621 F. App'x 632
Fed. Cir.2015Background
- BDI owns design patent D598,183 claiming the ornamental design of a fuzzy slipper; High Point sells an accused Fuzzy Babba slipper and BDI sells the Snoozie commercial embodiment.
- High Point sued for declaratory judgment of noninfringement and invalidity; BDI counterclaimed for infringement of the design patent and for trade dress.
- District court initially granted summary judgment invalidating the patent as obvious/anticipated and dismissed the trade dress claim; this court reversed in High Point I and remanded for correct legal standards.
- On remand the district court again granted summary judgment: held the patent anticipated by Woolrich prior art, held Fuzzy Babba did not infringe, denied BDI additional discovery, and denied BDI leave to amend under Rule 16(b).
- On second appeal the Federal Circuit reversed summary judgment of invalidity (insufficient clear and convincing evidence of anticipation), affirmed noninfringement, and affirmed denial of additional discovery and denial of leave to amend.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether D’183 was anticipated by Woolrich prior art | BDI: designs are not identical; ornamental differences (fuzz profile, sole patterns) preclude anticipation | High Point: prior art shows same overall structured body, protruding fuzz, and durable-looking sole; therefore identical in material respects | Reversed — a reasonable jury could find no clear and convincing anticipation; summary judgment improper |
| Whether accused Fuzzy Babba infringes D’183 | BDI: accused product is embodiment-related (Snoozie similarity) and should be compared to patentee’s commercial product | High Point: Fuzzy Babba is soft/formless and plainly dissimilar in profile and sole ornamentation | Affirmed — designs are plainly dissimilar; no infringement as a matter of law |
| Whether BDI should get additional discovery under Rule 56 | BDI: needs discovery on product presentation/advertising to raise factual dispute on infringement | High Point: relevant materials are publicly available; BDI delayed and offered no strong need | Affirmed — denial of additional discovery was not an abuse of discretion |
| Whether BDI showed "good cause" to amend pleadings after scheduling deadline (Rule 16(b)) | BDI: sought to amend trade dress claim after deadline and argued district court should allow amendment | High Point: BDI had the information and notice earlier; failed to meet deadline without adequate diligence | Affirmed — district court did not abuse discretion in denying leave to amend |
Key Cases Cited
- High Point Design LLC v. Buyers Direct, Inc., 730 F.3d 1301 (Fed. Cir. 2013) (prior appeal reversing district court’s flawed obviousness analysis and instructing remand)
- Apple, Inc. v. Samsung Elecs. Co., 678 F.3d 1314 (Fed. Cir. 2012) (design analysis must focus on distinctive visual appearance, not high-level concept)
- Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008) (adopting Gorham test as sole test for design patent infringement)
- Gorham Mfg. Co. v. White, 81 U.S. 511 (U.S. 1871) (ordinary observer test for substantial similarity in design patents)
- Door-Master Corp. v. Yorktowne, Inc., 256 F.3d 1308 (Fed. Cir. 2001) (anticipation of design patents requires identity in all material respects)
- Contessa Food Prods., Inc. v. Conagra, Inc., 282 F.3d 1370 (Fed. Cir. 2002) (all ornamental features illustrated must be considered in design-patent analysis)