The U.S. Court of Appeals for the Federal Circuit has now ruled that the ordinary observer test should be the sole test for design patent invalidity. International Seaway Trading Corp. v. Walgreens Corp., Case No. 09-1237 (Fed. Cir., Dec. 17, 2009) (Dyk, J.).

International Seaway Trading (Seaway) filed suit against Walgreens, claiming infringement of Seaway’s design patents for casual, lightweight footwear, typically referred to as clogs. Walgreens filed for summary judgment, asserting that Seaway’s design patents were invalid as anticipated by a prior art design patent owned by Crocs. In granting summary judgment, the district court held that the ordinary observer test was the sole test for the design patent invalidity under § 102. In reaching its conclusion, the district court compared the exterior portions of the designs of the patent-in-suit that were visible during normal use to the prior art Crocs design patent, but the comparison did not extend to the insoles. The district court reasoned that the comparison of the insoles was not required because “the law requires a court to consider only those portions of the product that are visible during normal use, regardless of whether those portions are visible during the point of sale.”

Seaway appealed, contending that the district court erred in holding that the ordinary observer test is the sole test for anticipation and, even if the ordinary observer test is the sole test for the design patent anticipation, the district court misapplied the ordinary observer test by failing to compare the clogs’ insoles with the prior art Crocs patent.

On the first issue, the Federal Circuit agreed with the district court that the ordinary observer test is the sole test for anticipation, concluding that its 2008 Egyptian Goddess opinion (see IP Update, Vol. 11, No. 9 ), holding that the ordinary observer test is the sole test for design patent infringement, should be extended to design patent anticipation. The Court noted that “it has been well established for over a century that the same test must be used for both infringement and anticipation. This general rule drives from the Supreme Court’s proclamation 120 years ago in the context of utility patents: ‘[t]hat which infringes, if later, would anticipate, if earlier.’” Therefore, the Court affirmed the district court’s holding that the ordinary observer test is the sole test for anticipation.

Turning to Seaway’s contention regarding the insoles as part of the protected design, the Federal Circuit, pointing to its 2002 decision in Contessa Foods, stated the law requires that all ornamental features of the product visible at any time in the normal use lifetime of the product must be considered. Here, the Federal Circuit noted that the point of sale of a clog clearly occurs during its normal use lifetime. Therefore, the Court vacated and remanded the case for a determination of whether the differences between the insole patterns of the Seaway design patents and in the prior art support a finding of either anticipation or obviousness.