High Point Design LLC v. Buyer's Direct, Inc.
730 F.3d 1301
| Fed. Cir. | 2013Background
- BDI owns U.S. Design Patent No. D598,183 for SNOOZIES slippers and sued for infringement; High Point designs FUZZY BABBA slippers accused of infringing BDI’s patent and asserting noninfringement/invalidity defenses.
- District court granted summary judgment that the ’183 patent was invalid for obviousness (combination of Woolrich prior art and secondary references) and that trade dress claims were dismissed with prejudice.
- District court also held the design to be primarily functional, restricting BDI’s design rights.
- BDI asserted counterclaims for infringement and trade dress infringement; High Point and retailers Meijer, Sears Holdings, and Wal‑Mart were named as third‑party defendants.
- BDI appealed, challenging both the invalidity ruling and the dismissal of its trade dress claims; the Federal Circuit reversed in part and remanded for further proceedings.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| What standard governs obviousness for a design patent? | BDI argues the district court used an ordinary observer standard. | Appellees contend the ordinary observer standard is appropriate for assessing overall visual appearance. | District court erred; obviousness must be from the viewpoint of an ordinary designer. |
| Whether Woolrich Prior Art can serve as a proper primary reference and the district court’s reasoning | BDI contends Woolrich is not basically the same as the claimed design; genuine issues exist. | Appellees argue either Penta or Laurel Hill can serve as the primary reference; reasoning need not be empirical. | Remand required for proper Durling two-step analysis with sufficient reasoning and side-by-side comparison. |
| Whether the district court correctly treated the design as primarily functional | BDI asserts the court misapplied a function-by-feature analysis. | Appellees maintain the design’s features perform utilitarian functions. | Remand; the court should apply the correct design-function framework focusing on overall appearance. |
| Whether the trade dress claims should be dismissed without prejudice and how amendments should be governed | BDI sought to amend to specify trade dress; denial premised on scheduling order. | Appellees rely on Rule 16(b) good cause and lack of prejudice. | Remand to determine good cause under Rule 16(b); potential dismissal may be without prejudice. |
Key Cases Cited
- Durling v. Spectrum Furniture Co., 101 F.3d 100 (Fed. Cir. 1996) (two-step obviousness framework for design patents; visual impression and single primary reference)
- Apple Inc. v. Samsung Elecs. Co., 678 F.3d 1314 (Fed. Cir. 2012) (design patent obviousness based on ordinary designer standard)
- Nalbandian v. Berol, 661 F.2d 1214 (CCPA 1981) (rejected ordinary observer as sole standard; design patent obviousness by designer viewpoint)
- Avia Group Int’l, Inc. v. LA Gear Cal., 853 F.2d 1557 (Fed. Cir. 1988) (design patent obviousness from ordinary designer; functional vs ornamental analysis)
- L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d 1117 (Fed. Cir. 1993) (ornamental vs functional design analysis; ordinary skill standard)
- PHG Techs., LLC v. St. John Cos., 469 F.3d 1361 (Fed. Cir. 2006) (factors for determining functionality in design patents)
- Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530 (Fed. Cir. 1983) (secondary considerations considered in obviousness)
- Hupp v. Siroflex of Am., Inc., 122 F.3d 1456 (Fed. Cir. 1997) (design patent obviousness framework and function versus appearance)