Burdens Can’t Be Avoided No Matter How They’re Dressed Up

By on January 5, 2023
Posted In Patents

Addressing a multitude of issues, the US Court of Appeals for the Federal Circuit affirmed the district court’s ruling dismissing infringement of one patent and finding a trade dress invalid but reversed the invalidation of the other patent and vacated dismissal of an inequitable conduct defense. Mosaic Brands, Inc. v. Ridge Wallet LLC, Case Nos. 22-1001, -1002 (Fed. Cir. Dec. 20, 2022) (Newman, Prost, Stark, JJ.)

Mosaic Brands sued Ridge Wallet alleging infringement of a patent relating to a combination money clip and card holder adapted to retain paper currency and to removably store flexible cards such as credit cards, as well as Mosaic’s associated trade dress. Ridge denied the allegations and counterclaimed that Mosaic infringed a Ridge patent directed to a nearly identical wallet. In response to the counterclaim, Mosaic raised inequitable conduct as an affirmative defense.

During claim construction, the district court construed the terms “lip” and “varying thickness” in Mosaic’s patent. Following claim construction, the parties stipulated to noninfringement of Mosaic’s patent. The district court also found the trade dress of Mosaic’s wallet to be functional and thus invalid. As to Ridge’s patent, the district court granted summary judgment of invalidity based on a prior art product sold by Mosaic, and further denied summary judgment that Ridge had obtained its patent through inequitable conduct. Mosaic filed a motion for reconsideration regarding the inequitable conduct defense and to clarify remaining merits issues. The district court exercised its discretion to address the defense and identify deficiencies. The district court noted that Mosaic had only met a portion of its burden and later proceedings would present an opportunity to present more evidence of inequitable conduct. Both parties appealed.

The Federal Circuit first addressed a potential issue of appellate jurisdiction since the assertion of inequitable conduct was an affirmative defense and not a counterclaim yielding a final judgment to review. The Court found it had jurisdiction because the inequitable conduct defense merged and became final when the judgment denying summary judgment for inequitable conduct was entered.

Turning to the merits, the Federal Circuit addressed the two claim terms appealed by Mosaic. Mosaic argued that the district court’s interpretation of “lip” was too narrow because it required the lip to be made of “extruded plastic.” The Court quickly dispatched this argument by citing the specification of Mosaic’s patent, which described the lip as being made of extrudable plastic and extolled the benefits of such material. The Court focused on the context of how the patent used the phrase “the present invention” and found it to be limiting. As to the other claim term (“varying thickness”), Mosaic advocated for a plain and ordinary meaning of the term. The Court rejected Mosaic’s argument, finding that Mosaic failed to provide intrinsic evidence or meaningful explanation of how the district court’s construction differed from the plain and ordinary meaning. As such, the Court found that the district court made no error in either construction.

Turning to the appeal of Ridge’s patent, the Federal Circuit found that a genuine issue of material fact existed regarding Mosaic’s wallet as prior art. The question of prior art status turned on the timing of the first sale of Mosaic’s wallets. Mosaic supported its assertion with inventor testimony and corroborating evidence. Applying the rule of reason, the Court found sufficient corroboration as a matter of law regarding inventor testimony. However, the Court also found that the inventor’s credibility and Mosaic’s ability to carry its clear and convincing burden were genuine issues of fact upon which factfinders could disagree. The Court, therefore, reversed the grant of summary judgment and remanded while also vacating the dismissal of the inequitable conduct affirmative defense.

Finally, the Federal Circuit affirmed the finding that the trade dress of Mosaic’s wallets was functional. The Court found that Ridge provided unrebutted testimony and evidence demonstrating the functionality of each part of Mosaic’s asserted trade dress and the overall design. The Court affirmed the district court’s finding because Mosaic failed to “meaningfully dispute the relevant facts, even though it bears the burden” of demonstrating that the trade dress was not functional.

Mike Baldwin
Michael J. Baldwin focuses his practice on intellectual property litigation matters. Read Mike Baldwin's full bio.