Federal Circuit Upholds Preliminary Injunction Against Designers
January 30, 2002
Last Month at the Federal Circuit - February 2002
Judges: Mayer (author), Dyk, and Lourie (dissenting)
In Hoop v. Hoop, No. 01-1288 (Fed. Cir. Jan. 30, 2002), the Federal Circuit affirmed a decision granting a preliminary injunction against designers, Mark and Lisa Hoop, preventing them from making, using, and selling certain eagle-shaped, motorcycle fairing guards. The Federal Circuit found no abuse of discretion in the lower court’s ruling that the inventors would likely succeed in sustaining the validity of their design patent.
Jeffrey and Stephen Hoop (“the Hoop brothers”) had conceived a design for an eagle-shaped, motorcycle fairing guard in 1998. Fairings are structures on motorcycle handlebars for reducing wind drag. The guard attaches to the fairings to protect them from damage when a motorcycle leans over. The Hoop brothers drew up their design, but, lacking certain expertise, they hired their cousin, Lisa Hoop, a graphic designer, and her ex-husband, Mark Hoop, a metal die caster, to assist in preparing drawings and models for a patent application. The Hoop brothers’ design patent issued as U.S. Design Patent No. 428,831 (“the ‘831 patent”).
Several months after the Hoop brothers filed their application, Mark and Lisa Hoop also applied for a design patent using the same drawings they had prepared for the Hoop brothers. This patent issued as U.S. Design Patent No. 431,211 (“the ‘211 patent”). Upon reexamination, however, the PTO rejected the second patent as anticipated by the Hoop brothers’ design patent.
Lisa and Mark Hoop then brought suit to invalidate the first patent. The Hoop brothers countersued and sought to enjoin Mark and Lisa from practicing the invention. Finding the Hoop brothers to be the true inventors, the district court held that they were likely to succeed in upholding the validity of their patent and that Lisa and Mark Hoop were likely infringing.
On appeal, the Federal Circuit affirmed, finding no abuse of discretion based upon either an error of law or a serious misjudgment of the evidence. Framing the issue as whether Mark and Lisa Hoop’s refinements rose to the level of inventorship, the Federal Circuit confirmed that the same standard of inventorship applied to design patents as to utility patents. Accordingly, an inventor is one who conceives the patented invention, even if he then enlists others to help perfect the invention or reduce it to practice. The Hoop brothers were undisputedly the first to conceive of the eagleshaped fairing guard, reasoned the Court, and they brought this concept to Mark and Lisa Hoop seeking assistance. Thus, the Court reasoned, the Hoop brothers must remain the true inventors unless Mark and Lisa Hoop themselves contributed the requisite inventive quality to establish a separate patentable design.
Reviewing the parties’ designs, the Court noted only some detailed feathering, the removal of a suggested eagle’s tail, and an overall less triangular shape as differences. Otherwise, the parties drawings were strongly similar, having the same proportions, body size, and orientation, including the same eye placement, head and beak shape, and even the same three rows of feathers. Thus, the Federal Circuit affirmed the finding that Mark and Lisa Hoop merely refined and perfected the Hoop brothers’ concept and upheld the district court’s decision to grant a preliminary injunction.
Judge Lourie dissented, proffering that the district court had applied an incorrect legal standard in determining design-patent inventorship. Rather than claiming a concept, Judge Lourie argued, design patents claim specific designs, which must refer to the appearance of the patent’s drawings. Hence, the invention is not the concept of an eagle design, but its specific representation, and the district court should have focused on the differences between the overall appearance of the eagles, rather than the concept of the design, in determining whether they were separate inventions.