Case: High Point Design, LLC v. Meijer, Inc., No. 2012-1455 (Fed. Cir. Sept. 11, 2013). On appeal from S.D.N.Y. Before O’Malley, Schall, and Wallach.
Procedural Posture: Plaintiff appeals from summary judgment holding its design patent invalid and also dismissing plaintiff’s trade dress claims with prejudice; CAFC reversed the grant of summary judgment of invalidity, vacated the dismissal of the trade dress claims, and remanded.
- Invalidity Based on Obviousness: The district court erred in applying an “ordinary observer” standard in assessing the potential obviousness of plaintiff’s design patent; the correct inquiry is “whether the claimed design would have been obvious to a designer of ordinary skill who designs articles of the type involved.” The district court also erred by categorically disregarding plaintiff’s expert declaration, instead of considering it as relevant to factual aspects of the legal conclusion of obviousness. The CAFC found additional errors in the district court’s failure to translate the claimed design into a verbal description, its failure to provide its reasoning in finding that a prior art reference was essentially the same design and its failure to consider plaintiff’s secondary consideration evidence. The CAFC remanded to the district court for analysis of obviousness under the proper legal framework.
- Invalidity Based on Functionality: The district court erred by analyzing whether the claimed design’s “primary features” can perform functions, instead of assessing whether the design was “primarily functional” or “primarily ornamental.” The CAFC reversed the determination of invalidity by reason of functionality because the district court applied an incorrect standard and because the CAFC found that, under the correct standard, a reasonable jury could find the patent not invalid based on functionality.
- Trade Dress: Under Second Circuit precedent, the district court should have applied the “good cause” requirement of Rule 16(b) to plaintiff’s request to amend its trade dress infringement pleadings after the deadline imposed by the court’s scheduling order. The district court’s ruling did not explain whether it was applying this standard or the more lenient standard of Rule 15(a), and even if applying the former, failed to explain why good cause to amend did not exist under the circumstances of this case. Accordingly, the CAFC vacated and remanded the trade dress issue.