Patent obviousness analysis fails with Federal Circuit

Most of the patents that make the news these days are utility patents rather than design patents. This might explain the result of High Point Design LLC v. Buyer’s Direct, Inc., No. 2012-1455, Sept. 11, 2013 (Fed. Cir.). Here, the U.S. Court of Appeals for the Federal Circuit found many errors in the district court’s ruling.

Slippers put on trial

Buyer’s Direct Inc. (BDI) holds a design patent for “the ornamental design for a slipper.” High Point Design LLC manufactures and distributes “Fuzzy Babba” slippers.

When BDI became aware of Fuzzy Babba slippers, it sent High Point a cease-and-desist letter, asserting infringement of its patent and infringement of the trade dress found in its “Snoozies” slippers. High Point responded by seeking declaratory judgment in federal district court that the manufacturing and sale of its slippers didn’t infringe BDI’s patent, and that the patent was invalid. BDI filed counterclaims for, among other things, patent infringement.

The district court found the patent invalid because the design was obvious from prior art. BDI appealed.

Two-step analysis applied

According to the Federal Circuit, the ultimate inquiry in an obviousness analysis of a design patent is whether the claimed design would have been obvious to an ordinary designer of the type of item involved. To make that determination, the court will apply a two-step process.

In the first step, the court must find “a something in existence,” or a single reference, with design characteristics that are basically the same as those of the design claimed in the patent. To accomplish this, the court must:

  • Discern the correct visual impression created by the patented design as a whole, and
  • Determine whether there’s a single reference that creates basically the same visual impression.

In the second step, the court may use other references to modify the primary reference to create a design that has the same overall visual appearance as the claimed design.

Slip-ups abound

The Federal Circuit found that the district court had made multiple errors in its obviousness analysis. These mistakes included:

Applying the wrong standard. The lower court applied an “ordinary observer” standard, rather than the “ordinary designer” standard. The appellate court held that the use of an ordinary observer standard to assess the potential obviousness of a design patent was improper.

Disregarding an expert’s opinion. The Federal Circuit noted that an expert’s opinion, while not necessary or controlling on the legal conclusion of obviousness, may be relevant to the factual aspects of the analysis leading to that legal conclusion. The district, therefore, had erred by disregarding a statement from a slipper designer that the design wasn’t obvious.

Misapplying the process. The appellate court faulted the district court’s application of the two-step process noted above — especially of the first step. When it came to “discerning the correct visual impression created by the patented design as a whole,” the district court erred by failing to translate the design of BDI’s patent into a verbal description. The lower court characterized the design as “slippers with an opening for a foot that can contain a fuzzy (fleece) lining and have a smooth outer surface.”

The Federal Circuit found this description represented “too high a level of abstraction” because it didn’t focus on the distinctive visual appearance of the primary reference and the claimed design. The district court should have added sufficient detail to its verbal description of the claimed design to evoke a visual image consistent with the design.

Failing to draw a comparison. The district court didn’t provide its reasoning for determining that the primary reference created “basically the same” visual impression as the patented design, so the parties would have a basis for challenging that determination. The Federal Circuit said the lower court should have done a side-by-side comparison of the two designs to determine whether they create the same visual impression.

Overlooking “secondary considerations. The district court failed to take into account factors such as the copying and commercial success of Snoozies. The appellate court had previously held that evidence related to such secondary considerations must always be contemplated as part of a determination of obviousness.

Court toes the line

For all its criticism of the district court’s analysis, the Federal Circuit declined to take a position on whether, under the proper standard, BDI’s design was or wasn’t obvious. Instead, it reversed the judgment of obviousness and sent the case back to the district court to make the determination applying the standards outlined above.