The “ordinary observer” test developed in Egyptian Goddess, Inc. v. Swisa, Inc.1 is the sole test for determining design patent invalidity under 35 U.S.C. § 102, according to the Federal Circuit.

Plaintiff International Seaway Trading Corp. (“Seaway”) is in the business of shoe and boot designs and is the owner of U.S. Design Patent Nos. D529,263 (the “’263 patent”), D545,032 (the “’032 patent”), and D545,033 (the “’033 patent”) (collectively “the patents-in-suit”). The patents-insuit are directed to designs for casual, lightweight footwear, which are typically referred to as “clogs.” On February 15, 2008, Seaway fi led a complaint against Walgreens Corp. (“Walgreens”) and Touchsport Footwear USA, Inc. (“Touchsport”) alleging infringement of the ’263, ’032, and ’033 patents. Walgreens and Touchsport moved for summary judgment, which the district court granted, fi nding that that the patents-in-suit were invalid as anticipated under 35 U.S.C. § 102(a) and (e) by U.S. Design Patent No. D517,789 (the “Crocs ’789 patent”). In determining that the patents-in-suit were invalid as anticipated, the district court applied only the “ordinary observer” test. Seaway appealed to the Federal Circuit, contending that the district court erred by basing its invalidity determination solely on the ordinary observer test and by failing to apply the “point of novelty” test.

The Federal Circuit began its discussion on whether the ordinary observer test should be the lone test for determining anticipation of a design patent by analyzing the holding in Egyptian Goddess. In Egyptian Goddess, the Federal Circuit changed the test for design patent infringement, concluding that “the ‘ordinary observer’ test should be the sole test for determining whether a design patent has been infringed,”2 and that “the ‘point of novelty’ test should no longer be used in the analysis of a claim of design patent infringement.”3 The ordinary observer test was originally proffered in the 1871 case Gorham Manufacturing Co. v. White,4 in which the Supreme Court held:

if, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the fi rst one patented is infringed by the other.5

The Egyptian Goddess court further characterized the hypothetical “ordinary observer” as being “deemed to view the differences between the patented design and the accused product in the context of the prior art.”6 Conversely, the point of novelty test, which Seaway urged the court to apply, asks whether the patented design appropriates the points of novelty of the prior art reference in assessing whether a patent is invalid as anticipated.7

Confronted with the issue of which test(s) to apply for determining anticipation post-Egyptian Goddess, the Federal Circuit held, “[W]e now conclude that the ordinary observer test must logically be the sole test for anticipation as well.”8 The Federal Circuit based this decision largely on the fact that courts have consistently held that the same test must be used for both infringement and anticipation determinations.9 In holding that the same test (i.e., the ordinary observer test) should be applied for determinations of design patent infringement and anticipation, the court reasoned that “[i]n so doing, we will prevent an inconsistency from developing between the infringement and anticipation analysis.”10 Accordingly, the Federal Circuit determined that the district court properly applied only the ordinary observer test.

The court then turned to the issue of whether the district court applied the ordinary observer test correctly. In fi nding that the Crocs ’789 patent anticipated the patents-in-suit under the ordinary observer test, the district court compared only the exterior designs of the patents-in-suit and the Crocs ’789 patent, failing to compare the insoles of the shoes. The district court refused to consider the insole designs of the patents-in-suit and the Crocs ’789 patent because the insoles would be invisible during “normal use” of the shoe (when a user’s foot hides the insoles), despite the fact that the insoles would be visible at the point of sale.11 An illustration of the shoe designs is provided below.

The Federal Circuit took issue with the district court’s reasoning, holding that the insoles would, in fact, be visible during the normal use of the shoe.12 The Federal Circuit reasoned that the normal use of a shoe occurs between the time that it is manufactured and the time that it is ultimately destroyed.13 Because the point of sale occurs within this normal use period, and because the insoles were plainly visible during the point of sale, it is necessary to compare the insole designs of the patents-in-suit and the Crocs ’789 patent.14 Therefore, the Federal Circuit vacated the district court’s fi nding as to anticipation and remanded the case for further proceedings on the issue of whether the differences in the insole patterns between the Crocs ’789 patent and the patents-in-suit bar a finding of anticipation.15

Practice Tip:

A design patent will be stronger when the aesthetic features distinguishing the subject matter of the design patent from the prior art are conspicuous (i.e., visible during “normal use”). When the aesthetic features that distinguish the subject matter of a design patent over the prior art are not visible during the normal use of the product, it opens the door for a court to invalidate such a patent under the ordinary observer test. Vedder Price patent attorneys can assist in preparing design patents that emphasize the distinguishing aesthetic features that will be visible during the normal use of the product.