Like 'em or loath 'em, those plastic clogs keep IP lawyers in business. In International Seaway Trading Corp. v. Walgreens Corp., No. 2009-1237 (Fed. Cir. December 17, 2009), the issue was validity of three US Design Patents Nos. D529,263, D545,032 and D545,033, which were held to have been anticipated by an earlier patent U.S. Design Patent No. D517,789 (assigned to, yes, you've guessed it, Crocs Inc.). The registered designs looked much like the prior art, except for the pattern on the soles.The major issue on appeal was whether the first instance had been correct to apply the "ordinary observer" test (recently held by the CAFC in Egyptian Goddess to be applicable to infringement) to validity, as we have argued on this blog.
Pleasingly, the CAFC decided exactly that:
"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."
A secondary issue was whether the first instance had been correct to decide 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.”
The CAFC decided that they could not ignore the pattern on the soles, as this would not be visible in use. The CAFC held that this could not be ignored, as "use" included point of sale, at which the soles would be visible, and that previous case law requiring all features shown in a design patent to be considered was applicable. They therefore referred the case back for reconsideration of the effect of the difference in the soles on validity.
There was a minority partial dissent on one point from Judge Clevenger. He considered that the majority had created a rule allowing parts of the design to be ignored and allowing the district court on summary judgment to determine 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."
We tend to think both sides have a point here. The issue isn't as simple as whether you should just allow or ignore features - a more sophisticated analysis would weight them, ignoring none but according less significance to some. So, for example, I have filed car designs which include a view of the underside of a car - but does anyone know or care what it looks like? (This is a rhetorical question, before all you car buffs reply!) Any thoughts from US readers?
