Int’l Seaway Trading Corp. v. Walgreens Corp.
Federal Circuit, 2009-1237, December 17, 2009
Michael Raucci, Sughrue Mion PLLC – mraucci@sughrue.com
In Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008) (en banc), the Federal Circuit held that “the ‘point of novelty’ test should no longer be used in the analysis of a claim of design patent infringement” and that “the ‘ordinary observer’ test should be the sole test for determining whether a design patent has been infringed.” Egyptian Goddess, 543 F.3d at 678.
In Seaway, the Federal Circuit held that Egyptian Goddess, and well established precedent that the same test must be used for both infringement and anticipation in both utility and design patents, requires a similar change in the standard for anticipation. Accordingly, Seaway holds that the ordinary observer test is also the sole test for determining whether a design patent is invalid due to anticipation under 35 U.S.C. § 102.
Seaway, an importer and designer of footwear, sued Walgreens, a retail drug store that sells footwear and other products, and Touchsport, an importer of footwear to retailers, including Walgreens, for infringement of Seaway’s ‘263, ‘032 and ‘033 patents (“the patents-in-suit”). The patents-in-suit claim designs for casual, lightweight footwear, typically referred to as “clogs,” which, generally speaking, are quite similar to shoes sold under the Crocs™ brand.
The district court granted summary judgment of anticipation, finding that the patent-in-suit were anticipated by the 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, and on appeal, the Federal Circuit agreed and affirmed the lower court.
Seaway, however, also argued on appeal that, even if the ordinary observer test is found to be the sole test for anticipation under § 102, the district court misapplied the test by failing to compare the entirety of the patented designs with the Crocs ‘789 patent. Specifically, the district court, relying on Contessa Food Prods., Inc. v. Conagra, Inc., 282 F.3d 1370 (Fed. Cir. 2002), believed that it only had to consider “those portions of the product that are visible during normal use, regardless of whether those portions are visible during the point of sale.” Accordingly, the district court did not consider any aspects of the insoles of the shoes because that portion of the shoe would be hidden by the wearer’s foot.
The Federal Circuit held that the district court misconstrued Contessa. The normal use of a clog should not be limited to the time when it is worn. Instead, normal use in a design patent content should extend from the completion of manufacture or assembly until the ultimate destruction, loss, or disappearance of the article. See Contessa, 282 F.3d at 1379. The insole of the shoe can be seen, for example, when the wearer takes the shoes off. Accordingly, the Federal Circuit vacated and remanded for a determination of whether the differences between the insole patterns in the patents-in-suit and in the Crocs ‘789 patent bar a finding of anticipation or obviousness.
As a slight word of caution, in a partially dissenting opinion, Senior Circuit Judge Raymond Clevenger wrote that “the ordinary observer test requires assessment of the designs a whole,” and that while “the differences in the inner sole designs are to be assessed as part of the anticipation inquire”, the “district court should be directed on remand to evaluate the differences in the designs as a whole.” Note: The Federal Circuit commented in footnote 4 of Seaway that one possible exception to the general rule that the same test must be used in infringement and anticipation is product by process claims. See Amgen Inc. v. F. Hoffman-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.”).
First published in the Sughrue Review, December 2009