Who gets to decide when a design patent is obvious? There was some confusion on that topic until the Federal Circuit handed down its opinion in High Point Designs LLV v. Buyers Direct, Inc., No. 2012-1455 (Fed. Cir. Sept. 11, 2013) (a copy of the opinion can be found here).

In the opinion, the panel of Judges O'Malley, Schall, and Wallach confirmed that the obviousness of a design patent is to be determined through the eyes of an "ordinary designer," not an "ordinary observer." What's the difference? A big one actually. The ordinary design test requires the court to engage in a more sophisticated analysis that can rely on expert testimony (but does not have to). Typically when the obviousness analysis is elevated to a more sophisticated level, the "gap" between the prior art and the claimed design is easier to overcome because of the skill set and knowledge attributed to the hypothetical designer. This could make it easier to invalidate design patents on obviousness grounds. However, it most likely means courts will be less likely to rule design patents invalid on summary judgment as competing facts (and perhaps competing experts) will create fact issues for a jury to determine. In any event, this decision expressly cleans up the confusion created by International Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1240 (Fed. Cir. 1990) that stated the obviousness determination was to be made by the "ordinary observer."

As for the facts in the High Point case, the Federal Circuit reversed summary judgment of obviousness of the slipper design below, Fig. 1 from the design patent in suit:

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in view of the prior art Woolrich product:

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The case was sent back to the district court for reconsideration in view of the clarified standard.

A final note: the court chided the district court for failing to translate the design of the patent into a verbal description. This runs counter to Federal Circuit precedent indicating that claim construction is not necessary with design patents. It will be interesting to see how this language is interpreted by the district courts. This panel clearly wanted more analysis from this district court judge. Some district courts may, however, take this recommendation too far and engage in unnecessary claim construction of a design patent.