Docket No. 2012-1455
O’MALLEY, SCHALL, WALLACH
September 11, 2013
Brief summary: Grant of SJ that design patent was invalid for obviousness and primarily functional reversed for improper analyses and dismissal of trade dress claims vacated.
Summary: Buyer’s Direct, Inc. (BDI) appealed DC grant of SJ to High Point Design (HPD) that BD’s design patent D598,183 relating to its SNOOZIES® slippers is invalid and dismissing BDI’s trade dress claims. HPD manufactures and distributes FUZZY BABBA® slippers. The DC granted HPD’s motion for SJ on the ground that the claimed design was obvious in light of the prior art (Woolrich’s “Penta” and “Laurel Hill” models and secondary references disclosing “a pattern of small dots on the bottom surface”; “overall visual effect…is the same” other than the dots which are described by the secondary references) and primarily functional rather than primarily ornamental (slipper that completely covers the foot…to provide complete foot and warmth and protection” (e.g., “fuzzy interior for comfort”)). To find a design patent obvious, the FC panel explained that the finder of fact must show “a single reference, a something in existence, the design characteristics of which are basically the same as the claimed design” (Durling, FC 1996). Then, “other references may be used to modify it to create a design that has the same overall visual appearance as the claimed design” (Id.) In its analysis, the FC panel explained that it disagreed with the “ordinary observer” standard used by the DC to determine obviousness, and that the proper standard is the “designer of ordinary skill or capability” (citing Apple, FC 2012 and L.A. Gear (FC 1993)). It then concluded that the DC “erred by failing to translate the design of the ‘183 patent into a verbal description”, stating that “[o]n remand, the district court should add sufficient detail to its verbal description of the claimed design to evoke a visual image consonant with that design” (required under Durling). The panel also found that the DC erred by failing to “communicate the reasoning behind the decision” (“the district court should do a side-by-side comparison of the two designs to determine if they create the same visual impression”). In addition, it found that the DC did not consider secondary considerations (e.g., the Graham factors). Regarding the functional vs. ornamental arguments, the panel explained that “whether a claimed design, as a whole, is ‘dictated by’ functional considerations” (whether it “represents the best design”, “whether alternative designs would adversly affect the utility of the specified article”, “whether there are any concomitant utility patent”, “whether advertising touts particular features of the design as having specific utility”, and “whether there are any elements in the design or an overall appearance clearly not dictated by function” (PHG Techs., FC 2006)). However, the panel concluded that the DC only assessed “whether the claimed design was ‘primarily functional’ or ‘primarily ornamental'”. The grant of SJ for invalidity was therefore reversed. It also determined that the DC had not properly considered the trade dress issues and vacated the dismissal.