International Seaway Trading Corp. v. Walgreens Corp.

United States Court of Appeals for the Federal Circuit
2009-1237

INTERNATIONAL SEAWAY TRADING CORPORATION,

Plaintiff-Appellant,

v.

WALGREENS CORPORATION
and TOUCHSPORT FOOTWEAR USA, INC.,

Defendants-Appellees.

George L. Pinchak, Tarolli, Sundheim, Covell & Tummino LLP, of Cleveland,
Ohio, argued for plaintiff-appellant. With him on the brief were John A. Yirga, and
Thomas H. Shunk, Baker & Hostetler LLP, of Cleveland, Ohio.

Mark P. Walters, Darby & Darby, P.C., of Seattle, Washington, argued for
defendants-appellees.

Appealed from: United States District Court for the Southern District of Florida

Senior Judge Kenneth L. Ryskamp
 United States Court of Appeals for the Federal Circuit

2009-1237

INTERNATIONAL SEAWAY TRADING CORPORATION,

Plaintiff-Appellant,

v.

WALGREENS CORPORATION,
and TOUCHSPORT FOOTWEAR USA, INC.,

Defendants-Appellees.

Appeal from the United States District Court for the Southern District of Florida
in case no. 08-CV-80163, Senior Judge Kenneth L. Ryskamp.

___________________________

DECIDED: December 17, 2009
___________________________

Before BRYSON, CLEVENGER, and DYK, Circuit Judges.

Opinion for the court filed by Circuit Judge DYK. Dissenting opinion filed by Circuit
Judge CLEVENGER.

DYK, Circuit Judge.

Plaintiff-Appellant International Seaway Trading Corporation (“Seaway”) filed suit

against Walgreens Corporation (“Walgreens”) and Touchsport Footwear USA, Inc.

(“Touchsport”) claiming infringement of Seaway’s patents, U.S. Design Patents Nos.

D529,263 (“the ’263 patent”), D545,032 (“the ’032 patent”), and D545,033 (“the ’033

patent”). The district court granted summary judgment for defendants, finding that the

claims of the asserted patents were invalid under 35 U.S.C. § 102 as anticipated by a
patent assigned to Crocs, Inc. (“Crocs”), U.S. Design Patent No. D517,789 (“the Crocs

’789 patent”). Int’l Seaway Trading Corp. v. Walgreens Corp., 599 F. Supp. 2d 1307,

1319 (S.D. Fla. 2009).

On appeal, Seaway contends that the district court erred by basing its invalidity

determination solely on the ordinary observer test and by failing to apply the point of

novelty test. We agree with the district court that the point of novelty test should not be

utilized for anticipation, and that only the ordinary observer test applies. However, while

we conclude that the exterior appearance of the patented designs would be

substantially similar to the prior art in the eyes of an ordinary observer, we conclude that

the district court erred in failing to compare the insoles of the patents-in-suit with the

prior art from the perspective of the ordinary observer. Accordingly, we affirm-in-part,

vacate-in-part, and remand.

BACKGROUND

Plaintiff-Appellant Seaway is an Ohio corporation that acts as a buyer’s agent

and/or importer of footwear to mass merchandise retailers, as well as to footwear,

apparel, and sporting goods stores. Seaway also creates its own shoe and boot

designs and pursues design patents for them. Defendant-Appellee Walgreens is an

Illinois corporation with retail drug stores across the country that sell footwear, among

other products. Defendant-Appellee Touchsport is a California corporation that, like

Seaway, serves as a buyer’s agent and/or importer of footwear to retailers, including

Walgreens.

Seaway’s ’263, ’032, and ’033 patents (collectively “the patents-in-suit”) claim

designs for casual, lightweight footwear, which are typically referred to as “clogs.” The

2009-1237 2
’263 patent application was filed on February 18, 2005, and issued on October 3, 2006.

The ’032 and ’033 patents were filed as continuations-in-part of the ’263 patent in

February 2006, and both issued on June 26, 2007. It is undisputed that the ’032 and

’033 patents are “substantially the same as the ’263 patent design” except that the heel

strap is in a forward position overlying a portion of the clog upper in the ’032 patent and

that the heel strap is not part of the claimed design for the ’033 patent.

A single Patent Office Examiner examined and allowed each of the three

patents-in-suit. During prosecution of the ’263 patent application, the examiner

considered and found the ’263 patent design patentable over: (a) four pages from the

website of Crocs that depicted various models of Crocs clogs, including the Beach

model clog; (b) five pages of photographs of the Crocs Beach model clog; and (c) a

December 2002 archival version of the Crocs website, depicting various views of a

Crocs clog. In the examination of the ’263 patent application, the examiner did not have

the benefit of the Crocs ’789 patent, which depicted the Crocs Beach model clog, even

though the ’789 patent issued before the examination was concluded. For the ’032 and

’033 patent applications, the examiner considered and found the ’032 and ’033 designs

patentable over the references considered during the ’263 prosecution as well as the

’789 patent.

On February 15, 2008, Seaway filed a complaint against Walgreens and

Touchsport in the United States District Court for the Southern District of Florida,

alleging that they were infringing its ’263, ’032 and ’033 patents. Seaway asserted that

Touchsport had imported and continued to import shoes that infringed the Seaway

patents and that Walgreens had sold and continued to sell the allegedly infringing

2009-1237 3
shoes. Walgreens and Touchsport filed a motion for summary judgment on June 24,

2008, contending that Seaway’s patents were invalid as anticipated under 35 U.S.C.

§ 102(a) & (e) by the Crocs Beach and Cayman model clogs and/or the Crocs ’789

patent, or as obvious under 35 U.S.C. § 103 in view of the Crocs Beach and Cayman

model clogs and/or the Crocs ’789 patent. Figures depicting the design in the ’789

patent, and the design in the ’263 patent, which is representative of the designs in the

’032 and ’033 patents, are set forth below.

Figure 1 in the ’789 Patent

Figure 2 in the ’263 Patent

On January 22, 2009, the district court granted summary judgment of

anticipation, finding that the three Seaway patents were anticipated by the Crocs ’789

patent. Int’l Seaway Trading Corp., 599 F. Supp. 2d at 1317. The district court held

that the ordinary observer test was the sole test of design patent invalidity under 35

U.S.C. § 102. Id. In granting summary judgment, the district court considered and

compared the exterior portions of the designs of the patents-in-suit, but not the insoles

of the designs, to the prior art. Id. at 1318-19. The district court concluded that

2009-1237 4
comparison of the insoles was not required, holding “that the law requires a court to

consider only those portions of the product that are visible during normal use,

regardless of whether those portions are visible during the point of sale.” Id. at 1315.

The court then explained its rationale:

When a shoe is in use, it’s [sic] insole is, obviously, hidden by the user’s
foot. The sole of the shoe, however is sometimes visible while a person is
sitting or walking. As such, this Court will not consider any aspects of the
insoles of the shoes, but will consider the sole of the shoes as those are
visible during use.

Id. The district court did not determine whether the patents-in-suit were invalid as

obvious.

Seaway timely appealed, and we have jurisdiction under 28 U.S.C. § 1295(a)(1).

Because this appeal is from a grant of summary judgment, we view the record in the

light most favorable to the non-moving party (here Seaway). OddzOn Prods., Inc. v.

Just Toys, Inc., 122 F.3d 1396, 1401 (Fed. Cir. 1997). Anticipation is a question of fact.

Akzo N.V. v. U.S. Int’l Trade Comm’n, 808 F.2d 1471, 1479 (Fed. Cir. 1986).

DISCUSSION

I

Seaway first contends that the district court should have applied the point of

novelty test in addition to the ordinary observer test during its anticipation analysis. Our

decision in Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008) (en

banc), changed the test for infringement. In doing so, we held “that the ‘point of novelty’

test should no longer be used in the analysis of a claim of design patent infringement”

and that “the ‘ordinary observer’ test should be the sole test for determining whether a

design patent has been infringed.” Egyptian Goddess, 543 F.3d at 678. The issue

2009-1237 5
remains whether Egyptian Goddess also requires a similar change in the test for

invalidity. We reserved this question in Egyptian Goddess and more recently in Titan

Tire Corp. v. Case New Holland, Inc., 566 F.3d 1372, 1384 (Fed. Cir. 2009). After

careful consideration, we have concluded that the district court was correct in

concluding that Egyptian Goddess necessarily requires a change in the standard for

anticipation.

Section 171 of Title 35 provides the criteria for obtaining a design patent. It

provides that: “Whoever invents any new, original and ornamental design for an article

of manufacture may obtain a patent therefor, subject to the conditions and requirements

of this title.” 35 U.S.C. § 171. There are two differences in wording between the

requirements for a design patent under § 171 and for a utility patent under 35 U.S.C. §

101. Section 171 excludes the word “useful” (to distinguish design patents from utility

patents) and adds the word “original.” The originality requirement in § 171 dates back

to 1842 when Congress enacted the first design patent law. 1 The purpose of

incorporating an originality requirement is unclear; it likely was designed to incorporate

the copyright concept of originality—requiring that the work be original with the author,

although this concept did not find its way into the language of the Copyright Act until

1909. See 1-2 Melville B. Nimmer & David Nimmer, Nimmer On Copyright § 2.01

(2005) (subject matter of copyright). In any event, the courts have not construed the

word “original” as requiring that design patents be treated differently than utility patents.

Section 171 requires that the “conditions and requirements of this title” be applied

to design patents, thus requiring application of the provisions of sections 102

1
Act of August 29, 1842, ch. 263, § 3, 5 Stat. 543.

2009-1237 6
(anticipation) and 103 (invalidity). Our cases have recognized that in the past we have

applied a dual test for anticipation identical to the then-applicable test for infringement,

namely the ordinary observer and point of novelty tests. See Bernhardt, L.L.C. v.

Collezione Europa USA, Inc., 386 F.3d 1371, 1383 (Fed. Cir. 2004). 2 But the

application of those tests in the context of infringement and anticipation was necessarily

different.

In the case of infringement, in applying the ordinary observer test, we compared

the patented design with the accused design. Contessa, 282 F.3d at 1377. In the case

of anticipation, we compared the patented design with the alleged anticipatory

reference. Door-Master Corp. v. Yorktowne, Inc., 256 F.3d 1308, 1313 (Fed. Cir. 2001).

In applying the point of novelty test in the case of infringement, we looked at

whether the accused design appropriated the points of novelty of the patented design.

Litton Sys., Inc. v. Whirlpool Corp., 728 F.2d 1423, 1444 (Fed. Cir. 1984) (“For a design

patent to be infringed . . . no matter how similar two items look, ‘the accused device

must appropriate the novelty in the patented device which distinguishes it from the prior

art.’” (internal citations omitted)). The points of novelty for the patented design were

determined by comparing the patented design to the prior art designs. Bernhardt, 386

F.3d at 1382. In the case of anticipation, we compared the patented design with the

alleged anticipatory reference to see if it appropriated the points of novelty of the prior

art reference. The points of novelty of the prior art reference were determined by

2
See also Contessa Food Prods., Inc. v. Conagra, Inc., 282 F.3d 1370, 1377
(Fed. Cir. 2002); Unidynamics Corp. v. Automatic Prods. Int’l Inc., 157 F.3d 1311, 1323-
24 (Fed. Cir. 1998); Oakley, Inc. v. Int’l Tropic-Cal., Inc., 923 F.2d 167, 169 (Fed. Cir.
1991); Avia Group Int’l, Inc. v. L.A. Gear Cal., Inc., 853 F.2d 1557, 1565 (Fed. Cir.
1988).

2009-1237 7
looking to earlier prior art to determine the points of novelty in the anticipatory reference.

The ordinary observer and point of novelty tests were applied in much the same manner

for obviousness as for anticipation, 3 except that in the case of obviousness the features

of the prior art could be combined to create a single anticipatory reference or an earlier

single reference could be modified based on the knowledge of a skilled artisan. See,

e.g., Durling v. Spectrum Furniture Co., 101 F.3d 100, 103 (Fed. Cir. 1996).

While our cases have utilized the point of novelty test for infringement and

anticipation, as we pointed out in Egyptian Goddess, 543 F.3d at 672, this test was not

mandated by Smith v. Whitman Saddle Co., 148 U.S. 674 (1893), or precedent from

other courts. In Whitman, the Supreme Court utilized only the ordinary observer test for

determining infringement and invalidity, as did at least one later circuit case following

Whitman (Bevin Bros. Mfg. Co. v. Starr Bros. Bell Co., 114 F. 362, 362 (C.C.D. Conn.

1902)).

Moreover, it has been well established for over a century that the same test must

be used for both infringement and anticipation. 4 This general rule derives from the

Supreme Court’s proclamation 120 years ago in the context of utility patents: “[t]hat

3
See Bernhardt, 386 F.3d at 1384 (noting that the point of novelty determination
“is not especially different from the factual determinations that district courts routinely
undertake” in their obviousness analysis); cf. Goodyear Tire & Rubber Co. v. Hercules
Tire & Rubber Co., 162 F.3d 1113, 1119 (Fed. Cir. 1998) (noting that the district court
had “adopted the same points of novelty that it had relied on in determining that the ‘080
patent was not invalid for obviousness” and affirming the district court’s decision); Litton,
728 F.2d at 1444 (applying the results of the obviousness analysis when determining
the point of novelty of the claimed design).
4
One possible exception is product by process claims. See Amgen Inc. v. F.
Hoffmann-La Roche, Ltd., 580 F.3d 1340, 1370 (Fed. Cir. 2009) (“For product-by-
process claims, that which anticipates if earlier does not necessarily infringe if later.”)

2009-1237 8
which infringes, if later, would anticipate, if earlier.” Peters v. Active Mfg. Co., 129 U.S.

530, 537 (1889). The same rule applies for design patents. See Bernhardt, 386 F.3d at

1378 (explaining that the test for determining anticipation of a design patent is the same

as the test for infringement); Door-Master, 256 F.3d at 1312 (stating that the test for

infringement is the same as the test for anticipation in the design patent context); Litton,

728 F.2d at 1440.

In Egyptian Goddess, we abandoned the point of novelty test for design patent

infringement and held that the ordinary observer test should serve as the sole test for

design patent infringement. 543 F.3d at 678. The ordinary observer test originated in

1871 when the Supreme Court held

that if, in the eye of an ordinary observer, giving such attention as a
purchaser usually gives, two designs are substantially the same, if the
resemblance is such as to deceive such an observer, inducing him to
purchase one supposing it to be the other, the first one patented is
infringed by the other.

Gorham Mfg. Co. v. White, 81 U.S. 511, 528 (1871). In Egyptian Goddess, we also

refined the ordinary observer test by characterizing the ordinary observer as being

“deemed to view the differences between the patented design and the accused product

in the context of the prior art.” 543 F.3d at 676. We explained:

When the differences between the claimed and accused design are
viewed in light of the prior art, the attention of the hypothetical ordinary
observer will be drawn to those aspects of the claimed design that differ
from the prior art. And when the claimed design is close to the prior art
designs, small differences between the accused design and the claimed
design are likely to be important to the eye of the hypothetical ordinary
observer.

Id. We further determined that the point of novelty test, as a second and free-standing

requirement for proof of design patent infringement, was inconsistent with the ordinary

2009-1237 9
observer test laid down in Gorham and was not mandated by Supreme Court cases or

other precedent. Id. at 672.

In light of Supreme Court precedent and our precedent holding that the same

tests must be applied to infringement and anticipation, and our holding in Egyptian

Goddess that the ordinary observer test is the sole test for infringement, we now

conclude that the ordinary observer test must logically be the sole test for anticipation

as well. In doing so, we will prevent an inconsistency from developing between the

infringement and anticipation analyses, and we will continue our well-established

practice of maintaining identical tests for infringement and anticipation.

We note as well that the problems inherent in the point of novelty test in the

infringement context also exist in the anticipation context. The test is just as difficult to

apply in the context of anticipation as in the context of infringement, encouraging the

focus on minor differences between the allegedly anticipatory reference and the

patented design. So too, applying the point of novelty test in the context of anticipation,

as in the context of infringement, creates the need to canvass the entire prior art to

identify the points of novelty. In addition, eliminating the point of novelty test for

anticipation “has the advantage of avoiding the debate over the extent to which a

combination of old design features can serve as a point of novelty under the point of

novelty test.” Id. at 677. Just as the problems deriving from the point of novelty test

exist in both the infringement and anticipation contexts, the benefits of applying the

refined ordinary observer test are identical in both.

Seaway’s arguments to preserve the point of novelty test for invalidity are

unconvincing. Seaway argues that adopting the ordinary observer test for anticipation

2009-1237 10
will blur the distinction between the tests for obviousness under § 103 and for

anticipation under § 102, resulting in jury confusion. According to Seaway, the test for

invalidity due to obviousness is whether a designer of ordinary skill in the art would have

found the patented design, as a whole, obvious in light of the prior art. Litton, 728 F.2d

at 1443. The test for invalidity due to anticipation, on the other hand, requires the jury to

consider the perspective of the ordinary consumer. There is in fact no potential for

confusion. For design patents, the role of one skilled in the art in the obviousness

context lies only in determining whether to combine earlier references to arrive at a

single piece of art for comparison with the potential design or to modify a single prior art

reference. 5 Once that piece of prior art has been constructed, obviousness, like

anticipation, requires application of the ordinary observer test, not the view of one

skilled in the art. And, as noted by Seaway, “[b]oth the ordinary observer test, whether

applied for infringement or invalidity, and the obviousness test, applied for invalidity

under Section 103, focus on the overall designs.” Appellant’s Br. 28 (citing OddzOn,

122 F.3d at 1405, and Litton, 728 F.2d at 1443). Under these circumstances, we see

no potential for jury confusion.

5
That combination or modification would not necessarily yield a single piece of
prior art identical to a patented design since there may be no motivation to change the
prior art to achieve such identity.

2009-1237 11
 In summary, the district court did not err in concluding that the ordinary observer

test is the sole test for design patent invalidity under § 102.

II

A

Seaway’s second contention is that, even if the ordinary observer test is found to

be the sole and proper test for anticipation under § 102, the district court misapplied the

ordinary observer test by failing to compare the entirety of the patented designs,

including the clogs’ insoles, with the Crocs ’789 patent. The district court, relying on

Contessa, held “that the law requires a court to consider only those portions of the

product that are visible during normal use, regardless of whether those portions are

visible during the point of sale.” Int’l Seaway Trading Corp., 599 F. Supp. 2d at 1315.

The court did “not consider any aspects of the insoles of the shoes” because the insoles

are “hidden by the user’s foot.” Id. We conclude that the district court erred, and we

vacate and remand for a determination of whether the differences between the insole

patterns in the patents-in-suit and in the prior Crocs art bar a finding of anticipation or

obviousness.

In Contessa, we considered the issue of infringement with regard to a shrimp

serving tray. The district court held that “any reasonable fact finder would conclude that

the competing designs are substantially similar despite the minor differences in tray

structure.” Contessa, 282 F.3d at 1377. The district court did not consider the

undersides of the trays because they were not visible at the time of sale. Id. at 1377-78.

On appeal, we stated: “Our precedent makes clear that all of the ornamental features

illustrated in the figures must be considered in evaluating design patent infringement.”

2009-1237 12
Id. at 1378. We found that the district court in Contessa erred by limiting its

infringement inquiry to those features visible at the time of sale, rather than to those

features visible at any time in the “normal use” lifetime of the accused product. Id. at

1379. We explained that “normal use” in the design patent context extends from the

completion of manufacture or assembly until the ultimate destruction, loss, or

disappearance of the article. Id. at 1379-80 (citing In re Webb, 916 F.2d 1553, 1557-58

(Fed. Cir. 1990)). The same test necessarily applies to anticipation.

The district court here misconstrued Contessa as requiring that the normal use of

a clog be limited to the time when it is worn. Contessa did not exclude the point of sale

from the normal use of a product. Rather, it emphasized that normal use should not be

limited to only one phase or portion of the normal use lifetime of an accused product.

Id. at 1380 (citing KeyStone Retaining Wall Sys., Inc. v. Westrock, Inc., 997 F.2d 1444,

1450 (Fed. Cir. 1993)). The sale of a clog occurs after it has been manufactured and

before it is ultimately destroyed. Thus, the point of sale for a clog clearly occurs during

its normal use lifetime. At the point of sale, the insole is visible to potential purchasers

when the clog is displayed on a shelf or rack and when the clog is picked up for

examination. Similarly, removing a clog from a wearer’s foot also occurs after

manufacture and before destruction of the clog, so it also falls squarely within the clog’s

normal use lifetime. The wearer may remove the clog temporarily to stretch out his or

her toes, leave the clogs on the beach to go for a swim, or engage in countless other

activities that would leave the insole exposed.

Walgreens and Touchsport acknowledge that the district court misinterpreted

Contessa but argue that it was harmless error. They assert that it was a harmless error

2009-1237 13
because insoles have an insignificant effect on the overall visual appearance of the

clogs. They claim there is a “universal truth that consumers buy shoes primarily for their

exterior appearance. The insole therefore contributes little to the overall appearance of

the shoe to an ordinary observer with knowledge of the prior art.” Appellees’ Br. 51.

We reject this argument. The burden is on an accused infringer to show by clear and

convincing evidence facts supporting the conclusion that the patent is invalid. Mentor

H/S, Inc. v. Med. Device Alliance, Inc., 244 F.3d 1365, 1375 (Fed. Cir. 2001). Hence,

Walgreens and Touchsport had the burden to establish by clear and convincing

evidence that consumers do not consider the insoles of shoes to be significant. The

appellees failed to present any evidence in support of this argument.

Walgreens and Touchsport also argue that the district court’s error was harmless

because the asserted differences between the insoles of the patents-in-suit and the

prior art “were at most slight variations of design elements already present in the Crocs

prior art.” Appellees’ Br. 51. We disagree. The insole pattern for the patents-in-suit is

distinctly different than the Crocs insole pattern.

Figure 6 in the ’789 Patent Figure 6 in the ’263 Patent

The Crocs ’789 patent, as shown above in the figure on the left, contains a long, U-

shaped dimpling pattern on the insole. In contrast, the patents-in-suit, as demonstrated

above in the figure on the right, have a dimpling pattern that includes multiple short rows

2009-1237 14
of dimples. Because we cannot say that these differences are insignificant as a matter

of law, a genuine issue of material fact exists as to whether the designs would be

viewed as substantially similar in the eyes of the ordinary observer armed with the

knowledge of the prior art.

Beyond the insole features of its patented designs, Seaway argues that a

genuine issue of material fact exists as to whether the exterior features of its designs

preclude a finding of anticipation. It claims that four exterior features differ from the

prior art to the degree necessary to preclude summary judgment: (1) the number and

arrangement of the circular openings on the upper of the clog; (2) the number and

position of the rectangular cut-outs in the lower portion of the upper of the clog; (3) the

shape of the toe portion of the clog; and (4) the raised pattern of the outsole of the clog.

These features are identical in all three of Seaway’s patents-in-suit. With regard to

these alleged dissimilarities, the district court stated:

Slight variations on the number and position of the circular holes on the
top of the shoe, the rectangular holes on the toe of the shoe as well as the
design of different shaped rectangles on the sole of the shoe would not
convince a reasonable jury, or an ordinary observer with knowledge of the
prior art, that the limitations were not inherently disclosed in the ′789
patent. This conclusion does not change merely because plaintiff slightly
changed the arrangement of the textured portions on the top and around
the bottom portion of the sides of the shoe.

Int’l Seaway Trading Corp., 599 F.Supp. 2d at 1318. We agree with the district court

that these minor variations in the shoe are insufficient to preclude a finding of

anticipation because they do not change the overall visual impression of the shoe.

Although the ordinary observer test requires consideration of the design as a whole,

Egyptian Goddess, 543 F.3d at 675; Contessa, 282 F.3d at 1378; Braun, Inc. v.

Dynamics Corp. of Am., 975 F.2d 815, 820 (Fed. Cir. 1992), this does not prevent the

2009-1237 15
district court on summary judgment from determining that individual features of the

design are insignificant from the point of view of the ordinary observer and should not

be considered as part of the overall comparison. The mandated overall comparison is a

comparison taking into account significant differences between the two designs, not

minor or trivial differences that necessarily exist between any two designs that are not

exact copies of one another. Just as “minor differences between a patented design and

an accused article's design cannot, and shall not, prevent a finding of infringement,”

Litton, 728 F.2d at 1444, so too minor differences cannot prevent a finding of

anticipation.

B

As an alternative basis for affirming the judgment, Walgreens and Touchsport

argue that the patents-in-suit are invalid as obvious under § 103. The district court did

not determine whether obviousness was a ground for finding invalidity. Int’l Seaway

Trading Corp., 599 F. Supp. 2d at 1313 (“Since this Court holds that the patent is

anticipated under § 102 it will not determine whether the patent was also obvious under

§ 103.”). Nonetheless, Walgreens and Touchsport assert that the issue can be

considered on appeal because they raised both anticipation and obviousness

arguments below.

Obviousness, like anticipation, requires courts to consider the perspective of the

ordinary observer. Therefore, for the same reasons that the district court’s failure to

compare the insoles of the patented designs to the prior art designs precludes a finding

of anticipation, it also precludes a finding of obviousness.

2009-1237 16
 We thus conclude that, while the district court correctly determined that there was

no genuine issue of material fact that the exterior features of the patented designs were

substantially similar to the Crocs ’789 patent, the court erred by failing to consider the

insoles of the patents-in-suit in its invalidity analysis.

CONCLUSION

In summary, we conclude that the district court correctly held that the ordinary

observer test is the sole test of invalidity. The district court erred, however, in failing to

compare the insole patterns in Seaway’s patented designs to the prior art as part of an

overall comparison of the designs. We vacate and remand for further proceedings on

the limited issue of whether the differences in the insole patterns between the prior

(Crocs) art and the patented designs bar a finding of anticipation or obviousness.

AFFIRMED-IN-PART, VACATED-IN-PART, and REMANDED

COSTS

No costs.

2009-1237 17
 United States Court of Appeals for the Federal Circuit

2009-1237

INTERNATIONAL SEAWAY TRADING CORPORATION,

Plaintiff-Appellant,

v.

WALGREENS CORPORATION and
TOUCHSPORT FOOTWEAR USA, INC.,

Defendants-Appellees.

Appeal from the United States District Court for the Southern District of Florida
in case no 08-CV-80163, Senior Judge Kenneth L. Ryskamp.

CLEVENGER, Circuit Judge, dissenting in part.

I part company with the court on only one issue, which is the scope of the district

court's further action on remand.

The majority concludes that the district court was correct as a matter of law in

holding that the ordinary observer must find anticipation when comparing the four

different exterior design elements of the patented designs with the Crocs design patent.

However, with regard to the comparable insole designs, the majority ascertains a

sufficient difference to preclude anticipation as a matter of law. The majority thus

concludes that the law permits dissection of a design as a whole into its component

pieces. With laser-like focus, the fact finder is permitted to decide that the changes on

the top of the clogs are trivial enough to sustain anticipation. The same holds for

changed design elements on the lower portions of the clogs, the shape of the toe
portions and the raised pattern of the outsoles. Because the majority is not satisfied

that the same can be said of the changed insole design, which the district court

erroneously refused to assess, the insole design is carved out of the overall design and

independently remanded for further proceedings.

As recognized by the majority, the ordinary observer test requires assessment of

the designs as a whole. See Egyptian Goddess v. Swisa, Inc., 543 F.3d 665, 675 (Fed.

Cir. 2008) (en banc); Contessa Food Prods., Inc. v. Conagra, Inc., 282 F.3d 1370, 1378

(Fed. Cir. 2002); Oddzon Prods., Inc. v. Just Toys, Inc., 122 F.3d 1396, 1405 (Fed. Cir.

1997). I agree that the differences in the inner sole designs are to be assessed as part

of the anticipation inquiry. But the differences in the inner sole designs must be

appreciated in conjunction with all of the design differences. This is so especially with

regard to the differing number and arrangement of the circular openings on the upper of

the clogs.

When the two designs are observed from above, as shown in the above figures,

the distinctions in the different number and location of the circular openings on the

upper of the clogs are apparent, in addition to the different insole designs. And when

the differing insoles are sorted in the mind of the ordinary observer along with the four

external differences of the clogs, the ordinary observer surely reaches a different

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conclusion about the designs as a whole than when the ordinary observer only looks at

the differences in the insoles.

The effect of the majority bifurcation of the insole design differences from the

exterior design differences, and the piecemeal adjudication of the exterior design

differences, is to treat the patents on remand as without any exterior design. The fact

finder will only assess anticipation on the basis of design differences on the insoles.

I think this violates the rule for anticipation that the designs have to be compared as a

whole. The effect of the summation of all the design differences is what counts, not the

comparison of differences one by one, isolated from each other. Such an approach

invites the problems we sought to eliminate by rejecting the "point of novelty" test. As

the court stated in Egyptian Goddess, when there are several different alleged points of

novelty, "[t]he attention of the court may therefore be focused on whether the accused

design has appropriated a single specified feature of the claimed design, rather than on

the proper inquiry, i.e., whether the accused design has appropriated the claimed

design as a whole." 543 F.3d at 667. Remanding for adjudication of anticipation solely

on the insole inappropriately focuses the fact finder on a single specified feature of the

claimed design.

The majority has forged a new rule for design patent anticipation, if not for

infringement as well. The new rule is that the "design as a whole" rule

does not prevent the district court on summary judgment from determining
that individual features of the design are insignificant from the point of
view of the ordinary observer and should not be considered as part of the
overall comparison. The mandated overall comparison is a comparison
taking into account significant differences between the two designs, not
minor or trivial differences that necessarily exist between any two designs
that are not exact copies of one another. Just as 'minor differences
between a patented design and an accused article's design cannot, and

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 shall not, prevent a finding of infringement,' Litton, 728 F.2d 1444, so too
minor differences cannot prevent a finding of anticipation.

Maj. Op. at 16, lines 1-12.

The majority's reliance on Litton Systems, Inc. v. Whirlpool Corp., 728 F.2d 1423

(Fed. Cir. 1984), to support its new rule is misplaced. The quotation from the Litton

opinion is in the context of that court's faithful application of the "design as a whole" rule.

Minor differences between one design taken as a whole and another design likewise

appreciated (the "mandated overall comparison"), of course, cannot fool the ordinary

observer. So the court in Litton, after earlier quoting verbatim from Gorham Co. v.

White, was correct in stating "that minor differences between a patented design and an

accused article's design cannot, and shall not, prevent a finding of infringement."

728 F.2d at 1444 (emphasis added). The majority would have us believe that the Litton

decision authorizes dissection of designs into component parts for purposes of partial

summary judgments of anticipation or infringement. That is not correct and runs

counter to precedent. 1

The district court should be directed on remand to evaluate the differences in the

designs as a whole. Partial judgments of anticipation on segments of a design prohibit

assessment of designs as a whole, in violation of long-standing law, starting with

Gorham.

1
See, e.g., Braun Inc. v. Dynamics Corp. of Am., 975 F.2d 815, 820 (Fed. Cir.
1992) ("In evaluating a claim of design patent infringement, a trier of fact must consider
the ornamental aspects of the design as a whole and not merely isolated portions of the
patented design.") (citing In re Salmon, 705 F.2d 1579, 1582 (Fed. Cir. 1983)); In re
Rubinfield, 270 F.2d 391, 395 (CCPA 1959) ("It has been consistently held for many
years that it is the appearance of a design as a whole which is controlling in determining
questions of patentability and infringement."), cert. denied, 362 U.S. 903 (1960).

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