Federal Circuit IP

Mosaic Brands, Inc., v. Ridge Wallet LLC, No. 22-1001 (Fed. Cir. (CDCal) Dec. 20, 2022)

By Shelby A. Stepper Published March 3, 2023

Summary: Two wallet makers accused each other of patent infringement and Plaintiff Mosaic also claimed trade dress infringement. The Federal Circuit upheld the District of Utah’s claim construction and affirmed the dismissal of Mosaic’s infringement claim. The court found genuine disputes of material fact as to whether Mosaic’s SMCII product is prior art to Ridge’s patent and reversed the grant of summary judgment of invalidity of Ridge’s patent. The court vacated the denial of summary judgment on Mosaic’s inequitable conduct defense and affirmed the grant of summary judgment that Mosaic’s trade dress is invalid because the design is functional.

Background: Plaintiff Mosaic asserted U.S. Patent No. 7,334,616 (“’616 patent”) and trade dress for a wallet. Ridge filed for and counter-asserted U.S. Patent No. 10,791,808 (“’808 patent”). Parties stipulated non-infringement of Mosiac’s ’616 patent after the District Court ruled on claim construction. The District Court granted summary judgment of invalidity of Ridge’s ’808 patent based on anticipation and denied Mosiac’s motion for summary judgment that Ridge had obtained its ’808 patent through inequitable conduct. The District Court also granted summary judgment to Ridge on Mosiac’s trade dress claim based on invalidity. Both parties appealed.

Issue: Whether the corroboration requirement concerning the amount of evidence needed to successfully invalidate a patent as anticipated was met.

Opinion:

1. The Federal Circuit affirmed the District Court’s claim construction of Mosaic’s ’616 patent which affirmed non-infringement as stipulated by the parties after the District Court’s claim construction
   1. The District Court construed the claim term “lip” as a “connector made of extrudable or injectable plastic material that defines the outer dimensions of enclosure”
   2. Mosiac argued this construction was too narrow and that the lip could be made with extrudable or softer, flexible material
   3. The District Court construed “of varying thickness” as “having a thickness, defining the outer dimensions of the holder, that causes the outer dimensions of the holder to be thicker in some parts and thinner in others”
   4. Mosiac argued plain and ordinary meaning without offering intrinsic evidence or explanation about what was incorrect about the District Court’s construction
2. The Federal Circuit reversed the District Court’s grant of summary judgement that the asserted claims of Ridges’ ’808 patent were invalid as anticipated by Mosaic’s SMCII because the Federal Circuit found that there was a genuine dispute of material fact as to whether Mosiac’s SMCII was sold before the critical date and thus prior art to Ridge’s ’808 patent
   1. The corroboration requirement for inventor testimony was met
      1. The inventor testified it the SMCII was first sold in 2011 (a year before Ridge filed the ’808 patent application) and in support attached to his declaration (1) design plans from October 19, 2010, and (2) invoices seemingly showing that the SMCII was sold at a trade show in 2011
   2. However, Ridge was entitled to cross-examine the inventor
      1. District Court erroneously required Ridge, the non-movant, to produce affirmative evidence (which is not required to create a genuine dispute)
      2. And Ridge produced some evidence, including a declaration from its CEO, claiming relevant knowledge of the marketplace but no knowledge of Mosiac or its’ product before 2019

• Since the District Court’s summary judgment of invalidity was reversed, Ridge’s infringement claim against Mosiac could proceed including Mosaic’s affirmative defense of inequitable conduct

1. The Federal Circuit affirmed the District Court’s summary judgment for Ridge that Mosaic’s trade dress was invalid
   1. The District Court correctly concluded there is no genuine dispute of material fact as to whether Mosaic’s trade dress is functional

Takeaway: As the non-movant, remind the Court of the burden of proof at summary judgement: Clear and convincing evidence is a high bar!