## Facts

- Jeffrey W. Hoop and Stephen E. Hoop (the “Hoop brothers”) conceived a design for eagle-shaped motorcycle fairing guards and made sketches of the design.
- The Hoop brothers enlisted Mark R. Hoop (a metal die caster) and Lisa J. Hoop (a graphic designer) to prepare detailed drawings and three-dimensional models suitable for a design-patent application.
- Mark and Lisa signed nondisclosure agreements while preparing the drawings and models.
- The parties attempted to negotiate a manufacturing arrangement, but the negotiations failed.
- The Hoop brothers filed a design-patent application in November 1999.
- After the relationship soured, Mark and Lisa filed their own design-patent application in March 2000 using the same drawings they had prepared for the Hoop brothers.
- The Hoop brothers’ design patent issued first as U.S. Design Patent No. 428,831 (Aug. 1, 2000).
- Mark and Lisa later obtained an identical design patent, U.S. Design Patent No. 431,211 (Sept. 26, 2000).
- The Hoop brothers requested PTO reexamination of Mark and Lisa’s patent, and the examiner rejected it as anticipated by the Hoop brothers’ earlier-issued patent.
- Mark and Lisa sued the Hoop brothers in federal district court for patent infringement (and related claims challenging the Hoop brothers’ rights in the design).
- The Hoop brothers counterclaimed for infringement and moved for a preliminary injunction to stop Mark and Lisa from making, using, selling, or offering for sale fairing guards using the patented design.
- The district court granted a preliminary injunction, finding the Hoop brothers were likely the true inventors, likely to sustain the validity of their patent, and likely to prove infringement.
- Mark and Lisa appealed the preliminary injunction to the U.S. Court of Appeals for the Federal Circuit.

## Issues

1. Whether the district court abused its discretion in granting a preliminary injunction by finding the Hoop brothers likely to succeed on the merits, including that they were the true inventors of the patented design.
2. Whether the district court’s inventorship-related findings (distinguishing conception of the design from preparation of drawings/models) supported the conclusion that the Hoop brothers were likely to sustain validity and prove infringement.

## Decision

- The Federal Circuit affirmed the preliminary injunction.
- The court held the district court did not abuse its discretion in concluding the Hoop brothers were likely to succeed in sustaining the validity of their design patent.
- The court found the record supported the district court’s view that the Hoop brothers likely conceived the ornamental design and that Mark and Lisa’s work primarily implemented and refined that design for the patent application.
- Because likelihood of success on the merits was adequately supported, the Federal Circuit left the injunction in place.

## Legal Principles

- A preliminary injunction in a patent case is reviewed for abuse of discretion; underlying factual findings are reviewed for clear error, and legal determinations are reviewed de novo.
- To obtain a preliminary injunction, the movant must show, among other factors, a likelihood of success on the merits (including that the patent is likely valid and likely infringed).
- Design-patent inventorship depends on conception of the overall ornamental appearance claimed in the patent; providing skilled services such as drafting, making models, or preparing castings, without contributing to the inventive aspects of the design, does not make one an inventor.
- When competing parties claim the same design, evidence such as earlier sketches, the course of dealings, and PTO actions (including reexamination rejecting a later-issued identical patent) can support a finding, at the preliminary stage, that one side is likely to prove inventorship and validity.

## Conclusion

The Federal Circuit affirmed the preliminary injunction because the district court acted within its discretion in concluding, based on the evidence and the parties’ competing patent filings, that Jeffrey and Stephen Hoop were likely the true inventors of the eagle-shaped fairing-guard design and were likely to succeed in proving their design patent valid and infringed by Mark and Lisa Hoop.


Hoop v. Hoop, 279 F.3d 1004 (2002)