For determining whether infringement and the existence of a domestic industry are satisfied in a § 337 action regarding design patents, courts must apply the ordinary observer test instead of relying on a detailed verbal description of the claimed design.

Crocs, Inc. v. International Trade Commission et al., No. 2008-1596 (Fed. Cir. Feb. 24, 2010)

The patentee brought an unfair competition action under 19 U.S.C. § 337 against alleged infringers due to their importation into the United States of foam footwear products. The patentee asserted both a utility patent and a design patent directed to breathable footwear. An administrative law judge found 1) that the utility patent was obvious in view of the combined teachings of the prior art and 2) that the design patent was not infringed and that the patentee failed to satisfy the technical prong of the domestic industry requirement. After the International Trade Commission affirmed the judge’s findings, the patentee appealed to the Federal Circuit.

The Federal Circuit reversed the decision as to both patents. As to the design patent, the court stressed its continued wariness of trial courts’ “excessive reliance on a detailed verbal description in a design infringement case.” Here, the administrative law judge and Commission erred in applying such a standard, which “risks undue emphasis on particular features of the design rather than examination of the design as a whole.” Specifically, the detailed verbal claim construction required that the features of “a strap of uniform width” and “holes evenly spaced” be found in the accused products. Neither of these features, however, was explicit or required in any of the figures of the design patent and thus “became a mistaken checklist for infringement.” The proper standard for determining infringement in design cases is the ordinary observer test, which requires looking at the figures and viewing the design as a whole. In finding infringement, the court applied a side-by-side viewing of the figures of the design patent and the accused products to find that an ordinary observer would be deceived into believing the accused products are the same as the patented design. The court also held that the same ordinary observer test should be used to determine whether the “technical prong” of the domestic industry requirement was satisfied under § 337 – that is whether the patent claims cover the articles of manufacture that establish the domestic industry.

As to the utility patent, the court found that the claims would not be obvious in view of the prior art. More particularly, the court found that the important feature of a “foam strap riveted to a foam base with direct contact” was actually discouraged and taught away in the prior art. The court also found that “the great deal of commercial success” enjoyed by the patentee’s commercial embodiments supplied additional evidence of non-obviousness. The Federal Circuit thus remanded for further infringement considerations as to the utility patent.

A copy of the opinion can be found here.