No Inherency in Design Patent Cases

Mojave Desert Holdings, LLC v. Crocs, Inc., 2020-1167 (Fed. Cir. 2021) [Merits Decision][Substitution Decision]

In this non-precedential opinion, the Federal Circuit has sided with the patentee CROCS — upholding the design patent for its really amazing footwear. D517,789.

The setup here is an inter partes reexamination filed by Dawgs back in 2012 (now Mojave Desert).  During the reexam, the examiner searched the Wayback Engine (Internet Archive) and found images on the crocs website that predate the patent application filing.  The examiner relied upon those pre-filing disclosures (images below) to reject the patent claims as anticipated.  However, the PTAB rejected that analysis and instead upheld the validity of the issued patent.

Here is the problem — the patent includes claim features on the bottom-side of the shoe, and Fig 11 does not show the bottom of the shoe.  On appeal, the Federal Circuit affirmed with only cursory analysis: “Having reviewed the Board’s decision and the record, we discern no reversible error.”

Mojave’s basic argument is that nothing on the bottom of the shoe was really claimed. Mojave’s briefing included the figure below, where it argued that the red lines were the only claimed portion — and those were adequately shown in the Fig 11 prior art. (Sorry color blind friends).

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An aspect of the case also involved whether Mojave could stand-in for the original IPR petitioner Dawgs.  Dawgs went bankrupt back in 2018 and stopped participating in the IPR.  Mojave bought up various aspects of Dawgs rights.  However, the PTAB refused to allow Mojave to participate in the reexam. On appeal here, the Federal Circuit found that Mojave was an appropriate substitute.

In contrast to Agilent, the sale … clearly transferred all of U.S.A. Dawgs’s assets and claims and did so using broad language. U.S.A. Dawgs did not need to enumerate each of its assets individually to effectuate the broad transfer. U.S.A. Dawgs dissolved and did not continue to participate before the Board. Under the circumstances, the transfer of all assets on its face included the rights in the Board proceeding.

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The briefing involved substantial discussion about who should count as the “ordinary observer” for both infringement and validity consideration.  In a prior case involving the patent, Crocs had argued that the ordinary observer was an “Impulse Buy Purchaser.”  That low-standard made it easier to argue infringement since – at a quick glance the accused product looked so similar.  In this case, however, the patentee changed its tune and focused on detailed and small differences that would not have been observed at a quick glance.   The court did not reach this issue, which might have applied judicial estoppel.

 

5 thoughts on “No Inherency in Design Patent Cases

  1. 3

    This decision is being cited elsewhere just for a complete assignee being able to fully substitute itself into a PTO proceeding – even an inter-parties proceeding.
    [This non-precedential opinion does not seem to provide any clarity at all on what should be the proper 35 USC 103 legal handling of design patent applications or patents.]

    1. 3.1

      So, about as ‘satisfying’ as the last design patent / 35 USC 103 discussion that was attempted (in which you fled) then, eh?

  2. 2

    While frustratingly terse in its explanation, the over result in this opinion seems similar to the following district court case which refused to find a single photograph of a product anticipated a design patent to the object because the photograph failed to show a side view that had claimed features.

    Z Produx, Inc. v. Make-Up Art Cosmetics, Inc., 2013 WL 5941049, *3 (C.D. Cal. Nov. 5, 2013) (denying summary judgment that claimed ornamental design was anticipated by a pre-critical date photograph of the top view of the patentee’s commercial embodiment of the claimed cosmetic case submitted to the PTO as part of a trademark application because the photograph did not show all the aspects of the claimed design as it failed to show any aspects of the side view – “ … For a prior art disclosure to be anticipatory, it must be ‘ ‘enabling’—i.e., it must be sufficient to permit a person having ordinary skill in the art to practice the invention.’ ‘Pictures and drawings may be sufficiently enabling to put the public in the possession of the article pictured. Therefore, such an enabling picture may be used to reject claims to the article. However, the picture must show all the claimed structural features and how they are put together.’ The Z Produx trademark application included one picture of the Z Palette photographed from above. The device’s sides, edges, and contours are not visible. The photograph does not reveal numerous elements of the design which were later reflected in the figures included in the ‘743 design patent. Indeed, with the exception of the width of the palette’s rims, none of the elements included in the construction of the ‘743 patent proposed by MAC are apparent in the photograph. These elements include a ‘lip’ extending past the edged of the cosmetic holder and the flat spine along the back of the case. Because the photograph does not contain sufficient detail to constitute invalidating prior art for the ‘743 design patent, the court must reject MAC’s contention that the patent is invalid.” – citations omitted – further granting summary judgment of no infringement)

    The green lines in the figure of the sole of the claimed shoe appear solid and therefore arguably show a claimed feature of a contour shaped in the arch area. Without a photo of the bottom of the view of the prior art shoe, it was not possible to know if the prior art shoe had the claimed contours.

    1. 2.1

      To your point, see the solid lines at the bottom of the shoe in FIG. 5.

  3. 1

    Is the rule of law out of this case really about inherency, as the title of the blog post suggests? If so, that aspect of the PTAB/Fed. Cir. ruling(s) is not adequately explained.

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