District Court Must Make Clear Findings on Mirror Patents
September 24, 2002
Last Month at the Federal Circuit - October 2002
Judges: Dyk (author), Lourie, and Plager
In Rosco, Inc. v. Mirror Lite Co., No. 01-1271 (Fed. Cir. Sept. 24, 2002), the Federal Circuit reversed a SJ that Rosco, Inc.’s (“Rosco”) U.S. Design Patent No. 346,357 (“the ‘357 patent”) was invalid on functionality grounds, reversed a grant of SJ that Mirror Lite’s U.S. Patent No. 5,589,984 (“the ‘984 patent”) was invalid under 35 U.S.C. §§ 102(e) and (g), and affirmed a SJ dismissing Rosco’s claims of misrepresentation and common-law trademark infringement under 15 U.S.C. § 1125(a).
Rosco and Mirror Lite make school bus crossmirrors, convex mirrors mounted on the front fender of a school bus that allow the bus driver to view the front and passenger sides of the school bus. Rosco’s ‘357 patent concerns an oval, highly convex crossview mirror, and Mirror Lite’s ‘984 patent concerns an oval cross-view mirror with a varying radius of curvature along its major axis. Rosco filed two actions against Mirror Lite, Mirror Lite counterclaimed in the second action, and the two cases were consolidated.
Regarding Rosco’s patent, the Federal Circuit reversed the district court’s holding that the ‘357 patent was invalid as being functional, recognizing that the design must be dictated by or governed solely by the function to be invalid. Because Mirror Lite had not shown that there were no other designs that would have the same function as Rosco’s mirror, the Federal Circuit held that the ‘357 patent was not invalid on functionality grounds.
The district court also found the ‘357 patent to be invalid for obviousness. The Federal Circuit remanded on this issue because the district court had not made the proper factual findings required for obviousness and Fed. R. Civ. P. 52. The Federal Circuit also instructed the district court that, if it finds the patent not invalid, it must address the patent-infringement issue.
Regarding Mirror Lite’s patent, the Federal Circuit reversed the district court’s holding that the disclosure of the ‘357 patent inherently anticipated the claims of the ‘984 patent under 35 U.S.C. § 102(e) because there was no evidence indicating that one skilled in the art would recognize that the mirror of the ‘357 patent necessarily had a varying radius of curvature along its major axis. Similarly, while Rosco’s previous mirrors, which are not disclosed in the ‘357 patent, might have had such a varying radius of curvature, there was no evidence that this feature was appreciated by Rosco. Accordingly, the Federal Circuit reversed the holding that Rosco’s previous mirrors anticipated the claims of the ‘984 patent under 35 U.S.C. § 102(g).
Having found the ‘984 patent invalid under 35 U.S.C. §§ 102(e) and (g), the district court had not considered Rosco’s defenses under 35 U.S.C. §§ 102(a), 102(f), or 103. In light of its reversal, the Federal Circuit stated that the district court should consider these defenses. In addition, the district court had summarily dismissed Rosco’s inequitable-conduct defense with no findings of fact or conclusions of law, and the Federal Circuit remanded for such findings and conclusions. As it did regarding the ‘357 patent, the Federal Circuit also instructed the district court that, if it finds the ‘984 patent not invalid, it must address the patentinfringement issue.
The district court had held that Rosco had abandoned its claim of tortious interference with a business relationship, but the Federal Circuit remanded for findings and conclusions because Rosco had in fact briefed this issue in its post-trial brief—as Mirror Lite acknowledged.
Because Rosco did not offer any evidence to raise a genuine issue as to the truth of the alleged misrepresentations by Mirror Lite, the Federal Circuit upheld the district court’s dismissal of Rosco’s misrepresentation claim. Moreover, stating that unregistered marks are entitled to essentially the same protection as registered marks, and noting that Rosco did not challenge the district court’s finding that Rosco had not shown a likelihood of confusion, the Federal Circuit affirmed the district court’s denial of Rosco’s common-law trademarkinfringement claim.