09/11/13

High Point Design v. Meijer: Reviewing Design Patent Invalidation Inquiries

Category: Design Patents 
 
 
 
 By: Jesus Hernandez, Blog Editor/Contributor 
 
TitleHigh Point Design v. Meijer, Inc., No. 2012-1455 (Fed. Cir. Sept. 11, 2013).
Issue(s)[1a] “First, BDI asserts that the court erred by applying an “ordinary observer” standard, because this court’s case law requires application of an “ordinary designer” standard in an obviousness analysis relating to a design patent. […]. [1b] Second, BDI argues that the district court failed to properly communicate its reasoning in either step of the obviousness analysis [by providing a brief description of the design patent]." High Point Design, at * 13 (text added).
[2] “[Did the court err] by finding the claimed design [of a slipper] invalid merely because the design contains elements that perform functions [associated with foot wear][?]" High Point Design, at *20 (text added).
Holding(s)[1] "The use of an 'ordinary observer' standard to assess the potential obviousness of a design patent runs contrary to the precedent of this court and our predecessor court, under which the obviousness of a design patent must, instead, be assessed from the viewpoint of an ordinary designer." High Point Design, at * 14-15 (text added). "[Also, providing a brief description of a design patent] represents 'too high a level of abstraction' by failing to focus 'on the distinctive visual appearances of the reference and the claimed design.'" High Point Design, at * 16-17 (text added).
[2] "This analysis [of invalidating an entire design patent because some aspects are functional] contravenes this court’s precedent: [A] distinction exists between the functionality of an article or features thereof and the functionality of the particular design of such article or features thereof that perform a function. Were that not true, it would not be possible to obtain a design patent on a utilitarian article of manufacture . . . ." High Point Design, at *21 (text added).
 

Procedural History“Buyer’s Direct, Inc. (“BDI”) appeals from a final judgment of the United States District Court for the Southern District of New York holding BDI’s asserted design patent invalid on summary judgment and also dismissing BDI’s trade dress claims with prejudice.” High Point Design, at * 2.

Legal Reasoning (O’MALLEY, SCHALL, and WALLACH)
[1][a] Invalidity Based on Obviousness: Ordinary Observer v. Ordinary Designer
District Court Finding"The overall visual effect created by the Woolrich prior art is the same overall visual effect created by the ’183 patent. To an ordinary observer, they are the same slippers. The only difference between the slippers relates to the sole of the slippers, which is quite minor in the context of the overall slipper." High Point Design, at * 9.
Fed. Cir. Review"The use of an “ordinary observer” standard to assess the potential obviousness of a design patent runs contrary to the precedent of this court and our predecessor court, under which the obviousness of a design patent must, instead, be assessed from the viewpoint of an ordinary designer. […] In re Nalbandi- an, 661 F.2d 1214, 1216 (CCPA 1981) (explicitly rejecting the “ordinary observer” standard for assessing the obvi- ousness of design patents, as set forth in In re Laverne, 356 F.2d 1003 (CCPA 1966), and holding: “In design [patent] cases we will consider the fictitious person identified in § 103 as ‘one of ordinary skill in the art’ to be the designer of ordinary capability who designs articles of the type presented in the application.”)[…] Given this precedent, the district court erred in applying the ordinary observer standard to assess the obviousness of the design patent at issue." High Point Design, at *14-15.
[1][b] Invalidity Based on Obviousness: the Durling Test
Legal Standard“When assessing the potential obviousness of a design patent, a finder of fact employs two distinct steps: first, “one must find a single reference, a something in existence, the design characteristics of which are basically the same as the claimed design”; second, “[o]nce this primary reference is found, other references may be used to modify it to create a design that has the same overall visual appearance as the claimed design.” Durling v. Spectrum Furniture Co., 101 F.3d 100, 103 (Fed. Cir. 1996) […] Under the first step, a court must both “(1) discern the correct visual impression created by the patented design as a whole; and (2) determine whether there is a single reference that creates ‘basically the same’ visual impression.” Durling, 101 F.3d at 103." High Point Design, at * 12.
(1) Discerning the Correct Visual Impression
District Court Finding"The court characterized the ’183 patent as disclosing 'slippers with an opening for a foot that contain a fuzzy (fleece) lining and have a smooth outer surface.'" High Point Design, at *6.
Fed. Cir. Review"As to the first part of the first step—“discern[ing] the correct visual impression created by the patented design as a whole”—the district court erred by failing to translate the design of the ’183 patent into a verbal description. […] The closest to the necessary description was the court’s comment characterizing the design in the ’183 patent as “slippers with an opening for a foot that can contain a fuzzy (fleece) lining and have a smooth outer surface.” […] On remand, the district court should add sufficient detail to its verbal description of the claimed design to evoke a visual image consonant with that design." High Point Design, at *16-17.
(2) Creating 'Basically the Same' ImpressionFed. Cir. Review"As to the second part of the first step—“determin[ing] whether there is a single reference that creates ‘basically the same’ visual impression”—the court erred by failing to provide its reasoning, as required under this court’s precedent. […] Absent such reasoning, we cannot discern how the district court concluded that the Woolrich Prior Art was “basically the same as the claimed design,” so that either design could act as a primary reference. On remand, the district court should do a side-by-side comparison of the two designs to determine if they create the same visual impression. High Point Design, at *17.
[2]. Invalidity Based on Functionality
Legal Standard
"[A] design patent can be declared invalid if the claimed design is “primarily functional” rather than “primarily ornamental,” i.e., if 'the claimed design is ‘dictated by’ the utilitarian purpose of the article.' […] When performing this assessment, a court should view the claimed design 'in its entirety, for the ultimate question is not the functional or decorative aspect of each separate feature, but the overall appearance of the article.'" High Point Design, at *19.
"Assessing various factors may help determine whether a claimed design, as a whole, is “dictated by” functional considerations: [1] whether the protected design represents the best design; [2] whether alternative designs would adversely affect the utility of the specified article; [3] whether there are any concomitant utility pa- tents; [4] whether the advertising touts particular features of the design as having specific utility; [5] and whether there are any elements in the design or an overall appearance clearly not dictated by function." High Point Design, at *19.
District Court Finding"It is a slipper that completely covers the foot; that is a functional design to provide complete foot warmth and protection. That’s the primary function of innumerable slippers. The slipper at issue has a fuzzy interior for comfort—again, a functional characteristic that many slippers share. The fuzz overflows can be characterized as “ornamental,” but can also be characterized as functional—i.e., as providing an extra element of comfort." High Point Design, at *10.
Fed. Cir. Review
"Instead of assessing whether the claimed design was “primarily functional” or “primarily ornamental,” see L.A. Gear, 988 F.2d at 1123, the district court interpreted this court’s case law to require it to determine whether the design’s “primary features” can perform functions." High Point Design, at *20.
“[T]he fact that the article of manufacture serves a function is a prerequisite of design patentability, not a defeat thereof. The function of the article itself must not be confused with ‘functionality’ of the design of the article.” High Point Design, at *21 (citing Hupp v. Siroflex of Am., Inc., 122 F.3d 1456, 1460 (Fed. Cir. 1997)).
Conclusion
“For the foregoing reasons, we reverse the grant of summary judgment of invalidity, […] and remand for further proceed- ings consistent with this opinion.” High Point Design, at * 27.

 

Editor's Note
This case also briefly discussed trade dress within the context of civil procedure. More specifically, whether a pleading of trade dress infringement was timely submitted. For more on this issue, click here.
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