Thursday, March 25, 2010

How to Observe Ordinarily - Applying the Ordinary Observer Test

Int’l Seaway Trading Corp. v. Walgreens Corp.

In an interesting decision both in terms of the products at issue and for the extension of the Ordinary Observer test, the CAFC agreed in part with the lower court’s holding of anticipation, reversed in part and remanded for further consideration.
The design patents at issue covered lightweight footwear or “clogs.” Representative figures from the design patents (D529,263, D545,032 and D545,033) and the prior art (Crocs Patent D517,789) under consideration are shown below.



The district court held that the Ordinary Observer test should be the only test to apply when evaluating a design. The Court granted summary judgment of anticipation under that test as to the exterior of the shoe, excluding the interior from consideration. The Court reasoned that an ordinary observer would not see the interior of the footwear while it was being worn. The CAFC agreed as to the test to apply and that the exterior of the shoe would be anticipated, but disagreed that the interior of the shoe should be ignored. The CAFC determined that Contessa, on which the district court relied, requires consideration of any features visible during normal use, and because normal use would include display of the footwear for sale, the interior could not be excluded. The CAFC held that district court failed to consider the design as a whole when it excluded the interior, and remanded the question of whether the difference in the interior of the shoes precluded a finding of anticipation or obviousness.

In a noteworthy dissent, Judge Clevenger questioned whether the remand was appropriate. To the dissent, remand for consideration of a single component of the shoe (the interior) conflicted with the as a whole test being endorsed. “The effect of the summation of all of the design differences is what counts, not the comparison of differences one by one, isolated from each other.”

The majority endorsed the Ordinary Observer test, eliminating the “points-of-novelty” test when determining infringement. Under the old test, one must show that accused device appropriated novel features of a patented design identified by the parties. As the CAFC acknowledged the debate over these points of novelty “encourage[es] the focus on minor differences between the allegedly anticipatory reference and the patented design.” The determination of the points-of-novelty typically dictated the result under this test, providing fertile ground for argument regarding any identified point of novelty. The Ordinary Observer test, however, focuses on the design as a whole – “in the eye of an ordinary observer . . . two designs are substantially the same, if the resemblance is such as to deceive such an observer.” In making this determination the ordinary observer is “deemed to view the differences between the patented design and the accused product in the context of the prior art.”

Although the Seaway decision makes clear that the Ordinary Observer test is the only test to apply, how the ordinary observer should view differences, and what weight to give differences between various elements when considering the design as a whole, may still need to be resolved by subsequent decisions.

The decision can be found here.

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