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February 25, 2010


The International Trade Clowns (ITC) handed a crock to clog maker Crocs when it asserted 6,993,858 and D517,789: '858 was found obvious and '789 not infringed. Crocs squealed and appealed to the CAFC, which stepped in it and splattered the ITC with both feet: utility and design patent case law.

Crocs v. ITC and Double Diamond Distribution and Holey Soles Holdings and Efferevescent (CAFC 2008-1596) precedential

Design Patent "Ordinary Observer"

[Reader beware. Backhanded Zen ahead.] Nothing defines how something looks by how it's described. In other words, a thousand words do not a picture make.

With respect to the design patent, the '789 patent, the administrative judge provided a detailed verbal claim construction...

The CAFC threw a subdued fit with the sub-dude ITC nitwit.

This court has cautioned, and continues to caution, trial courts about excessive reliance on a detailed verbal description in a design infringement case. See, e.g., Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 679 (Fed. Cir. 2008) (en banc). In Egyptian Goddess, this court warned that misplaced reliance on a detailed verbal description of the claimed design risks undue emphasis on particular features of the design rather than examination of the design as a whole. Id. at 679-80. In many cases, the considerable effort in fashioning a detailed verbal description does not contribute enough to the infringement analysis to justify the endeavor. See id. at 680. Depictions of the claimed design in words can easily distract from the proper infringement analysis of the ornamental patterns and drawings.

Design patents are typically claimed as shown in drawings, and claim construction must be adapted to a pictorial setting. See, e.g., Contessa Food Prods., Inc. v. Conagra, Inc., 282 F.3d 1370, 1377 (Fed. Cir. 2002) (construing a design patent claim as meaning "a tray of a certain design as shown in Figures 1-3"). Thus an illustration depicts a design better "than it could be by any description and a description would probably not be intelligible without the illustration." Dobson v. Dornan, 118 U.S. 10, 14 (1886). "[A]s a rule, the illustration in the drawing views is its own best description." Manual of Patent Examining Procedure § 1503.01 (8th ed. 2006).

This case shows the dangers of reliance on a detailed verbal claim construction. The claim construction focused on particular features of the '789 patent design and led the administrative judge and the Commission away from consideration of the design as a whole. This error is apparent in the Commission's explicit reference to two details required by the written claim construction but not by the '789 drawings: (1) a strap of uniform width, and (2) holes evenly spaced around the sidewall of the upper.

A patented design is considered in view of an "ordinary observer": an experienced observer whose perceptive awareness of detail is keen, but does not sweat minor details by losing sight of the overriding motif.

In determining whether an accused product infringes a patented design, this court applies the "ordinary observer" test, without any "point of novelty" perspective. Egyptian Goddess, 543 F.3d at 678. To show infringement under the proper test, an ordinary observer, familiar with the prior art designs, would be deceived into believing that the accused product is the same as the patented design. See id. at 681. When the differences between the claimed and accused designs are viewed in light of the prior art, the attention of the hypothetical ordinary observer may be drawn to those aspects of the claimed design that differ from the prior art. Id. If the claimed design is close to the prior art designs, small differences between the accused design and the claimed design assume more importance to the eye of the hypothetical ordinary observer. Id. The ordinary observer, however, will likely attach importance to those differences depending on the overall effect of those differences on the design. Id. Even if the claimed design simply combines old features in the prior art, it may still create an overall appearance deceptively similar to the accused design. In that case, this court will uphold a finding of infringement. Id. at 677-78. In other words, "the deception that arises is a result of the similarities in the overall design, not of similarities in ornamental features in isolation." Amini Innovation, 439 F.3d at 1371. The ordinary observer test applies to the patented design in its entirety, as it is claimed. See Braun, Inc. v. Dynamics Corp. of Am., 975 F.2d 815, 820 (Fed. Cir. 1992). "[M]inor differences between a patented design and an accused article's design cannot, and shall not, prevent a finding of infringement." Payless Shoesource, 998 F.2d at 991 (quoting Litton Sys. Inc. v. Whirlpool, 728 F.2d 1423, 1444 (Fed. Cir. 1984)).

The ITC made a map of the territory, declared the map to be the territory, and missed the forest for the trees.

Turning to this case, the Commission placed undue emphasis on particular details of its written description of the patented design. Those details became a mistaken checklist for infringement. Without a view to the design as a whole, the Commission used minor differences between the patented design and the accused products to prevent a finding of infringement. In other words, the concentration on small differences in isolation distracted from the overall impression of the claimed ornamental features.

Practicing What You Complain About

A company lodging a complaint with the ITC against importers must practice the patent(s) asserted.

One requirement of a patent-based section 337 action is that a domestic industry "relating to the articles protected by the patent . . . exists or is in the process of being established." 19 U.S.C. § 1337(a)(2) (2006). To determine the relationship between a domestic industry and protected articles (the "technical prong" of the domestic industry requirement), the Commission determines whether the industry produces articles covered by the asserted claims. The test for the technical prong of the industry requirement "is essentially the same as that for infringement, i.e., a comparison of domestic products to the asserted claims." Alloc, Inc. v. Int'l Trade Comm'n, 342 F.3d 1361, 1375 (Fed. Cir. 2003). In other words, the technical prong requires proof that the patent claims cover the articles of manufacture that establish the domestic industry. Put simply, the complainant must practice its own patent.

Because the test for the technical prong is essentially the same as for infringement, this court uses the ordinary observer test to compare Crocs's own shoe products to the '789 patent design. This court has stated that test above. Once again, the test applies best in a side-by-side comparison of the drawings of the '789 patent design and the Crocs products.

Based upon faulty perception of design, the ITC had found that Crocs hadn't practiced its design patent. The CAFC concluded that "Crocs satisfies the technical prong of the domestic industry requirement."


Obviousness is a question of law based on underlying factual inquiries including: (1) the scope and content of the prior art; (2) the level of ordinary skill in the art; (3) the differences between the prior art and the claimed invention; and (4) the extent of any objective indicia of non-obviousness. Monarch Knitting Mach. Corp. v. Sulzer Morat GMBH, 139 F.3d 877, 881 (Fed. Cir. 1998). This court reviews the Commission's legal determinations without deference and its factual findings for substantial evidence. Corning Glass Works v. U.S. Int'l Trade Comm'n, 799 F.2d 1559, 1565 (Fed. Cir. 1986). Substantial evidence is "such relevant evidence as a reasonable mind might accept as adequate to support a conclusion." Universal Camera Corp. v. NLRB, 340 U.S. 474, 477 (1951) (quoting Consol. Edison Col. v. NLRB, 305 U.S. 197, 229 (1938)).

The error on tap was not grasping a foam strap. ITC fidelity to reality was encumbered by their imbecility.

The Commission relied on two prior art references to find the '858 patent obvious: (1) the Aqua Clog (the base of the '858 shoe); and (2) the Aguerre '249 patent. The '858 patent, however, is not simply a combination of elements found in the prior art. The '858 invention includes a foam strap riveted to a foam base with direct contact--an important part of the combination not in the prior art.

The record shows that the prior art would actually discourage and teach away from the use of foam straps. An ordinary artisan in this field would not add a foam strap to the foam Aqua Clog because foam was likely to stretch and deform, in addition to causing discomfort for a wearer. The prior art depicts foam as unsuitable for straps.

Despite the prior art warnings against inelastic and non-adjustable foam straps, the '858 patent employed foam without a buckle or some other similar adjustment mechanism. Moreover the '858 patent riveted the inelastic foam directly to the base of the footwear. This claimed feature defied the prior art's caution against the poor characteristics of a foam strap. Indeed no prior art reference disclosed a foam strap riveted to a shoe.

The record shows that Crocs's expert testified that artisans of ordinary skill in this art thought that foam shoe components connected through perforations such as by stitching or riveting were excessively prone to tearing. To minimize this record evidence, the Commission relied on In re Gurley, in which this court stated that a "known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use." 27 F.3d 551, 553 (Fed. Cir. 1994). In this case, however, foam straps were not simply "somewhat inferior." Rather the prior art showed that foam was an unsuitable material for shoe straps. Although known in the art, foam was known as unsuitable. The Commission unreasonably determined that foam straps were known in the art without acknowledging that those prior art references rendered the material out of place for use as a strap. Thus, the Commission could not properly conclude that a person of ordinary skill would use foam to attach a foam base portion to a wearer.

The Commission also held that choosing foam as the material for a strap for a shoe that is otherwise made of foam is a logical modification because it produces a shoe of uniform composition. To the contrary, a foam strap is not a logical modification because foam was known to be an unsuitable material that was prone to tearing. One of ordinary skill would have no reason to use foam straps in combination with a foam base portion. Thus, the new combination would not have been obvious at the time of the invention of the '858 patent.

Even if the '858 patent were a combination of known elements according to their established functions--which it is not as foam straps were not in the prior art--it yields more than predictable results; thus, it is non-obvious. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).

The doctrine of secondary considerations of non-obviousness gets a workout.

Secondary considerations "can be the most probative evidence of non-obviousness in the record, and enables the . . . court to avert the trap of hindsight." Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 960 (Fed. Cir. 1986). Judge Learned Hand appreciated the importance of secondary considerations:

In appraising an inventor's contribution to the art, as we have often said, the most reliable test is to look at the situation before and after it appears. . . . Courts, made up of laymen as they must be, are likely either to underrate, or to overrate, the difficulties in making new and profitable discoveries in fields with which they cannot be familiar; and, so far as it is available, they had best appraise the originality involved by the circumstances which preceded, attended and succeeded the appearance of the invention . . . . We have repeatedly declared that in our judgment this analysis [evidence of secondary considerations] is more reliable than prior conclusions drawn from vaporous, and almost inevitably self-dependent, general propositions.

Safety Car Heating & Lighting Co. v. Gen. Elec. Co., 155 F.2d 937, 939 (2d Cir. 1946). Secondary considerations "may often establish that an invention appearing to have been obvious in light of the prior art was not." Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1538 (Fed. Cir. 1983). Indeed this court has recently reiterated: "This evidence is not just a cumulative or confirmatory part of the obviousness calculus but constitutes independent evidence of nonobviousness." Ortho-McNeil Pharm., Inc. v. Mylan Labs., Inc., 520 F.3d 1358, 1365 (Fed. Cir. 2008) (citing Catalina Lighting, Inc. v. Lamps Plus, Inc., 295 F.3d 1277, 1288 (Fed. Cir. 2002) ("Objective indicia may often be the most probative and cogent evidence of nonobviousness in the record.") (internal citation omitted)).

The point here was that Crocs' patented design is what made the shoe a success.

The Commission found that three models of Crocs shoes practice claims 1 and 2 of the '858 patent: the Beach, Cayman, and Kids Cayman shoes. It found that those three models of Crocs shoes have enjoyed a great deal of commercial success. A prima facie case of nexus is made when the patentee shows both that there is commercial success, and that the product that is commercially successful is the invention disclosed and claimed in the patent. See In re GPAC Inc., 57 F.3d 1573, 1580 (Fed. Cir. 1995). Once the patentee demonstrates a prima facie nexus, the burden of coming forward with evidence in rebuttal shifts to the challenger. See Demaco Corp. v. F. Von Lansgdorff Licensing Ltd., 851 F.2d 1387 (Fed. Cir. 1988).

Because the Commission found, based on substantial evidence, that Crocs shoes practice the '858 patent and that the Crocs shoes were commercially successful, Crocs established a prima facie case of nexus. The record discloses little or no evidence to rebut this prima facie case of nexus. This court is aware that many market forces unrelated to the inventiveness of the patent may influence commercial success, but the intervenors must make a convincing case that those market forces indeed were the likely cause of the success. This record does not show any effort to make that rebuttal case. In the absence of a rebuttal, Crocs may add its commercial success to its proofs of non-obviousness. This court gives even more credit to the administrative judge's finding of substantial industry praise for the claimed invention and the products covered by the claimed invention. Still another objective measure tips the scale farther in the direction of non-obviousness, namely the Commission's finding of copying. Copying may indeed be another form of flattering praise for inventive features. In the absence of any record evidence attributing these secondary considerations to causes other than the claimed invention, Crocs may rely on this added support for non-obviousness.

In light of the prior art teaching away from the claimed invention and the claimed features that do not appear in the prior art, this court detects several reasons at the time of the invention that an ordinary artisan would not have been motivated even to try, let alone make, this inventive combination. In addition, the secondary considerations supply additional evidence of non-obviousness. Thus, this court reverses the Commission's holding that the '858 patent would have been obvious and easily attainable at the time of invention.

Reversed and remanded.

Posted by Patent Hawk at February 25, 2010 11:24 PM | ITC


What a shame that those asserting the claim to be obvious were untrained in the application of the EPO's Problem and Solution Approach to the investigation of what's obvious and what not. For if they had attacked the claim in the saame way as a sharp trained experienced EPO Examiner, I wager the claim would not have survived at the CAFC (despite the evidence of commercial success).

I concede, I haven't read the Decision yet, but I just wanted to get the thread off to a flying start.

I see that the Decision is Precedential. Does that mean that every attorney, with every pending claim, can now say "To be fair, let me through to issue now because, one day, I will have evidence of commercial success"?

Posted by: MaxDrei at February 26, 2010 2:07 AM

How can one person ask such inane drivel passing as questions time and time again? You would think after the first 500 of these postings he would run out of material, yet it never ends.

It wouldn't matter a lick of those asserting the claim to be obvious were trained in the application of the EPO's Problem and Solution Approach. Did you happen to note that this is a Federal Circuit case? Do you know the law of what country the Federal Circuit applies? No? I didn't think so.

A pre-law student wouldn't be dumb enough to ask the last question.

Everytime you show up, it is like someone playing Marilyn Manson during a Mozart concert. People just look at each and ask themselves, "is this guy for real? or is he just simply mad?"

To me, the answer to that question is plain obvious.

Posted by: Passing through at February 26, 2010 7:52 AM

I don't care what they say MD, I don't think you're insane. Are you aware of the Trilateral Manual of Comparative Practices? See, http://www.uspto.gov/ip/global/patents/ir_pat_trilateral.jsp

Posted by: Jules at February 26, 2010 8:18 AM

Thanks Jules. I can well understand the Passing reaction. Imagine a surgeon who is practising the techniques he has been using for 20 years. Then some other surgeon comes along and callously observes "Your patient would not be dead now, if you had applied the surgical procedures we use in the EPO". Annoying, what?

Passing, what I am on about is this.

EPO-PSA forces attention on exactly which technical features deliver which technical effects. After some time, it becomes an automatic instinct, to explore that connection, exhaustively. What it does is to expose, amongst other things, when the reason for the "commercial success" is not the combination of technical features recited in the claim under scrutiny.

Please understand. I'm not saying that the USA must adopt EPO-PSA. All I'm saying is that a working knowledge of EPO-PSA exposes arguments that can help an advocate show to a court why the claim should be found bad.

Readers are no doubt wondering: why do my postings provoke such an insanely heated reaction? Why not just ignore them?

Posted by: MaxDrei at February 26, 2010 10:36 AM


I, for one, don't find your thoughts even close to being "inane." Frankly, I enjoy getting your EPO perspective, as well as that of Paul Cole. That doesn't mean we have to agree, but getting a different perspsective does help me challenge whether my own thinking is correct or needs revision.

Posted by: EG at February 26, 2010 11:02 AM

Gee thanks EG and Jules for that encouragement. I wasn't sure whether I was inane or insane or both, so it's good to know I'm neither. I still haven't read the Crocs Decision. After I have read it, I may have more to say, despite the efforts of Passing to deter me.

Trilateral is all very worthy, but there is of course still far too wide a chasm to bridge. Why, just in Europe, hardly anybody knows how to operate EPO-PSA. I fear I must keep on with my proslytising (spelling??).

Posted by: MaxDrei at February 26, 2010 11:33 AM


It looks like somebody is trying to get a flying start over at Patently-O by signing your name in the body of a post, but signing IANAE in the signature line.

I'm not sure if you would take that person's liberty with your pseudonym as an insult or as a compliment.

Posted by: breadcrumbs at February 26, 2010 2:08 PM

Bread thanks. Saw it already. Didn't understand, so don't know whether to feel insulted or complimented. Whatever, as far as I can see, the poster is not passing himself off as me. I take it he is aiming rather at a parody of me. That's legit I imagine, in blogging ethics.

Posted by: MaxDrei at February 26, 2010 2:48 PM

Bread thanks. Saw it already. Didn't understand, so don't know whether to feel insulted or complimented. Whatever, as far as I can see, the poster is not passing himself off as me. I take it he is aiming rather at a parody of me. That's legit I imagine, in blogging ethics.

Posted by: MaxDrei at February 26, 2010 2:53 PM