Case: 19-1435   Document: 76     Page: 1   Filed: 04/17/2020




   United States Court of Appeals
       for the Federal Circuit
                 ______________________

     SPIGEN KOREA CO., LTD., A REPUBLIC OF
             KOREA CORPORATION,
                Plaintiff-Appellant

                            v.

      ULTRAPROOF, INC., A CALIFORNIA
  CORPORATION, ULTRAPROOF, INC., A NEVADA
  CORPORATION, ENDLISS TECHNOLOGY, INC., A
        CALIFORNIA CORPORATION,
          Defendants-Cross-Appellants

         DOES, 1 THROUGH 10, INCLUSIVE,
                     Defendant
               ______________________

                  2019-1435, 2019-1717
                 ______________________

    Appeals from the United States District Court for the
 Central District of California in Nos. 2:16-cv-09185-DOC-
 DFM, 2:17-cv-01161-DOC-DFM, Judge David O. Carter.
                  ______________________

                 Decided: April 17, 2020
                 ______________________

     JOSHUA DAVID CURRY, Lewis Brisbois Bisgaard &
 Smith LLP, Atlanta, GA, argued for plaintiff-appellant.
 Also represented by BRIAN G. ARNOLD, JOSEPHINE BROSAS,
 JEAN KIM, Los Angeles, CA.
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 2                  SPIGEN KOREA CO., LTD. v. ULTRAPROOF, INC.




     BENJAMIN ADAM CAMPBELL, Bishop Diehl & Lee, Ltd.,
 Schaumburg, IL, argued for defendants-cross-appellants.
 Also represented by EDWARD L. BISHOP, JAMES JAGODA.
                 ______________________

     Before NEWMAN, LOURIE, and REYNA, Circuit Judges.
       Opinion for the court filed by Circuit Judge REYNA.
                 Circuit Judge LOURIE dissents.
 REYNA, Circuit Judge.
     Spigen Korea Co., Ltd., appeals the decision of the
 United States District Court for the Central District of Cal-
 ifornia 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. Be-
 cause the district court improperly resolved a genuine dis-
 pute of material fact at summary judgment, we reverse the
 district court’s decision and remand for further proceed-
 ings. We dismiss the cross-appeal as moot.
                         BACKGROUND
     Spigen Korea Co., Ltd., (“Spigen”) owns U.S. Design
 Patent Nos. D771,607 (“the ’607 patent”), D775,620 (“the
 ’620 patent”), and D776,648 (“the ’648 patent”) (collectively
 the “Spigen Design Patents”), which each claim a case for
 a cellular phone. Figures 3–5 of the ’607 patent are illus-
 trative of the claimed design:
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 J.A. 88–90.
     The ’620 patent disclaims certain elements present in
 the ’607 patent. Figures 3–5 of the ’620 patent are illustra-
 tive of the claimed design 1:




 J.A. 99–101.
     Lastly, the ’648 patent disclaims most of the elements
 present in the ’607 and ’620 patents. Figures 3–5 of the
 ’648 patent are illustrative of the claimed design 2:




 J.A. 110–12.
     On February 13, 2017, Spigen sued Ultraproof, Inc.,
 (“Ultraproof”) for infringement of the Spigen Design Pa-
 tents in the United States District Court for the Central


     1   The design figures of the patent contain solid and
 broken lines. The broken lines depict features disclaimed
 from of the claimed design.
     2   See supra note 1.
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 4                 SPIGEN KOREA CO., LTD. v. ULTRAPROOF, INC.




 District of California. Ultraproof filed a motion for sum-
 mary judgment of invalidity of the Spigen Design Patents.
 Ultraproof argued that the Spigen Design Patents were ob-
 vious as a matter of law in view of a primary reference, U.S.
 Design Patent No. D729,218 (“the ’218 patent”), and a sec-
 ondary reference, U.S. Design Patent No. D772,209 (“the
 ’209 patent”). Spigen opposed the motion, arguing that as
 a matter of law, the Spigen Design Patents were not ren-
 dered obvious by the ’218 patent and the ’209 patent. Al-
 ternatively, Spigen argued, various underlying factual
 disputes precluded summary judgment. The district court
 held as a matter of law that the Spigen Design Patents
 were obvious over the ’218 patent and the ’209 patent and
 granted summary judgment of invalidity in favor of Ultrap-
 roof.
     Subsequently, Ultraproof moved for attorneys’ fees
 pursuant to 35 U.S.C. § 285. The district court denied the
 motion. Spigen timely appeals the obviousness determina-
 tion. Ultraproof cross-appeals the denial of attorneys’ fees.
 We have jurisdiction pursuant to 28 U.S.C.
 § 1295(a)(1).
                         DISCUSSION
      We review a grant of summary judgment under the law
 of the regional circuit, which in this case is the Ninth Cir-
 cuit. See, e.g., Cheetah Omni LLC v. AT&T Servs., Inc., 949
 F.3d 691, 693 (Fed. Cir. 2020). The Ninth Circuit reviews
 a district court’s grant of summary judgment de novo. See,
 e.g., L.F. v. Lake Wash. Sch. Dist. #414, 947 F.3d 621, 625
 (9th Cir. 2020). Summary judgment is appropriate when
 the moving party demonstrates that “there is no genuine
 dispute as to any material fact and the movant is entitled
 to judgment as a matter of law.” Fed. R. Civ. P. 56(a). In
 other words, summary judgment may only be granted
 when no “reasonable jury could return a verdict for the
 nonmoving party.” Anderson v. Liberty Lobby, Inc., 477
 U.S. 242, 248 (1986).
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     Summary judgment of obviousness is appropriate if
 “the content of the prior art, the scope of the patent claim,
 and the level of ordinary skill in the art are not in material
 dispute, and the obviousness of the claim is apparent in
 light of these factors.” MRC Innovations, Inc. v. Hunter
 Mfg., LLP, 747 F.3d 1326, 1331 (Fed. Cir. 2014) (citation
 and quotation marks omitted). Design patents are pre-
 sumed valid and, thus, a moving party seeking to invali-
 date a design patent at summary judgment must submit
 such clear and convincing evidence of facts underlying in-
 validity that no reasonable jury could find otherwise. See
 Ethicon Endo-Surgery, Inc. v. Covidien, Inc., 796 F.3d
 1312, 1328 (Fed. Cir. 2015).
                               I
     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.
     For design patents, the ultimate inquiry for obvious-
 ness “is whether the claimed design would have been obvi-
 ous to a designer of ordinary skill who designs articles of
 the type involved.” Titan Tire Corp. v. Case New Holland,
 Inc., 566 F.3d 1372, 1380–81 (Fed. Cir. 2009) (quoting
 Durling v. Spectrum Furniture Co., 101 F.3d 100, 103 (Fed.
 Cir. 1996)). This inquiry is a question of law based on un-
 derlying factual findings. See, e.g., MRC Innovations, 747
 F.3d at 1331. One underlying factual issue is whether a
 prior art design qualifies as a “primary reference.” High
 Point Design LLC v. Buyers Direct, Inc., 730 F.3d 1301,
 1311 (Fed. Cir. 2013) (explaining that a “finder of fact”
 must identify a primary reference); see also Campbell Soup
 Co. v. Gamon Plus, Inc., 939 F.3d 1335, 1340 (Fed Cir.
 2019) (same); Apple, Inc. v. Samsung Elecs. Co., 678 F.3d
 1314, 1329 (Fed. Cir. 2012) (same).
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     A “primary reference” is “a single reference that creates
 ‘basically the same’ visual impression” as the claimed de-
 sign. High Point Design, 730 F.3d at 1312 (quoting Durl-
 ing, 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 re-
 quired 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.
     Although a “trial court judge may determine almost in-
 stinctively whether the two designs create basically the
 same visual impression,” Durling, 101 F.3d at 103, a trial
 court is not free to find facts at the summary judgment
 phase. Lemelson v. TRW, Inc., 760 F.2d 1254, 1260 (Fed.
 Cir. 1985) (“For summary judgment, fact-finding is an in-
 appropriate exercise, at either the appellate or the district
 court level. If a dispute requiring a finding exists as to any
 material fact, summary judgment is improper.”). Thus, if
 based on the evidence, a reasonable jury could find in favor
 of the non-moving party, a trial court must stay its hand
 and deny summary judgment of obviousness. See High
 Point Design, 730 F.3d at 1314–15 (reversing the district
 court’s grant of summary judgment because “there appear
 to be genuine issues of material fact as to whether the
 Woolrich Prior Art are, in fact, proper primary references”).
      Here, the district court found that despite “slight dif-
 ferences,” 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 dis-
 trict court, a reasonable factfinder could find otherwise.
    Spigen’s expert, Mr. Delman, testified that the Spigen
 Design Patents and the ’218 patent are not “at all similar,
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 let alone ‘basically the same.’” J.A. 4703 (quoting Delman
 Rebuttal Expert Report ¶176). He also testified that unlike
 the Spigen Design Patents, the ’218 patent “‘[has] unusu-
 ally broad front and rear chamfers and side surfaces’ and a
 ‘substantially wider surface,’ ‘lack[s] any outer shell-like
 feature or parting lines,’ lacks an aperture on its rear side,
 and ‘[has] small triangular elements illustrated on its
 chamfers.’” Id. The following side-by-side comparison of
 Spigen’s ’607 patent, representative of the Spigen Design
 Patents, and the ’218 patent, displays these differences:




 J.A. 86, 90, 161, 163.
     Spigen also argued before the district court that:
     [d]efendants have proposed so many modifications
     to the ’218 Patent to make it look more like the
     Spigen patents (e.g., add outer shell that wraps
     around back and side surfaces, add lateral parting
     lines, add large circular aperture to rear, shrink
     the side surfaces, shrink the chamfers, and remove
     ornamental triangular elements), that the ’218 pa-
     tent can no longer qualify as a primary reference.
 J.A. 4704.
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 8                  SPIGEN KOREA CO., LTD. v. ULTRAPROOF, INC.




     Ultraproof, contrastingly, argued below that the ’218
 patent was “‘basically the same’ as the claimed designs” be-
 cause all of the designs had (1) a “generally rectangular ap-
 pearance with rounded corners,” (2) a “prominent rear
 chamfer and front chamfer,” and (3) “elongated buttons cor-
 responding to the location of the buttons of the underlying
 phone.” J.A. 374–75. Ultraproof argued that the “only per-
 ceivable difference[s]” between the ’218 patent and the
 Spigen Design Patents were the “circular cutout in the up-
 per third of the back surface and the horizontal parting
 lines on the back and side surfaces.” J.A. 375 (footnote
 omitted). 3
     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 differ-
 ences, and, thus, are not basically the same. See Fed. R.
 Civ. P. 56(c). Accordingly, the district court’s grant of sum-
 mary judgment of obviousness was in error and must be
 reversed. See Durling, 101 F.3d at 105 (“Without . . . a pri-
 mary reference, it is improper to invalidate a design patent
 on grounds of obviousness.”); see also High Point, 730 F.3d
 at 1314–15. We therefore need not address Spigen’s




     3    On appeal, Ultraproof argues that many of the dif-
 ferences between the Spigen Design Patents and the ’218
 patent are “largely differences of degree, not characteris-
 tic,” and, thus, irrelevant to the “basically the same” in-
 quiry. For example, Ultraproof asserts that the ’218
 patent’s “bulkier appearance” is “a difference of degree
 (large vs small) as opposed to a difference in characteris-
 tics, such as [a] sunken screen.” We reject this argument.
 No precedent makes such a distinction, and we decline to
 do so today.
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 alternative grounds for reversal. 4 We now turn to Ultrap-
 roof’s alternative grounds for affirmance.
                              II
      Ultraproof presents four alternative grounds for af-
 firming if we determine the district court’s obviousness
 analysis was flawed. Three of these grounds—obviousness
 over the ’209 patent as the primary reference and the ’218
 patent as the secondary reference; obviousness over vari-
 ous combinations of other prior art; and inequitable con-
 duct—were not decided by the district court. We therefore
 decline to decide these issues in the first instance. See
 TriMed, Inc. v. Stryker Corp., 608 F.3d 1333, 1339 (Fed.
 Cir. 2010) (“Because, as a general matter, a federal appel-
 late court does not consider an issue not passed upon
 below, . . . we decline to address these arguments in the
 first instance and refer them to the district court for con-
 sideration on remand.” (citation and quotation marks omit-
 ted)). The district court is free to consider these grounds
 on remand.
     As to the fourth ground, Ultraproof argues that we
 must affirm because the Spigen Design Patents’ claimed
 designs were described in a printed publication before their
 effective filing date and are thus precluded from patent
 protection under 35 U.S.C § 102(a). Ultraproof cites to two
 copyright registrations for support. The district court,



     4    Spigen’s alternative grounds for reversal are that
 the district court erred by determining that the ’209 patent
 was an appropriate secondary reference and that Ultrap-
 roof’s hypothetical combination of the ’218 patent and the
 ’209 patent rendered obvious the Spigen Design Patents.
 Spigen also asserts that even if Ultraproof had made a
 prima facie case of obviousness, secondary considerations
 of non-obviousness present a genuine dispute of material
 fact, precluding summary judgment.
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 10                 SPIGEN KOREA CO., LTD. v. ULTRAPROOF, INC.




 however, determined that a genuine dispute of material
 fact exists regarding the publication date of the copyright
 registration certificates. The district court thus denied this
 ground of invalidity at the summary judgment phase. We
 agree with the district court and thus reject this alterna-
 tive ground.
                         CONCLUSION
      We have considered the parties’ remaining arguments
 and find them unpersuasive. We determine that a genuine
 dispute of material fact exists as to whether the ’218 patent
 is basically the same as the Spigen Design Patents and
 hence, a proper primary reference. We thus reverse the
 district court’s grant of summary judgment of invalidity
 and remand for further proceedings. Because we remand
 for further proceedings, Ultraproof is no longer the prevail-
 ing party. We thus dismiss Ultraproof’s cross-appeal of the
 district court’s denial of attorneys’ fees as moot. Circuit
 Judge Lourie dissents.
                REVERSED AND REMANDED
                            COSTS
      No Costs.
