Fleshing-Out Design Patent Infringement Doctrine

Crocs, Inc. v. US International Trade Commission (ITC) (Fed. Cir. 2010) (“In the matter of CERTAIN FOAM FOOTWARE”)

In 2006, the ITC began an investigation to determine whether knock-off imports of the iconic Crocs foam shoes infringed either the Crocs utility patent (Patent No. 6,993,858) or the Crocs design patent (Patent No. D. 517789). After a full investigation, the ITC found no patent violation – holding instead that the utility patent was obvious and that the design patent was not infringed. The ITC also held that Crocs had not established a “domestic industry” relating to the patented product and thus, that the Commission did not have standing. On appeal, the Federal Circuit reversed.

Design Patent Claim Construction:

As is ordinary, the Crocs design patent claims “the ornamental design for ___, as shown and described.” Here, the blank (___) was filled by the word “footwear.” Following utility patent claim-construction precedent the ITC had described the drawings and used that description to limit the claim scope. On appeal, the Federal Circuit rejected that approach and instead holding that in the usual case, a design patent’s drawings typically needs very little textual description. The court also held that design patent claim construction should be less textually detailed because design patent infringement (and validity) are judged by looking at the design as a whole. An element-by-element description unduly draws attention to the details and “away from consideration of the design as a whole.”

This case shows the dangers of reliance on a detailed verbal claim construction. The claim construction focused on particular features of the ’789 patent design and led the administrative judge and the Commission away from consideration of the design as a whole. This error is apparent in the Commission’s explicit reference to two details required by the written claim construction but not by the ’789 drawings: (1) a strap of uniform width, and (2) holes evenly spaced around the sidewall of the upper. As shown in Figure 1 of the ’789 patent, the strap bulges to a greater width at the middle of the strap on the far left of the figure. Thus, the design figure does not require a strap of uniform width between the two round connectors. Also, as shown in Figure 4 of the ’789 patent, the holes are not evenly spaced. Figure 4 shows a gap in the spacing (particularly towards the big toe). Nonetheless, the written claim description required uniform strap width and uniform hole spacing—contrary to the claimed invention. This error distorts the infringement analysis by the ordinary observer viewing the design as a whole. The administrative judge and the Commission needed to apply the ordinary observer test to “the design shown in Figures 1–7.”

Under the now defunct “point of novelty” tests for both infringement and validity, courts had some justification for describing specific elements of the patented design because those elements would potentially be considered as points of novelty. Although not spelled-out by the court, the recent elimination of the “points of novelty” tests also eliminates that justification.

Design Patent Infringement:

The Federal Circuit outlined the “ordinary observer” test of design patent infringement in its en banc Egyptian Goddess decision. Here, the court fleshed-out that test with further details and nuances. Infringement of a design patent requires proof that an “ordinary observer, familiar with the prior art designs, would be deceived into believing that the accused product is the same as the patented design.” The hypothetical ordinary observer is considered to have knowledge of the prior art. Thus, “if the claimed design is close to the prior art designs, small differences between the accused design and the claimed design assume more importance to the eye of the hypothetical ordinary observer.” “The ordinary observer test applies to the patented design in its entirety, as it is claimed. [Therefore, minor differences between a patented design and an accused article’s design cannot, and [do] not, prevent a finding of infringement.” (quoting Payless Shoesource and Litton Sys.).

The court again emphasized that the test considers the design as a whole and that the court should not use drawing details to create an infringement checklist because “concentration on small differences in isolation distract[s] from the overall impression of the claimed ornamental features.” Rather, a better tool for determining infringement is a side-by-side comparison of the patented design and the accused product.

On the facts of this case, the Federal Circuit found that the allegedly infringing shoes were “nearly identical” to the patented design. “If the claimed design and the accused designs were arrayed in matching colors and mixed up randomly, this court is not confident that an ordinary observer could properly restore them to their original order without very careful and prolonged effort. . . . [T]his court perceives that the accused products embody the overall effect of the ’789 design in sufficient detail and clarity to cause market confusion. Thus, the accused products infringe the ’789 design.”

Domestic Industry:

In a decision of some interest for design patent utility patent holders alike, the Federal Circuit suggested what seems a tight definition of the domestic industry requirement of an ITC Section 337 action. The court wrote:

The test for the technical prong of the industry requirement “is essentially the same as that for infringement, i.e., a comparison of domestic products to the asserted claims.” Alloc, Inc. v. Int’l Trade Comm’n, 342 F.3d 1361, 1375 (Fed. Cir. 2003). In other words, the technical prong requires proof that the patent claims cover the articles of manufacture that establish the domestic industry. Put simply, the complainant must practice its own patent.

Although it so stated, I don’t believe that the court actually intended to require that a “complainant must practice its own patent” in order to satisfy the technical prong of 19 U.S.C. 1337(a). Rather, the statute requires that “an industry in the United States, relating to the articles patent . . . exists or is in the process of being established.” The “technical prong” of 337(a)(3)(A)-(B) require significant domestic investment or employment, but neither of those sections require that the complainant be the party that invests.  In the cited Alloc decision, the court stated instead that the question is whether the “industry produces articles covered by the asserted claims.” Here, the dicta is irrelevant because Crocs does manufacture shoes covered by the patent.

21 thoughts on “Fleshing-Out Design Patent Infringement Doctrine

  1. you can’t make a value judgement about a particular thing’s (lack of) style if the thing you are judging is indistinguishable from the prior art

    Wanna bet?

    I’m pretty sure that legislating what people wear (as in veils) has very little to do with sense of fashion. Think of the difference between a fit and nubile young thing in spandex and a morbidly obese woman in the same outfit. It’s not the clothes, it’s the clothes and the person. It’s about choice.

  2. Anonymous with style replied:

    “Novelty and/or obviousness have nothing to do with “style”.

    “Crocs are awful” as a value judgment concerning fashion is a non-sequitur to any legal principle. Why do you think that no one has ever attempted to legislate a sense of fashion? Do we really want fashion police with police powers?”

    You completely failed to understand my point, so I guess i should have expressed my self better: you can’t make a value judgement about a particular thing’s (lack of) style if the thing you are judging is indistinguishable from the prior art. Thus it is direct evidence that Crocs are indeed distinguishable from the prior art, which most certainly has a bearing on novelty.

    Regarding your claim that “no one has ever attempted to legislate a sense of fashion”, I am not sure what joke you are trying to make here since laws legislating fashion seem to be as old as laws themselves: e.g. Assyrian law from the second millennium BC for example mandates certain categories of women must wear veils while others must not.

    Cheers, Lke

  3. Does this holding on domestic industry mean that patent trolls, who are trying to claim that patent licensing IS the “domestic industry,” are sunk in the ITC?

    Presumably if they’re licensing some other US company, they’re licensing domestic industry?

    Do we really want fashion police with police powers?

    Ever been to Wal-Mart?

  4. Luke,

    Novelty and/or obviousness have nothing to do with “style”.

    “Crocs are awful” as a value judgment concerning fashion is a non-sequitur to any legal principle. Why do you think that no one has ever attempted to legislate a sense of fashion? Do we really want fashion police with police powers?

    Or perhaps we have an “under the sun” battle – There is nothing new under the sun versus Everything under the sun made by man is patentable.

  5. mmm wrote: “The reality is that there is probably no discernible difference between the elements of the prior art and the shoes at issue”. If that was the case, people wouldn’t keep saying things like “Crocs are awful”, would they?

    Cheers, Luke

  6. No it was dicta. And complainant must satisfy two-pronged domestic industry test. Technical and economic. 1988 Act eased burden for economic prong and provided that substantial investment in exploitation of IP may be shown through licensing activities. 337 protects domestic industry from injury caused by imports. Mere patent holding does not constitute standing.

  7. Thanks to Design Diva for clarifying the domestic industry point (I was wondering why the district court didn’t think so).

    Does this holding on domestic industry mean that patent trolls, who are trying to claim that patent licensing IS the “domestic industry,” are sunk in the ITC? Let’s hope so.

  8. Why is the “Patent” Office even bothering with design patents? Either these should be handled over at the trademark side of the PTO (which is used to asking if simple things are apt to make confusingly similar impressions), or they ought to be be part of some sort of registration system administered by the Copyright Office. (Utility) Patent Law is never going to be a good fit for designs.

  9. The ordinary observer in design patent law is a bit of a mental gymnast: (1) look at the design patent drawings, taking them in as a whole while ignoring the functional elements; (2) look a the offending article and the prior art and the design patent drawings (having their functional elements conceptually plucked, element-by-element); and then (3) assess – by comparing the overall plucked design with the presumably plucked offending article – as to whether he/she would be deceived into buying the offending article thinking it was an article covered by the plucked design patent, in light of the full array of (plucked) prior art. (Fill in your own punch line here.)

    Comment to Prof. Crouch on “Domestic Industry”
    “Here, the dicta is irrelevant because Crocs does manufacture shoes covered by the patent.”
    Just to put a finer point on this, the shoes covered by the Crocs design patent are imported by Crocs for domestic sales.

  10. Nope, never been there. If you were paying attention ping, you would know that Mooney just insisted on telling everyone about his collection. As far as I know, Mooney is the only one spending time in the closet around here. Come on out Mooney, come on out of that closet.

  11. Talk about gobbledygook.

    The court again emphasized that the test considers the design as a whole and that the court should not use drawing details to create an infringement checklist because “concentration on small differences in isolation distract[s] from the overall impression of the claimed ornamental features.” Rather, a better tool for determining infringement is a side-by-side comparison of the patented design and the accused product.

    The “overall impression side-by-side test” for infringement. That’s real helpful. And don’t bother explaining *why* the articles are infringing by citing objective differences. That’s improper.

    Thus, “if the claimed design is close to the prior art designs, small differences between the accused design and the claimed design assume more importance to the eye of the hypothetical ordinary observer.”

    But you shouldn’t focus on those minor differences because they “cannot, and [do] not, prevent a finding of infringement.”

    It’s a broken nonsensical system and the Federal Circuit is doing nothing to improve it.

  12. Rumour has it that FratBoy has spent considerable time in Mooney’s closet.

    Not my business whether he is trying on the red pumps or not.

  13. “Ugh. Crocs are awful. ”

    Rumour has it that Mooney’s closet is full of them, along with red pumps.

  14. mmm, whatever it is that you do to make a living — somebody using the “gut” test can conclude that design patents should not apply to it, either, so don’t bother with design patents, my friend.

  15. Here’s my problem with the design patent ordinary observer test for products like the Crocs: shoes have been around forever; sandal-like shoes have been around forever; shoes with holes have been around forever (ventilation and whatnot). The sheer volume of prior art is huge. The reality is that there is probably no discernible difference between the elements of the prior art and the shoes at issue (either accused or patented), but the defendant has a nearly impossible burden. They all look like shoes with straps and holes.

    The other issue is that there is definitely a database problem: how does one database and make searchable thousands of years of shoe design over the entire world? At best, you’re going to have to be a lucky defendant to stumble across something that is going to act as invalidating art on the test as set out by the Fed. Cir.

    All of that said, I have no problem with design patents. They have their place in certain arts. I’m not so sure that shoes are one of them.

  16. Dennis

    Your distinction between the complainant and the domestic industry is 100% correct.

    Scott Daniels

  17. Ugh. Crocs are awful. I anticipate with dread that in about two weeks Georgetown (and DC in general) will once again be awash in hairy-footed fratboys walking around in those hideous things. Design patent examiners should have a horribleness test at their disposal.

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