This patent infringement controversy centers around United States Patent No. D603,102 ("the '102 Patent"), a design patent for a fielders' face mask to be used by softball and baseball players to protect their faces from being hit by a ball. Plaintiffs manufacture and distribute a variety of sporting goods and equipment throughout the United States and have an exclusive license to make, use, sell, offer for sale, and import into the United States the commercial embodiment of the design claimed in the '102 Patent. Plaintiffs assert that Defendant, Champro Sports ("Champro"), infringed the '102 Patent by selling, offering for sale, and marketing two face masks that utilize designs similar to the one claimed in the '102 Patent.
This case is now before the Court on Plaintiffs' Motion for Preliminary Injunctive Relief (Doc. 3) and Defendant's Response thereto (Doc. 21). Oral argument was heard on December 12, 2011. As discussed below, Plaintiffs' motion shall be denied.
The '102 Patent issued on October 27, 2009. It claims "[t]he ornamental design for a protective fielders face guard for softball and baseball, as shown and described." ('102 Patent, Ex. C to Doc. 3). The '102 Patent then includes the following six drawings:
II. Preliminary Injunction Standard
"A district court may enter a preliminary injunction based on its consideration of four factors: (1) the likelihood of the patentee's success on the merits; (2) irreparable harm if the injunction is not granted; (3) the balance of hardships between the parties; and (4) the public interest." Abbott Labs. v. Sandoz, Inc., 566 F.3d 1282, 1298 (Fed. Cir. 2009) (quotation omitted). However, in a patent case "a movant cannot be granted a preliminary injunction unless it establishes both of the first two factors, i.e., likelihood of success on the merits and irreparable harm." Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343, 1350 (Fed. Cir. 2001) (emphasis in original).
To establish a substantial likelihood of success on the merits, Plaintiffs must show, "in light of the presumptions and burdens that will inhere at trial on the merits," that (1) Plaintiffs will likely prove that Champro infringed the '102 Patent and (2) Plaintiffs' "infringement claim will likely withstand [Champro's] challenges to the validity" of the '102 Patent. Id.; PHG Techs., LLC v. St. John Cos., 469 F.3d 1361, 1365 (Fed. Cir. 2006). Furthermore, "in order to defeat the injunction on grounds of potential invalidity, [Champro], as the party bearing the burden of proof on the issue at trial, must establish a substantial question of invalidity." PHG, 469 F.3d at 1365. In other words, if Champro asserts an "invalidity defense that the patentee cannot prove 'lacks substantial merit,' the preliminary injunction should not issue." Amazon.com, 239 F.3d at 1350-51.
Although Plaintiffs assert that they have established all of the preliminary injunction factors, Champro has raised a substantial question of invalidity and Plaintiffs have failed to show that the question lacks substantial merit.
As noted above, the '102 Patent is a design patent. "Under 35 U.S.C. § 171 , a design patent may be granted only for a 'new, original and ornamental design.'" Power Controls Corp. v. Hybrinetics, Inc., 806 F.2d 234, 238 (Fed. Cir. 1986). Once a patent issues, it is presumed valid, 35 U.S.C. § 282, but this presumption can be overcome if the challenger establishes that "the patented design is primarily functional rather than ornamental," Power Controls, 806 F.2d at 238. "The design of a useful article is deemed to be functional when 'the appearance of the claimed design is dictated by the use or purpose of the article.'" PHG, 469 F.3d at 1366 (quoting L.A. Gear Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 1123 (Fed. Cir. 1993)). At trial the challenger must establish invalidity by clear and convincing evidence. Amazon.com, 239 F.3d at 1358. "In resisting a preliminary injunction, however, one need not make out a case of actual invalidity. Vulnerability is the issue at the preliminary injunction stage, while validity is the issue at trial. The showing of a substantial question as to invalidity thus requires less proof than the clear and convincing showing necessary to establish invalidity itself." Id. at 1359.
Factors to consider when determining whether the claimed design is dictated by the use or purpose of the article include: (1) "whether the advertising touts particular features of the design as having specific utility"; (2) "[t]he presence of alternative designs" and "whether [those] designs would adversely affect the utility of the specified article"; (3) "whether there are any elements in the design or an overall appearance clearly not dictated by function"; (4) "whether there are any concomitant utility patents"; and (5) "whether the protected design represents the best design." Berry Sterling Corp. v. Pescor Plastics, Inc., 122 F.3d 1452, 1456 (Fed. Cir. 1997); see also PHG, 469 F.3d at 1366-67.
As a preliminary matter, the parties appear to disagree over what, exactly, constitutes the "use or purpose" of the face mask. Both parties acknowledge that its basic purpose is to protect baseball and softball players' faces. However, Plaintiffs attempt to characterize protection as the mask's only utility, while Champro argues that the purpose of the mask is to protect while also being lightweight and providing a wide field of vision, enabling the player to have maximum mobility and comfort and to see the ball at all times. Plaintiffs' own advertisements undermine their characterization and support Champro's argument.
Plaintiffs' website promotes its face mask by claiming that their face mask "does not hinder your ability to see the ball" and it "allows for more than 180 degrees of vision so your peripheral vision is never compromised." (Ex. A to Decl. of John P. Fredrickson, Doc. 21-2). Plaintiffs' website also advertises that their mask "has a clutter free design that makes seeing the ball to your glove easy and flawless." (Id.). Additionally, the description of Plaintiffs' mask on Amazon.com notes that it "provides maximum protect[ion] and comfort with the largest viewable area" and that it has a "[l]ightweight design." (Ex. B to Fredrickson Decl.). Indeed, Plaintiffs do not deny that these elements are part of the utility of their mask; rather, Plaintiffs merely frame their arguments as though the only purpose to be considered is the mask's ability to protect the face.
Furthermore, review of relevant caselaw reveals that courts do not frame the purpose of a design so narrowly. See, e.g., PHG, 469 F.3d at 1367 (considering the arrangement of labels on a medical label sheet as a utility of the sheet because such placement was most convenient); Rosco, Inc. v. Mirror Lite Co., 304 F.3d 1373, 1378-79 (Fed. Cir. 2002) (considering a large field of view as a part of an oval-shaped bus mirror's purpose); Five Star Mfg., Inc. v. Ramp Lite Mfg., Inc., 4 F. App'x 922, 924 (Fed. Cir. 2001) (considering that the proposed ...