements for obviousness. The threat of some
unspecific future harm that may result from more
design patents claiming combinations of known
elements being invalidated as obvious is likewise not
a reason for upending sixty years of precedent and
the resultant settled expectations of the design
patent community.
4
For the foregoing reasons, review by this
Court is both unnecessary and unwarranted in view
of the carefully considered, well-reasoned decisions
rendered in this matter, which are consistent with
all applicable precedent. As the Petitioner has
completely failed to carry its burden of
demonstrating that there are any compelling reasons
to grant the Petition, it should be denied.

STATEMENT OF THE CASE

Respondent Hunter Mfg., LLP (Hunter) is a
retailer of licensed sports consumer products, and
has sold pet jerseys since at least as early as 2006,
typically in connection with licensed material such
as NFL or MLB logos.

Petitioner MRC Innovations, Inc. (MRC) is
the owner by assignment of both patents in suit.
The 488 patent claims an ornamental design for a
football jersey for a dog, while the 487 patent does
the same for a baseball jersey.

Mark Cohen is the named inventor of both
patents; he is the principal shareholder of MRC and
assigned his rights in both patents to that company.
Prior to the issuance of the patents in suit, Hunter
purchased pet jerseys for dogs from Mark Cohen
through various companies with which he was
affiliated. Among others, Cohen supplied Hunter
with a V2 football jersey and a green pet jersey
bearing a Philadelphia Eagles logo, which Hunter
then sold through third-party retailers. The prior
art V2 and Eagles jerseys are depicted below next to
the 488 patent:
5

Cohen asserts that in 2009 he designed
another pet jersey, known as the V3 jersey, which
would later become the subject of the 488 patent.
Hunter began purchasing the V3 jersey from one of
Cohens affiliated companies. Later Cohen filed a
patent application for both the V3 jersey and the
baseball equivalent that would later become the
subject of the 487 patent. In late 2010, the business
relationship between Cohen and Hunter ended.
Hunter then sought proposals from other companies
488 Patent V2 Jersey Eagles Jersey




6
to manufacture and supply it with pet jerseys like
the V3. Ultimately, Hunter contracted with another
supplier, Co-Respondent CDI, to supply Hunter with
pet jerseys.

Both patents-in-suit eventually issued on
March 15, 2011. MRC filed suit against both Hunter
and CDI for willful infringement of both patents.

Regarding the 487 patent, Hunter through
discovery identified a prior art pet baseball jersey
known as the Sporty K9 baseball jersey.

487 Patent Sporty K9 Baseball
Jersey


7



The district court granted summary judgment
in favor of Hunter and CDI on the grounds that both
patents are invalid as obvious under 35 U.S.C.
103(a) based on the prior art V2, Eagles and
Sporty K9 pet football jerseys. MRC Innovations at
809.

The district court issued a well-reasoned
opinion holding the Eagles and V2 jerseys to be
basically the same as the design claimed in the
488 Patent. The district court also agreed that the
V2 and Eagles jerseys (which are both pet football
jerseys just like the article claimed in the 488
Patent), were so related in appearance as to
suggest the application of the ornamental features of
one to the other. The 487 Patent was also held
invalid based on the Sporty K9 baseball jersey, due
to its striking similarities and despite the existence
of unremarkable differences. The Court of Appeals
then affirmed the entry of summary judgment in all
8
respects. MRC Innovations, Inc. v. Hunter MFG,
LLP, 747 F.3d 1326 (Fed. Cir. 2014).

REASONS TO DENY THE PETITION

1. Petitioner Glosses Over the Fact that
Design Patents are Fundamentally
Different than Utility Patents

A design patent is granted for any new,
original and ornamental design of an article of
manufacture, 35 U.S.C. 171, while a utility patent
is granted for any new and useful process, machine,
manufacture, or composition of matter, 35 U.S.C.
101. A design patent protects the appearance of a
product without regard to how it works, and a utility
patent protects how a product works or functions
without regard to its appearance.

Thus, the subject matter of a design patent
the appearance of a product is fundamentally
different than a utility patent the way a product
works or functions.
2
A design patent is bereft of a

2
Indeed, commentators have questioned whether KSR, directed
to mechanical, utility patent inventions, would be appropriate
to apply to determining design patent obviousness. See, e.g.,
Prof. Janice M. Mueller and Daniel Brean, Overcoming the
Impossible Issue of Nonobviousness in Design Patents, Legal
Studies Research Paper Series, Working Paper No. 2009-30,
University of Pittsburgh School of Law, November, 2009
(Courts should be cautious in automatically applying the
specific holdings of KSR to designs. Most of the KSR Courts
discussion is completely irrelevant to what design patents
protect the ornamental appearance of an article of
manufacture, considered as a whole, not as a combination of its
individual features or the manner by which the articles design
was achieved.)
9
detailed verbal description of the claimed design,
while a utility patent specification is largely, if not
exclusively, comprised of written description. A
design patent consists almost entirely of drawings
showing how the product looks; a utility patent
includes a detailed description of how the product
functions and the metes and bounds of its claims are
interpreted in view of the detailed description of how
the invention works.

On the other hand, a design patent is
permitted only a single claim, which is required to be
in a standard format, to wit: The ornamental
design for [the article which embodies the design],
as shown and described. 37 C.F.R. 1.153. The
referenced description is either a perfunctory
description of the figures (e.g., FIG. 1 is a
perspective view; FIG. 2 is a side view; and the like)
or is very limited. Thus, the metes and bounds of a
design patent claim are defined by the drawings. It
is widely recognized that design patent drawings
provide a much better representation of a design
than words could possibly express.
3

3
In Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 679
(Fed. Cir. 2008) the Court of Appeals noted: As the Supreme
Court has recognized, a design is better represented by an
illustration than it could be by any description and a
description would probably not be intelligible without the
illustration. Dobson v. Dornan, 118 U.S. 10, 14 (1886).
10
Due to this fundamental difference in
patentable subject matter, and even though [d]esign
patents are subject to the same conditions on
patentability as utility patents, including the
nonobviousness requirement . . . . In re Borden, 90
F.3d 1570, 1574 (Fed. Cir. 1996), of necessity the
obviousness of a design patent and a utility patent
are analyzed within different frameworks.

Accordingly, for design patents, obviousness
analysis must focus of what the designs in question
look like. The jurisprudence in determining when
the appearance of a claimed design is obvious in
view of the prior art is well established.
Determining design patent obviousness rightly has a
framework tailored to the question of whether the
appearance of a product would have been obvious to
a person of ordinary skill, i.e., an ordinary designer,
within the meaning of 35 U.S.C. 103. Following is
a brief summary of that case law.

When assessing the potential obviousness of a
design, and before combining prior art references,
the finder of fact must first find a single primary
reference, a something in existence, the design
characteristics of which are basically the same as the
claimed design, In re Rosen, 673 F.2d 388 (C.C.P.A.
1982). Without such a primary reference, it is
improper to invalidate a design patent on grounds of
obviousness, Durling v. Spectrum Furniture Co., 101
F.3d 100, 103-04 (Fed. Cir. 1996).

11
Once a proper primary reference is found,
secondary references may be used to modify the
primary reference to create a design that has the
same overall visual appearance as the patented
design, provided that the primary and secondary
references are so related that the appearance of
certain ornamental features in one would suggest
the application of those features to the other. In re
Glavas, 230 F.2d 447, 450 (C.C.P.A. 1956) (emphasis
added). See also Apple, Inc. v. Samsung Elecs. Co.,
678 F.3d 1314, 1329 (Fed. Cir. 2012); High Point
Design LLC v. Buyers Direct, Inc., 730 F.3d
1301,1311 (Fed. Cir. 2013). In this context, so
related means related in visual appearances, not in
design concepts, In re Harvey, 12 F.3d 1061, 1064
(Fed. Cir. 1993).

The so-related test central to this case was
first enunciated in Glavas, supra, which involved a
claimed design for a swimming float. The prior art
included an earlier design for a float (the primary
reference), and also the design of disparate articles
such as bottles, soap and razor blade sharpeners (the
secondary references). Examining the issue of
whether such non-float secondary references could
be relevant to a determination of obviousness, the
court recognized that the nature of ornamental
designs is different from functional inventions:

A design, from the standpoint of
patentability, has no utility other than
its ornamental appearance, and the

12
problem of combining references is
therefore one of the combining
appearances rather than uses. The
principle of non-analogous arts,
therefore, cannot be applied to design
cases in exactly the same manner as
to mechanical cases. The question in
design cases is not whether the
references sought to be combined are
in analogous arts in the mechanical
sense, but whether they are so related
that the appearance of certain
ornamental features in one would
suggest the application of those
features to the other. Id.

This so related test in Glavas led to a finding
that the [non-float] articles and their shapes are of
such a nature that they would not, in our opinion,
suggest the modification to the appearance of a
traditional float. Id.

Later, Rosen, while reiterating the holding of
Glavas, added a requirement that before any
combination of the prior art can occur, there must
be a reference, a something in existence, the design
characteristics of which are basically the same as the
claimed design in order to support a holding of
obviousness. Rosen, supra at 391. This additional
requirement of identifying a primary reference
prevents myriad features from unrelated articles
being used to create a similar design from whole
cloth, and applies whether the design patent
obviousness question relies on one or many
references. It guards against arbitrary or
13
unwarranted holdings of design patent obviousness,
and also helps a reviewing court establish the
propriety of a lower courts finding of design patent
obviousness.

The decisions of the lower courts in this case
adhered to this established framework. Specifically,
the district court found a single reference, a
something in existence, the design characteristics of
which are basically the same as the claimed design
(or stated another way, a primary reference for the
pet jerseys illustrated in the 487 and 488 Patents).
For the 488 Patent, it also found a secondary prior
art design so related to suggest the application of its
visual features to those of the primary reference. As
the Court of Appeals below expressly noted in
affirming the finding of obviousness, the secondary
references that the district court relied on were not
furniture, or drapes, or dresses, or even human
football jerseys; they were football jerseys designed
to be worn by dogs just the same as the claimed
jersey in the 488 Patent. MRC Innovations, 747
F.3d at 1332. It cannot be disputed that the analysis
of the situation was made explicit, with the lower
court explaining in detail why the patents at issue
were invalid as obvious in view of the prior art.

2. Based on Similarity in Appearance, the
So Related Standard Comports with
the Visual Nature of Designs and the
Flexible Approach Advanced by KSR

The Petitioners request for review is based on
a single, flawed premise that the Court of Appeals
framework for design patent obviousness analysis is
14
inconsistent with KSR. Petitioner argues that the
so related test for combining prior art designs is
too loose (Petitioner brief at 19-20), and does not
sufficiently articulate a rational basis for selecting
and combining features found in prior art design
references.

Respondent submits that the so related test
provides exactly the explicit rational basis embraced
by KSR, the overall thrust of which favors flexibility
in obviousness analysis, rather than require a rigid
detailed explanation. Petitioner calls for a degree of
explanation for combining references that was
rejected in KSR.

Petitioner repeatedly states that KSR requires
an explicit analysis regarding whether there was an
apparent reason to combine the known elements in
the fashion claimed by the patent. Petitioner alleges
that the Court of Appeals longstanding so related
test eliminates the requirement for a reason to
combine references and allows courts to presume
obviousness where elements of a claimed design are
present in prior art references that are merely
related.

Petitioners arguments miss KSRs mark to
ensure that obviousness analysis is not confined by
a formalistic conception. KSR at 402.

To facilitate review on appeal, KSR does
support an explicit statement of an apparent reason
to combine known elements:

15
Often, it will be necessary for a court
to look to interrelated teachings of
multiple patents; the effects of
demands known to the design
community or present in the
marketplace; and the background
knowledge possessed by a person
having ordinary skill in the art, all in
order to determine whether there was
an apparent reason to combine the
known elements in the fashion claimed
by the patent at issue. To facilitate
review, this analysis should be made
explicit. See In re Kahn, 441 F.3d 977,
988 (Fed. Cir. 2006) ([R]ejections on
obviousness grounds cannot be
sustained by mere conclusory
statements; instead, there must be
some articulated reasoning with some
rational underpinning to support the
legal conclusion of obviousness). As
our precedents make clear, however,
the analysis need not seek out precise
teachings directed to the specific
subject matter of the challenged claim,
for a court can take account of the
inferences and creative steps that a
person of ordinary skill in the art
would employ. KSR at 418.

Plainly, in stating this analysis should be
made explicit KSR meant to make sure the record
provides reasoning reviewable on appeal, and not
simply a conclusory finding of obviousness without a
clear, articulated basis for the finding. In full
16
context, explicit does not mandate an enunciation
of why it would be obvious to select specific features
and combine them in the particular manner claimed.

KSR notes that in many fields, there is little
discussion of obvious combinations. Id. at 419. This
is exactly the case with designs.

In the context of designs, the inferences and
creative steps courts can take into account are
subsumed in the analysis that results in a courts
determination of whether or not the visual features
in prior art references are so related that they may
be combined.

The Court of Appeals design patent
obviousness framework provides the requisite
articulation and underpinning, allowing the
combination of visual design features from prior art
references when a court reviews them and
determines they are so related such that the
appearance of ornamental features in one design
would suggest their application to the other.

A courts finding that two design references
are so related to support a combination of their
design features is not the mere conclusory statement
with which Kahn was concerned; it is a
determination that follows from the type of analysis
apposite for designs based on visual appearance,
not extensive written descriptions as is the norm in
utility patent obviousness analysis. A courts
determination that references are visually so
related meets KSRs goals in articulating the
obviousness analysis.
17
In the case at bar, the Court of Appeals
thoroughly applied the so related test and
articulated its determination, noting not just
common subject matter, but also a striking
similarity in appearance among the prior art
references that would have motivated a skilled
designer to combine features from one with features
of the other:

After concluding that the Eagles
jersey could be a primary reference,
the district court determined that the
V2 jersey and another reference
known as the Sporty K9 jersey were
so related to the primary reference
that they could serve as secondary
references that would motivate the
skilled artisan to make the claimed
design. MRC, 921 F. Supp. 2d at 809.

The district court found that both
jerseys suggested the use of a V-neck
pattern and non-mesh fabric on the
side panelsthe first two differences
described above. MRC argues that the
district court erred by failing to
explain why a skilled artisan would
have chosen to incorporate those
features of the V2 and Sporty K9
jerseys with the Eagles jersey.

We disagree. It is true that [i]n order
for secondary references to be
considered, ... there must be some
suggestion in the prior art to modify
18
the basic design with features from
the secondary references. In re
Borden, 90 F.3d at 1574. However, we
have explained this requirement to
mean that the teachings of prior art
designs may be combined only when
the designs are so related that the
appearance of certain ornamental
features in one would suggest the
application of those features to the
other. Id. at 1575 (quoting In re
Glavas, 43 CCPA 797, 230 F.2d 447,
450 (1956)). In other words, it is the
mere similarity in appearance that
itself provides the suggestion that one
should apply certain features to
another design.



So too, here, the secondary references
that the district court relied on were
not furniture, or drapes, or dresses, or
even human football jerseys; they
were football jerseys designed to be
worn by dogs. Moreover, as discussed
above, the V2 could easily have served
as a primary reference itself, so
similar is its overall visual appearance
to that of the claimed design and the
Eagles jersey. See supra n.3. We
therefore agree that those references
were so related to the Eagles jersey
that the striking similarity in
appearance across all three jerseys
19
would have motivated a skilled
designer to combine features from one
with features of another.

MRC Innovations at 1334-35.

This explicit articulation, based upon the
appearance of the designs, memorializes the courts
rationale to combine them. Requiring further
specific explanation as to why a person of ordinary
skill in the art would have incorporated some, but
not all, features (Petitioners brief at 17) of the
secondary references contradicts the flexible
approach directed by KSR.

The Petition falsely asserts that the so
related test usurps obviousness for relatedness.
(Petitioner brief at 20.) Relatedness in and of itself
does not permit combination of prior art designs;
whether designs are so related that they can be
combined is based on a judgment of similarity in
appearance, not merely a threshold similarity based
on the type of underlying article.

Petitioner calls for a detailed explanation for
why the skilled designer would have found it obvious
to make the particular selections of design features
and combine them. Such detailed explanation is
inconsistent with sound design patent jurisprudence,
which generally recognizes that the appearance of
the designs provide their own best description
4
, and
pushes beyond the requirements of KSR for the
purpose of review on appeal into the territory
criticized by KSR as too narrow for analysis of the

4
See Egyptian Goddess, n. 3, supra.
20
obviousness inquiry. For these reasons, the Petition
should be denied.

3. The Alleged Far-Reaching Negative
Effects of Denying Review are Illusory

Petitioners argument that the Court of
Appeals decision if allowed to stand will have far-
reaching negative effects is also not a reason to
grant the Petition. As noted above, the so related
test first appeared shortly after the inception of the
modern U.S. Patent Act, Glavas, supra, and it has
been properly followed by the lower courts for more
than sixty years, including in this case. Industries
that obtain design patent protection have come to
rely on this established, stable design patent
obviousness framework.

In its dire warning of purported negative
effects, Petitioner simply recycles its central theme,
arguing once again that under the present design
patent obviousness standard too many design
patents may be declared invalid because the courts
are not required to provide an explicit analysis of
whether there was a reason to combine the known
elements in the fashion claimed by the patent. As
noted above, this argument is without merit.

Petitioner further contends that the so
related test conflicts with this Courts prior case law
regarding 35 U.S.C. 103, is unreasonable, and
put[s] the validity of many issued design patents in
jeopardy. (Petitioner brief at 6).

It is unclear how
the validity of issued patents is in jeopardy as a
result of this test, given that it is the exact one
21
applied by the U.S. Patent and Trademark Office in
analyzing obviousness before granting a patent. See
the Manual of Patent Examining Procedure at
1504.03 (The long-standing test for properly
combining references has been ...whether they are so
related that the appearance of certain ornamental
features in one would suggest the application of
those features to the other.). This test did not stop
the issuance of the 488 Patent here because
astonishingly Mr. Cohen failed to disclose his own
prior art V2 and Eagles designs to the Patent Office.

Petitioners suggestion that creating a more
rigorous standard for combining references than the
purportedly too loose test currently applied would
avoid some unspecified negative effects should be
read with caution, especially since no proof is offered
as to how a reworked standard would ameliorate
some unspecified future harm. Granting design
patent protection for predictable design variations
will not serve the fundamental purpose of the patent
laws of fostering innovation.

CONCLUSION

Petitioners have not established any
compelling reasons for this Court to grant the
Petition. Accordingly, it is respectfully submitted
that the Petition for Writ of Certiorari should be
denied.

22
Respectfully submitted,

Perry J. Saidman
Counsel of Record
SAIDMAN DESIGNLAW GROUP, LLC
8601 Georgia Avenue, Suite 603
Silver Spring, Maryland 20910
Telephone: (301) 585-8601
Facsimile: (301) 585-0138
perry.saidman@designlawgroup.com

Edward D. Manzo
Mark J. Murphy
HUSCH BLACKWELL LLP
120 South Riverside Plaza, Suite 2200
Chicago, Illinois 60606
Telephone: (312) 655-1500
Facsimile: (312) 655-1501
edward.manzo@huschblackwell.com
mark.murphy@huschblackwell.com

Andrew D. Dorisio
Trevor T. Graves
KING & SCHICKLI, PLLC
247 N. Broadway
Lexington, Kentucky 40507
Telephone: (859) 252-0889
Facsimile: (859) 252-0779
andrew@iplaw1.net
trevor@iplaw1.net

Counsel for Respondents