District Court Erred In Granting SJ Of Invalidity For Design Patent Based On Obviousness And Functionality

In High Point Design LLC v. Buyer's Direct, Inc., No. 12-1455 (Fed. Cir. Sept. 11, 2013), the Federal Circuit reversed the grant of SJ of patent invalidity based on obviousness and functionality, vacated the dismissal of trade dress claims, and remanded for further proceedings.

Buyer's Direct, Inc. ("BDI") is the owner of U.S. Design Patent No. D598,183 ("the '183 patent") and manufacturer of SNOOZIES® slippers, and High Point Design LLC ("High Point") manufactures and distributes FUZZY BABBA® slippers. After BDI sent a cease and desist letter to High Point asserting infringement of the '183 patent, High Point filed a DJ action alleging (1) that the manufacturing and sale of the accused slippers did not infringe the '183 patent, and (2) that the '183 patent was invalid and/or unenforceable. BDI counterclaimed for infringement of the '183 patent and the trade dress found in BDI's SNOOZIES® slippers. High Point moved for SJ of invalidity and noninfringement of the '183 patent and judgment on the pleadings with respect to BDI's trade dress claims. With its opposition to the motion, BDI included the declaration of an expert who opined that the '183 patent was not invalid because "tests for anticipation, functionality and obviousness have not been met." Slip op. at 6 (citation omitted).

The district court granted High Point's motion, finding that the '183 patent was obvious in light of the prior art, including two slipper models made by Woolrich ("Woolrich Prior Art"), and was primarily functional rather than ornamental. The district court rejected BDI's request to amend its pleadings and dismissed BDI's trade dress claims with prejudice, finding the trade dress claims inadequate as a matter of law for failure to sufficiently identify the trade dress at issue. BDI appealed.

On appeal, BDI challenged both the grant of SJ of invalidity and the dismissal with prejudice of its trade dress claims. Regarding obviousness, BDI contended that the district court erred by using the Woolrich Prior Art designs as primary references, because their design characteristics are not "basically the same as the claimed design," and by not identifying a motivation to modify the Woolrich Prior Art to achieve the "same overall visual appearance as the claimed design." Id. at 12 (quoting Durling v. Spectrum Furniture Co., 101 F.3d 100, 103 (Fed. Cir. 1996)).

"An inventor can, upon meeting all statutory requirements, obtain a design patent for 'any new, original and...