  United States Court of Appeals
      for the Federal Circuit
              __________________________

REVISION MILITARY, INC. (formerly known as Revi-
sion Eyewear, Inc.), AND REVISION MILITARY, LTD.
      (formerly known as Revision Eyewear, Ltd.),
                 Plaintiffs-Appellants,

                           v.
  BALBOA MANUFACTURING COMPANY (doing
         business as Bobster Eyewear),
              Defendant-Appellee.
              __________________________

                      2011-1628
              __________________________

    Appeal from the United States District Court for the
District of Vermont in Case No. 11-CV-0149, Chief Judge
Christina Reiss.
               ___________________________

              Decided: November 27, 2012
             ___________________________

   ANDREW D. MANITSKY, Gravel and Shea, of Burlington,
Vermont, argued for plaintiffs-appellants.

   STEELE N. GILLASPEY, Gillaspey & Gillaspey, of San
Diego, California, argued for defendant-appellee.
               __________________________
REVISION MILITARY   v. BALBOA                                2


 Before NEWMAN, CLEVENGER, and LINN, Circuit Judges.
NEWMAN, Circuit Judge.

    Revision Military, Inc., and Balboa Manufacturing Co.
design, manufacture, and sell protective eyewear. Revision
markets its ballistic protective eyewear primarily to mili-
tary establishments and law enforcement agencies, and also
to others who require eye protection, such as hunters and
range shooters. Revision alleges that Balboa’s new “Bravo”
design protective goggles (also called “Bobster Bravo”)
copied and infringes Revision’s “Bullet Ant” goggles covered
by U.S. Design Patents No. 537,098 (the ’098 patent) and
No. 620,039 (the ’039 patent). After this infringement suit
was filed Revision moved for a preliminary injunction,
seeking to enjoin Balboa from making and selling the Bob-
ster Bravo goggles while the litigation is pending. Revision
stated that it is likely to succeed on the merits, that if the
infringement is not enjoined it is likely to suffer irreparable
harm, that the equities are balanced in its favor, and that
public policy favors grant of a preliminary injunction on the
merits and equities of this case.

    The district court denied the preliminary injunction.1
On Revision’s appeal, we conclude that the district court
erred in applying the Second Circuit’s heightened standard
of proof of likelihood of success on the merits, instead of the
Federal Circuit standard for consideration of whether to
impose such relief. We thus vacate the denial of the pre-
liminary injunction, and remand for redetermination of the
request on the appropriate standard.




    1  Revision Military, Inc. v. Balboa Mfg. Co., No. 5:11-
cv-00149-cr (D. Vt. Aug. 31, 2011) (Order).
3                                 REVISION MILITARY   v. BALBOA


                              I

    The general criteria for grant of a preliminary injunc-
tion are stated by the Supreme Court as follows:

    A plaintiff seeking a preliminary injunction must
    establish that he is likely to succeed on the merits,
    that he is likely to suffer irreparable harm in the
    absence of preliminary relief, that the balance of
    equities tips in his favor, and that an injunction is
    in the public interest.

Winter v. Natural Res. Def. Council, Inc., 555 U.S. 7, 20
(2008). Within this framework, the circuits have developed
elaborations in response to particular circumstances. Thus
the Second Circuit held, in Doninger v. Niehoff, 527 F.3d 41
(2d Cir. 2008), that the heightened standard of “clear” or
“substantial” likelihood of success on the merits applies
when a movant seeks “an injunction that will alter rather
than maintain the status quo.” Id. at 47. The district court
held that the heightened standard applies here, because
Balboa was already offering to sell the accused Bravo gog-
gles to Revision’s customers; the district court held that an
injunction would alter Balboa's status. Thus the district
court held that Revision must show a clear and substantial
likelihood of success, and that a simple more-likely-than-not
showing is insufficient.

    With respect to the applicable standard, the Federal
Circuit has explained that a preliminary injunction enjoin-
ing patent infringement pursuant to 35 U.S.C. §283 “in-
volves substantive matters unique to patent law and,
therefore, is governed by the law of this court.” Hybritech
Inc. v. Abbott Labs., 849 F.2d 1446, 1451 n.12 (Fed. Cir.
1988). The Hybritech court explained that: “Because the
issuance of an injunction pursuant to this section enjoins
REVISION MILITARY   v. BALBOA                                  4


‘the violation of any right secured by a patent’ . . . a prelimi-
nary injunction of this type, although a procedural matter,
involves substantive matters unique to patent law and,
therefore, is governed by the law of this court.” Id. See also,
e.g., Reebok Int’l Ltd. v. J. Baker, Inc., 32 F.3d 1552, 1555
(Fed. Cir. 1994) (“An appeal from a denial of a preliminary
injunction based on patent infringement involves substan-
tive issues unique to patent law and, therefore, is governed
by the law of this court.”); Purdue Pharma L.P. v. Boe-
hringer Ingelhiem GMBH, 237 F.3d 1359 (Fed. Cir. 2001)
(on appeal from a district court in the Second Circuit, this
court applied Federal Circuit, not Second Circuit, law in
determining whether to grant a preliminary injunction).
Although the court in Mikohn Gaming Corp. v. Acres Gam-
ing, Inc., 165 F.3d 891 (Fed. Cir. 1998) drew on “the wealth
of Ninth Circuit precedent” in reviewing the trial court’s
grant of a preliminary injunction, in that case the injunction
related not to the merits of the infringement charge, but to
statements to customers about the asserted infringement.
See id. at 894 (“we give dominant effect to Federal Circuit
precedent insofar as it reflects considerations specific to
patent issues”).

    Substantive matters of patent infringement are unique
to patent law, and thus the estimated likelihood of success
in establishing infringement is governed by Federal Circuit
law. Revision need not meet the Second Circuit’s height-
ened “clear or substantial likelihood” standard, but rather
the Federal Circuit’s standard of whether success is more
likely than not. In turn, the weight of the likelihood may be
considered as an equitable factor, along with issues of the
position of the parties with respect to the status quo, in the
ultimate balance of equities.
5                                  REVISION MILITARY   v. BALBOA


                              II

    The law of design patent infringement is stated in Gor-
ham Co. v. White, 81 U.S. 511 (1871), as whether “in the eye
of an ordinary observer, giving such attention as a pur-
chaser usually gives, [the] two designs are substantially the
same.” Id. at 528. In Egyptian Goddess, Inc. v. Swisa, Inc.,
543 F.3d 665 (Fed. Cir. 2008) (en banc) the court confirmed
that “in accordance with Gorham . . . we hold that the
‘ordinary observer’ test should be the sole test for determin-
ing whether a design patent has been infringed.” Id. at 678.
 The en banc court’s purpose was to lay to rest the “point of
novelty” test for design patent infringement, and to rein-
force the principles established in Gorham. See id. at 672
(“we conclude that the point of novelty test, as a second and
free-standing requirement for proof of design patent in-
fringement, is inconsistent with the ordinary observer test
laid down in Gorham”); id. at 677 (“we hold that the ‘point of
novelty’ test should no longer be used in the analysis of a
claim of design patent infringement”).

    Revision states that to the eye of the ordinary observer,
and viewing the designs as a whole, the designs here at
issue are substantially the same. Revision offers a compari-
son of the patented designs in the ’098 and ’039 patents, and
photographs of the Bobster Bravo:




    ’098 Patent Figure 2                  Bobster Bravo
REVISION MILITARY   v. BALBOA                                6




    ’039 Patent Figure 2             Bobster Bravo


Revision states that the criteria of Gorham and Egyptian
Goddess are met, and that infringement is more likely that
not to be found at trial.

    Although the district court stated the correct “overall
design” standard, citing Crocs, Inc. v. International Trade
Commission, 598 F.3d 1294, 1303 (Fed. Cir. 2010), the court
focused on features that “stand out as dissimilar,” reciting
the shape and sizes of the lenses, the concavity of the nose
bridge, and the venting along the top and bottoms. Revision
states that the design of the Bravo goggles and the patented
goggles is substantially the same, and that any differences
would not be noticed by the ordinary observer.

    Although individual features may indeed serve in as-
sessing the “impact on the overall appearance,” Order at 25,
in determining whether apparently minor differences be-
tween specific features would be recognized as distinguish-
ing the designs, it is often helpful to refer to any prior art
with which the ordinary observer would reasonably be
familiar. As stated in Egyptian Goddess, “the background
prior art, provides . . . a frame of reference and is therefore
often useful in the process of comparison.” 543 F.3d at 677.
 The district court did not consider the prior art context in
which the ordinary observer test is applied. Although the
7                                 REVISION MILITARY   v. BALBOA


district court stated that “[b]ecause this is not a particularly
close case, the court does not need prior art as a ‘frame of
reference’ to apply the ‘ordinary observer test,’” Order at 22,
the record suggests otherwise. On remand, the district
court may redetermine the question, applying the design-as-
a-whole criterion and the more-likely-than-not standard.

     It is the role of the district court to determine, in the
first instance, whether a preliminary injunction is war-
ranted on the law, facts, and equities of the case. We vacate
the denial of the preliminary injunction, and remand for
redetermination in accordance with Federal Circuit criteria.

              VACATED AND REMANDED
