N OTE : This disposition is nonprecedential. 

# United States **Court of Appeals**  **for the Federal Circuit**

______________________ GOLDEN EYE MEDIA USA, INC., Plaintiff

- Counterdefendant

- Appellee

FARZAN DEHMOUBED, JENNIFER DUVALL, Counterdefendants

- Appellees

v.

EVO LIFESTYLE PRODUCTS LIMITED, FKA TROLLEY BAGS UK LTD, Defendant

- Counterclaimant

- Appellant

______________________

2021

- 2096

______________________ Appeal from the United States District Court for the Southern District o f California in No. 3:18

- cv

- 02109

- BEN

LL, Senior Judge Roger T. Benitez.

______________________

Decided: June 22, 2022

______________________
C ODY R. L E J EUNE , LeJeune Law, PC, San Diego, CA, for appellee s.

M ATTHEW L. C UTLER , Harness, Dickey & Pierce, PLC, St. Louis, MO, for appellant. Also represented by Glenn E. Forbis, Troy MI. Case: 21-2096 Document: 51 Page: 1 Filed: 06/22/2022GOLDEN EYE MEDIA USA , INC

. v. EVO LIFESTYLE PRODUCTS LIMITED 2

______________________
Before L OURIE , S CHALL , and R EYNA , Circuit Judges

. L OURIE , Circuit Judge

. E vo Lifestyle Products Limited, formerly known as Trolley Bags UK Ltd (“TB UK”)

, appeals from a decision of the United States District Court for the Southern District of California granting summary judgment in favor of Golden Eye Media USA, Inc. (“GEM”)

. Th e court held that TB UK’s U.S. Patent D779,828 (the “’828 patent”) is invalid for reasons of functionality and obviousness, and that, even if it w ere valid, GEM did not infringe the patent or TB UK’s trademark. See Golden Eye Media USA, Inc. v. Trolley Ba gs UK Ltd. , 525 F. Supp. 3d 1145 (S.D. Cal. 2021) (“ Decision ”). We affirm

. B ACKGROUND TB UK owns the ’828 patent. This patent is directed to a reusable and foldable shopping bag that fits within a shopping cart. Figures 1

– 6 illustrate the claimed design. 

# 1'1 !~

FIG

. 1 FIG.2 FIG. 3

FIG

. 4 FIG .5 FIG.6 Case: 21-2096 Document: 51 Page: 2 Filed: 06/22/2022GOLDEN EYE MEDIA USA , INC

. v. EVO LIFESTYLE PRODUCTS LIMITED 3

’828 patent at F igs. 1

– 6. TB UK also claims a common law trademark for “TROLLEY BAGS. ” TB UK sells reusable shopping cart bags that use the mark “TROLLEY BAGS.” GEM sells reusable shopping cart bags that use the mark “LOTUS TROLLEY BAGS.”
In July 2017, TB UK se nt a cease

- and

- desist letter t o GEM, asserting that GEM’s sale of Lotus Bags infringed the ’828 patent and what it asserts is a “TROLLEY BAGS”

commo n law trademark. 1 In September 2018, GEM then brought a declaratory judgment action against TB UK in the district court. GEM requested that the court find that (1) GEM did not infringe the ’828 patent, (2) that the ’828 patent was invalid for (a) obviou sness over Doyle 2 and Brennan, 3 and (b) functionality, and (3) that GEM did not infringe TB UK’s common law trademark. Both parties then moved for summary judgment.
The district court granted GEM’s motion for summary judgment and held the ’828 patent in valid for functionality and obviousness, alternatively found that GEM did not infringe the ’828 patent
, and found that GEM did not infringe TB UK’s common law trademark.
TB UK appealed the district court’s grant of summary judgment. We have jurisdiction p ursuant to 28 U.S.C. §1295(a)(1).

1 As common law trademarks are created by use, s ee In re Int’l Flavors & Fragrances Inc. , 183 F.3d 1361, 1366 (Fed. Cir. 1999), this suit against products containing such a mark effectively concedes the mark’s existence.

2 Doyle, Irish Patent Pub. S2009/0718. Doyle is directed to a reusable bag system and is owned by TB UK.

3 Brennan et al., U.S. Patent 5,046,860

. Brennan is directed to reusable shopping bag assemblies. Case: 21-2096 Document: 51 Page: 3 Filed: 06/22/2022GOLDEN EYE MEDIA USA , INC

. v. EVO LIFESTYLE PRODUCTS LIMITED 4

D ISCUSSION We review the grant of summary judgment under the law of the regional circuit from which the case originates. See e.g.

, Grober v. Mako Prods., Inc. , 686 F.3d 1335, 1344 (Fed. Cir. 2012). The Ninth Circuit reviews a district court’s grant of summary judgm ent de novo. See e.g.

, Branch Banking & Tr. Co. v. D.M.S.I., LLC , 871 F.3d 751, 759 (9th Cir. 2017). Summary judgment is appropriate if,viewing the evidence in the light most favorable to the nonmoving party, the movant shows that there is no genuine di spute as to any material fact and the movant is entitled to judgment as a matter of law. See Whitman v. Mineta

, 541 F.3d 929, 931 (9th Cir. 2008); s ee also Celotex Corp. v. Catrett , 477 U.S. 317, 322 (1986).

I. Functionality

T he district court h e ld that the ’828 patent was invalid because it s design was dictated by functio n. T B UK argues that the district court errs in that conclusion by asserting that it misapplied the Sport Dimension five

- factor test relating to functionality

. TB UK alleges that in the process of misapplying the test, the court failed to resolve disputed facts in favor of TB UK , the non

- moving party

, and appliedthe wrong legal standard, finding the patented design “dictated by function” instead of it being “dictated solely by fun ction.” Appellant’s Br. at 13. GEM responds that the court properly applied the Sport Dimension test and correctly found the design of the ’828 patent to be dictated by function.

A district court’s finding that a patented design is dictated by function is reviewed for clear error. See Ethicon Endo

- Surgery, Inc. v. Covidien, Inc. , 796 F.3d 1312, 1328 (Fed. Cir. 2015). For a design to be protectable by a design patent , “the design m ust not be governed solely by function, i.e., that this is not the only possible form of the article that could perform its function.” Rosco, Inc. v. Mirror Lite Co.

, 304 F.3d 1373, 1378 (Fed. Cir. 2002). A design patent is Case: 21-2096 Document: 51 Page: 4 Filed: 06/22/2022GOLDEN EYE MEDIA USA , INC

. v. EVO LIFESTYLE PRODUCTS LIMITED 5

invalid if the design is “dict ated by the utilitarian purpose of the article.” High Point Design LLC v. Buyer’s Direct, Inc. , 730 F.3d 1301, 1315 (Fed. Cir. 2013) (internal quotation marks omitted). In determining whether a design is dictated by function, courts consider whether (1) “the protected design represents the best design,” (2) “alternative designs would adversely affect the utility of the specifi ed article,” (3) “there are any concomitant utility patents,” (4) “the advertising touts particular features of the design as havin g specific utility,” and (5) “there are any elements in the design or an overall appearance clearly not dictated by function.” Sport Dimension, Inc. v. Coleman Co. , 820 F.3d 1316, 1322 (Fed. Cir. 2016).
We agree with GEM that t he district court did not c ommit clear error when it found the design of the ’828 patent to be functional. The “availability of alternative designs [is] an important

— if not dispositive

— factor in evaluating the legal functionality of a claimed design.” Ethicon , 796 F.3d at 1329

– 30. After a th o rough analysis, the court found that the horizontal poles of the claimed design were necessary for the purpose of the bag to fit in a cart while standing upright. See Decision at 1188. The court then found that an alternative design, for the poles or other features, would directly and adversely impact the functionality of the bag system and therefore that the first , second

, and fifth S port D imension factors weighed in favor of invalidity. As for the third factor, whether there are any concomitant utility patents that shed light on the functionality of the U.S. design patent , the court found that Doyle, while owned by TB UK, was not classified as a utility patent in Ireland and that Brennan was not owned by TB UK. Based on these findings, the court found that this factor did not weigh in favor or against invalidity.

T he court noted that , regarding the fourth factor, TB UK’s advertisements touted the utility of the bags. The court cited numerous examples demonstrating this fact , includ ing a statement from TB UK’s website boasting that Case: 21-2096 Document: 51 Page: 5 Filed: 06/22/2022GOLDEN EYE MEDIA USA , INC

. v. EVO LIFESTYLE PRODUCTS LIMITED 6

the bags “halve the time at the checkout as packing is quicker and easier without the hassle of holding bags open.” Decision at 119 2. The court therefore found that this factor weighed in favor of invali dity. We consider that
t he se findings are not clearly erroneous, and thus we affirm its holding that the design of the ’828 patent is dictated by function. We also find that there are no genuine issues of material fact precluding summary judgment.

TB UK argu es that the district court did not consider all the alternative designs presented , but that was not necessary

. TB UK discussed two alternative designs: (1) using two, larger bags to fill a shopping car t , and (2) a bag system in which the designer cho oses not to fill the entire capacityof a shopping cart with the bags. The court properly disposed of th o se alternatives when it mentioned that “the only evidence of alternative designs [TB UK has] presented is that the ir bags could be smaller or bigger s uch that they would or would not fill the entire cart” and that these alternatives “directly impact[] the utility of the [’]828 [p]atent.” Decision at 1186.

II. Obviou s ness TB UK also appeals the district court’s invalidation of the patent on the ground of obviousness. Having affirmedthe patent’s invalidity for functionality we need not go further and review the obviousness determination. But, in the interest of thoroughness and because we are not the court of last resort, s ee Cardinal Chemical Co. v. Morton Int’l, Inc. , 508 U.S. 83 (1993) , we will address th at ground as well. TB UK argues that the district court should have found that factual issues preclude a finding of summary judgment. In addition, it argues that the court erred in deciding that Doyle was a primary reference and that secondary references could be combined with Doyle to invalidate the ’828 patent. TB UK notes that the United States Patent and Trademark Office (“USPTO”) determined in its Case: 21-2096 Document: 51 Page: 6 Filed: 06/22/2022GOLDEN EYE MEDIA USA , INC

. v. EVO LIFESTYLE PRODUCTS LIMITED 7

reexamination that Doyle was not invalidating prior art and that it was too different from the design of the ’ 828 patent to be considered a primary reference. TB UK asserts that the USPTO’s determination underscores the incorrectness of the court’s conclusion that no genuine issues of material fact existed.
GEM responds that the district court correctly determined that Doyle was a primary reference that exhibited design characteristics that were basically the same as in the ’828 patent. GEM adds that the court properly found that Brennan was a secondary reference that could have been combined with Doyle to create a design with the same overall visual appearance as the claimed design of the ’828 patent.

Obviousnes s is a question of law that is reviewed denovo, based on underlying factual questions that are reviewed for clear error. Honeywell Int’l, Inc. v. United States , 609 F.3d 1292, 1297 (Fed. Cir. 2010). The underlying factual inquiries include: (1) the scop e and content of the prior art; (2) the level of ordinary skill in the art; (3) the differences between the claimed invention and the prior art; and (4) objective evidence of non

- obviousness. Graham v. John Deere Co. of Kan. City , 383 U.S. 1, 17 (1966). Summary judgment of obviousness is appropriate if “the content of the prior art, the scope of the patent claim, and the level of ordinary skill in the art are not in material dispute, and the obviousness of the claim is apparent in light of these factors.” TriMed, Inc. v. Stryker Corp. , 608 F.3d 1333, 1341 (Fed. Cir. 2010) (citing KSR Int’l Co. v. Teleflex Inc. , 550 U.S. 398, 427 (2007)).

A determination of o bviousness in design patents require s a two

- step inquiry designed to determine whether a designer o f ordinary skill in the art would have combined prior art references to create a design with the same overall visual appearance as the claimed design. See Durling v. Spectrum Furniture Co. , 101 F.3d 100, 103 (Fed. Cir. 1996). Case: 21-2096 Document: 51 Page: 7 Filed: 06/22/2022GOLDEN EYE MEDIA USA , INC

. v. EVO LIFESTYLE PRODUCTS LIMITED 8

The first step is to identif y “a single reference, ‘ . . . something in existence, the design characteristics of which are basically the same as the claimed design.’” Id. (quoting In re Rosen , 673 F.2d 388, 391 (C.C.P.A. 1982)). To determine if a design is “basically the same,” the court looks to the “visual impression created by the patented design as a whole.” Id. This court has noted that “the trial court judgemay determine almost instinctively whether the two designs create basically the same visual impression, ” but “must comm unicate the reasoning behind th [ at ] decision.” Id.

In the second step, other references “may be used to modify [the primary reference] to create a design that has the same overall visual appearance as the claimed design.” Id. These secondary references must be “so related [to theprimary reference] that the appearance of certain ornamental features in one would suggest the application of those features to the other.” Id.
We agree with GEM that the design of the ’ 828 patent was properly determined to have been obvious at the time it was created

. In step one, the district court properly considered Doyle to be a primary reference. Despite Doyle having a different handle design and location, horizontal rods that differ in length and design, and a less rectangularshape compared to the ’828 patent’s design, the court concluded that the two designs created “basically the same” visual impression:

Doyle Patent: '828 Patent:



## ,.,, Case: 21-2096 Document: 51 Page: 8 Filed: 06/22/2022GOLDEN EYE MEDIA USA , INC

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Decision at 1198.

The district court’s conclusion is consistent with our precedent where we have found that primary references

may contain slight differences relativ e to a patented design. See Spigen Korea Co. v. Ultraproof, Inc. , 955 F.3d1379, 1383 (Fed. Cir. 2020) (explaining that “slight differences” do not preclude a “basically the same” finding). Regarding the difference in the handles, the court noted that “t he Doyle Patent merely illustrates the flexibility of the handles while the [’]828 patent shows the handles in an upright position.” Decision at 1206. The court next concluded that any perceived difference in the length of the bag’s horizontal rod is slight and does not preclude a finding that the bags are “basically the same.” Lastly, the court also found the difference in the shape of the bags to be only slight. The se findings regarding the differences between Doyle and the ’828 patent are not clearly erroneous, and thus we find that the court properly considered Doyle to be a primary reference.

In step two, the district court properly analyzed multiple secondary references and concluded that the combination of Doyle as a primary reference and Brenna n as a secondary reference rendered the ’828 patent obvious.Brennan contains similar handle stitching to the ’828 patent, and these handles combined with the bag shape and handles of Doyle would create a shopping cart bag that highly resembles the one cl aimed by the ’828 patent:

Decision at 1204. + Brennan



# ,,. ,

• I Case: 21-2096 Document: 51 Page: 9 Filed: 06/22/2022GOLDEN EYE MEDIA USA , INC

. v. EVO LIFESTYLE PRODUCTS LIMITED 10

The district court therefore did not commit clear error by combining Doyle and Brennan and determining that the combination of these two references would have rendered the ’828 patent obvious. Thus, we affirm th e court’s holding that the combination of Doyle and Brennan invalidated the ’828 patent ed design for being obvious.
In light of our affirmance of the district court’s separate holding s of invalidity on both functionality and obviousness , the court’s decisi on addressing infringement is moot. We thus do not address TB UK’s appeal from that portion of the court’s decision.

III. Trademark Infringement
TB UK argues that the district court improperlyweighed and critiqued underlying evidence when conducting its likelihood of confusion analysis relating to the trademark claim. GEM responds that TB UK failed to present any evidence showing a likelihood of confusion

, and th e court properly found that there was no genuine dispute of material fact concerning likelihood of confusion.
We have jurisdiction over the appeal of the districtcourt’s summary judgment ruling against TB UK’s trademark infringement claim because it was part of a complaint containing non

- frivolous claims of patent infringement. See Atari, Inc. v. JS & A Grp., In c. , 747 F.2d 1422, 1 4 27

– 30 (Fed. Cir. 1984) (discussing appellate jurisdiction over copyright and other non

- patent issues in the Federal Circuit when a complaint also includes a claim arising under patent law); see also Zenith Elecs. Corp. v. Exzec, Inc.

, 182 F.3d 1340, 1346 (Fed. Cir. 1999) (“Because the complaint contained patent infringement claims, the district court’s jurisdiction arose under 28 U.S.C. § 1338(a).This established the path of appeal, giving exclusive jurisdiction in this court pursuant to

. . . [] 1295(a)(1).”); Abbott Lab’ys v. Brennan , 952 F.2d 1346, 1349

– 50 (Fed. Cir. 1991)(“The path of appeal is determined by the basis of jurisdiction in the district court, and is not controlled by the Case: 21-2096 Document: 51 Page: 10 Filed: 06/22/2022GOLDEN EYE MEDIA USA, INC. v. EVO LIFESTYLE PRODUCTS LIMITED 11



### district court ' s decision or the substance of the issues that

are appealed.").

"In a trademark case , we apply the law of the applicable regional circuit, in this case , the Ninth Circuit." 

### Nautilus Grp., Inc. v. ICON Health & 

### Fitness, Inc.

, 372 F.3d 1330

, 1334 (Fed. Cir. 2004). "Likelihood of confusion is the type of mixed question [that is] suited 

### to clearly erroneous review. " 

### Levi Strauss & 

### Co. v. Blue Bell, Inc., 778 F.2d 1352

, 1355 (9th Cir. 1985) (en bane). The Ninth Circuit examines eight factors when evaluating trademark infringement claims. 

### AMF Inc. v. Sleekcraft Boats

, 599 F.2d 341

, 348- 49 (9th Cir. 1979). These eight factors are: (1) strength of the mark, (2) proximity of the goods in trade channels, ( 3) similarity of the marks, (4) evidence of actual confusion, (5) marketing channels used, (6) type of goods and the degree of care likely to be exercised by the purchaser

, (7) defendant ' s intent in selecting the mark, and (8) likelihood of expansion of the product lines. 

### Id.

vVe agree with GEM that the district court properly analyzed the 

### Sleekcraft factors and held that there was no genuine dispute of material fact as to noninfringement of TB UK ' s "TROLLEY BAGS " trademark. In analyzing the "trolley bag " logo of GEM's product and TB UK ' s product, the court first noted that the two logos were markedly dif

ferent:



### GEM's Logo TB UK's Logo Case: 21-2096 Document: 51 Page: 11 Filed: 06/22/2022GOLDEN EYE MEDIA USA , INC

. v. EVO LIFESTYLE PRODUCTS LIMITED 12

See Decision at 1220. A quick inspection, see above , shows the words T R OLLEY BAG to be of quite different size and location in the overall mark , and t he colors are also very different. Despite th ese difference s , the court construed TB UK’s trademark infringement claims to pertain to the use of “TROLL E Y BAG” in each logo. Under this construction, the court analyzed each of the Sleekcraft factors and found that

, while the proximity of the goods factor weighed in TB UK’s favor, all other factors weighed in GEM’s favor. The court also noted that

, despite both marks using the “TROLLEY BAG” term, the dominance of o the r logos on the bags, distinctive coloring, and overall appearance made the marks dissimilar. Lastly, the court pointed out that TB UK failed to provide evidence of actual confusion fro m use of the marks. For these reasons, the court found that there was no genuine dispute of material fact as to the likelihood of confusion and that TB UK’s common law trademark was not infringed. The court’s analysis of the Sleekcraft factors was not cl early erroneous, and we do not find any instancewhere the court overstepped its role by improperly weighing and critiquing underlying evidence. Thus, we affirm the court’s holding that the “TROLLEY BAGS” common law trademark was not infringed.

C ONCLUSION We have considered TB UK’s remaining arguments butfind them unpersuasive. For the foregoing reasons, the decision of the district court is affirmed

. AFFIRMED Case: 21-2096 Document: 51 Page: 12 Filed: 06/22/2022