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December 19, 2009

Clogged

Footwear importer Seaway sued Walgreens drug stores for selling those colorful plastic clogs, thereby infringing D529,263, D545,032, and D545,033. The district court booted the case in summary judgment because of anticipation by clog design patent D517,789, owned by Crocs. Seaway appealed, to a split decision on the crucial perspective of §102 in applying the "ordinary observer" test. After failing to address validity in its sea-change Egyptian Goddess decision, a CAFC panel plays catch-up, and drops the ball.

International Seaway Trading v. Walgreens et al (CAFC 2009-1237) precedential

Judge DYK penned this opinion, with which Judge Bryson concurred.

The PTO examiner had allowed the '032 and '033 patents over Crocs '789 patent.

The district court held that the ordinary observer test was the sole test of design patent invalidity under 35 U.S.C. § 102. Id. In granting summary judgment, the district court considered and compared the exterior portions of the designs of the patents-in-suit, but not the insoles of the designs, to the prior art. Id. at 1318-19. The district court concluded that comparison of the insoles was not required, holding "that the law requires a court to consider only those portions of the product that are visible during normal use, regardless of whether those portions are visible during the point of sale." Id. at 1315.

The CAFC alters its own case law to agree with the district court "in concluding that the ordinary observer test is the sole test for design patent invalidity under § 102."

While our cases have utilized the point of novelty test for infringement and anticipation, as we pointed out in Egyptian Goddess, 543 F.3d at 672, this test was not mandated by Smith v. Whitman Saddle Co., 148 U.S. 674 (1893), or precedent from other courts. In Whitman, the Supreme Court utilized only the ordinary observer test for determining infringement and invalidity, as did at least one later circuit case following Whitman (Bevin Bros. Mfg. Co. v. Starr Bros. Bell Co., 114 F. 362, 362 (C.C.D. Conn. 1902)).

Moreover, it has been well established for over a century that the same test must be used for both infringement and anticipation.4 This general rule derives from the Supreme Court's proclamation 120 years ago in the context of utility patents: "[t]hat which infringes, if later, would anticipate, if earlier." Peters v. Active Mfg. Co., 129 U.S. 530, 537 (1889). The same rule applies for design patents. See Bernhardt, 386 F.3d at 1378 (explaining that the test for determining anticipation of a design patent is the same as the test for infringement); Door-Master, 256 F.3d at 1312 (stating that the test for infringement is the same as the test for anticipation in the design patent context); Litton, 728 F.2d at 1440.

4 One possible exception is product by process claims. See Amgen Inc. v. F. Hoffmann-La Roche, Ltd., 580 F.3d 1340, 1370 (Fed. Cir. 2009) ("For product-by-process claims, that which anticipates if earlier does not necessarily infringe if later.")

In Egyptian Goddess, we abandoned the point of novelty test for design patent infringement and held that the ordinary observer test should serve as the sole test for design patent infringement. 543 F.3d at 678. The ordinary observer test originated in 1871 when the Supreme Court held

that if, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other.

Gorham Mfg. Co. v. White, 81 U.S. 511, 528 (1871). In Egyptian Goddess, we also refined the ordinary observer test by characterizing the ordinary observer as being "deemed to view the differences between the patented design and the accused product in the context of the prior art." 543 F.3d at 676. We explained:

When the differences between the claimed and accused design are viewed in light of the prior art, the attention of the hypothetical ordinary observer will be drawn to those aspects of the claimed design that differ from the prior art. And when the claimed design is close to the prior art designs, small differences between the accused design and the claimed design are likely to be important to the eye of the hypothetical ordinary observer.

Id. We further determined that the point of novelty test, as a second and free-standing requirement for proof of design patent infringement, was inconsistent with the ordinary observer test laid down in Gorham and was not mandated by Supreme Court cases or other precedent. Id. at 672.

In light of Supreme Court precedent and our precedent holding that the same tests must be applied to infringement and anticipation, and our holding in Egyptian Goddess that the ordinary observer test is the sole test for infringement, we now conclude that the ordinary observer test must logically be the sole test for anticipation as well. In doing so, we will prevent an inconsistency from developing between the infringement and anticipation analyses, and we will continue our well-established practice of maintaining identical tests for infringement and anticipation.

What the CAFC didn't agree with was not considering the entire design, instead of just the visible portion when in use. Referring to Contessa, 282 F.3d at 1377, upon which the district court relied:

The district court here misconstrued Contessa as requiring that the normal use of a clog be limited to the time when it is worn.

We explained that "normal use" in the design patent context extends from the completion of manufacture or assembly until the ultimate destruction, loss, or disappearance of the article. Id. at 1379-80 (citing In re Webb, 916 F.2d 1553, 1557-58 (Fed. Cir. 1990)). The same test necessarily applies to anticipation.

The defendants had glossed over the insoles as part of the design.

Walgreens and Touchsport also argue that the district court's error was harmless because the asserted differences between the insoles of the patents-in-suit and the prior art "were at most slight variations of design elements already present in the Crocs prior art." Appellees' Br. 51. We disagree. The insole pattern for the patents-in-suit is distinctly different than the Crocs insole pattern.

Seaway argued features that the court considered trivial. However they may proclaim the opposite, the courts simply cannot construct objective metrics for patent invalidity. In practice, KSR gives free reign to subjective opinion. And, with the 'points of novelty' test banished in name while remaining in force, so too for design patents.

Although the ordinary observer test requires consideration of the design as a whole, Egyptian Goddess, 543 F.3d at 675; Contessa, 282 F.3d at 1378; Braun, Inc. v. Dynamics Corp. of Am., 975 F.2d 815, 820 (Fed. Cir. 1992), this does not prevent the district court on summary judgment from determining that individual features of the design are insignificant from the point of view of the ordinary observer and should not be considered as part of the overall comparison. The mandated overall comparison is a comparison taking into account significant differences between the two designs, not minor or trivial differences that necessarily exist between any two designs that are not exact copies of one another. Just as "minor differences between a patented design and an accused article's design cannot, and shall not, prevent a finding of infringement," Litton, 728 F.2d at 1444, so too minor differences cannot prevent a finding of anticipation.

What comprises the threshold of "minor"? This whole case revolves around whether there is significance in the insole, a particular portion of the shoe, while the court blithely dismissed other portions, which Seaway argued significant, as "insignificant from the point of view of the ordinary observer and should not be considered as part of the overall comparison." This court must surely be of the faith that consistency is the hobgoblin of small minds.

Obviousness, like anticipation, requires courts to consider the perspective of the ordinary observer. Therefore, for the same reasons that the district court's failure to compare the insoles of the patented designs to the prior art designs precludes a finding of anticipation, it also precludes a finding of obviousness.

Affirmed-in-part. Reversed-in-part. Remanded.

In dissent, Judge Clevenger points out the elephant in the room: the rationale for the court's reversal was over a point of possible novelty (the insoles).

The majority thus concludes that the law permits dissection of a design as a whole into its component pieces. With laser-like focus, the fact finder is permitted to decide that the changes on the top of the clogs are trivial enough to sustain anticipation.

As recognized by the majority, the ordinary observer test requires assessment of the designs as a whole. See Egyptian Goddess v. Swisa, Inc., 543 F.3d 665, 675 (Fed. Cir. 2008) (en banc); Contessa Food Prods., Inc. v. Conagra, Inc., 282 F.3d 1370, 1378 (Fed. Cir. 2002); Oddzon Prods., Inc. v. Just Toys, Inc., 122 F.3d 1396, 1405 (Fed. Cir. 1997). I agree that the differences in the inner sole designs are to be assessed as part of the anticipation inquiry. But the differences in the inner sole designs must be appreciated in conjunction with all of the design differences. This is so especially with regard to the differing number and arrangement of the circular openings on the upper of the clogs.

The effect of the majority bifurcation of the insole design differences from the exterior design differences, and the piecemeal adjudication of the exterior design differences, is to treat the patents on remand as without any exterior design. The fact finder will only assess anticipation on the basis of design differences on the insoles. I think this violates the rule for anticipation that the designs have to be compared as a whole. The effect of the summation of all the design differences is what counts, not the comparison of differences one by one, isolated from each other. Such an approach invites the problems we sought to eliminate by rejecting the "point of novelty" test.

The majority has forged a new rule for design patent anticipation, if not for infringement as well. The new rule is that the "design as a whole" rule

does not prevent the district court on summary judgment from determining that individual features of the design are insignificant from the point of view of the ordinary observer and should not be considered as part of the overall comparison. The mandated overall comparison is a comparison taking into account significant differences between the two designs, not minor or trivial differences that necessarily exist between any two designs that are not exact copies of one another. Just as "minor differences between a patented design and an accused article's design cannot, and shall not, prevent a finding of infringement," Litton, 728 F.2d at 1444, so too minor differences cannot prevent a finding of anticipation.

The district court should be directed on remand to evaluate the differences in the designs as a whole. Partial judgments of anticipation on segments of a design prohibit assessment of designs as a whole, in violation of long-standing law, starting with Gorham.

Posted by Patent Hawk at December 19, 2009 1:58 AM | Design Patents

Comments

Is Seaway different than Crocs, Inc, which holds the patent for the Crocs? Thus, Seaway's Design Patents were improperly issued according to the CAFC?

Posted by: Michael Feigin, Patent Attorney at December 21, 2009 9:21 AM