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Intellectual Property law Blog
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Following the Egyptian Goddess
12-18-2009 [Ben Hanrahan] [Permalink]In a recent Federal Circuit case for design patent infringement involving footwear (International Seaway Trading Corp. v. Walgreens Corp. (2009-1237)), the Court abandoned the "point of novelty" test as applied in an anticipation analysis, and further clarified the Court's role in considering only those portions of the product that are visibale during "normal use."
In particular, while applying the "ordinary observer test," and abandoning the "point of novelty test" in its anticipation analysis, the District Court held that Seaway's U.S. Patent No. D529,263 ("the '263 patent") was invalid as anticipated by U.S. Patent No. D517,789 to Crocs, Inc. In its analysis, the District Court did not consider the insoles of the shoes, as the insoles are hidden by the user's foot during "normal use." Figures representative of the designs in the '263 and '789 patents are reproduced below.
Figure 2 in the '263 Patent Figure 1 in the '789 Patent
Applying the decision in Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008), which held that the "point of novelty test" should no longer be used in the analysis of infringement, and that the "ordinary observer test" is the sole test for determining whether a design patent has been infringed, the Federal Circuit agreed with the District Court and similarly abandoned the "point of novelty test" for anticipation as well. The Federal Circuit stated that "[i]n 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."
The Federal Circuit, however, further stated that the "normal use" of the shoe is not limited to the time when it is worn, and that "[t]he wearer may remove the clog temporarily to stretch out his or her toes, leave the clogs on the beach to go for a swim, or engage in countless other activities that would leave the insole exposed." The Figures below illustrate the insoles of the shoes in the '263 and '789 patents.
Figure 6 in the '263 Patent Figure 6 in the '789 Patent
Recognizing the different insole patterns, the Federal Circuit remanded the case for further proceedings on whether the differences are suffient enough to bar a finding of invalidity.