Wednesday, September 16, 2015

High Point Designs Part II - "Overall Appearance" Does Not Mean "Abstract Design Concept"

In round two of High Point Design v. Buyer's Direct, (i.e. the fuzzy slipper case), the Federal Circuit held that a design patent for the ornamental appearance of a fuzzy slipper held by Buyer’s Direct, Inc. (“BDI”) was not anticipated by an alleged prior art slipper.  On the other hand, the Federal Circuit also held that meaningful differences in the overall visual effect of the design patent and an alleged infringing product supported a summary judgment determination of non-infringement.  See High Point Design LLC v. Buyer’s Direct, Inc., No. 14-1464 (Fed. Cir. July 30, 2015).

Buyer's Direct's design patent, D598,183 is for the ornamental appearance of a fuzzy slipper as shown and described in eight figures.  Figures 1 and 4 are shown above.  High Point manufactures and distributes the accused FUZZY BABBA® slipper (shown below).  Upon learning of the Fuzzy Babba slipper, Buyer's Direct sent a cease and desist letter to High Point and High Point responded by filing a declaratory judgment action claiming that the ’183 Patent was invalid and that the design of the accused product did not infringe.  You can read our analysis of the first trip to the Federal Circuit in this case here.  On this second appeal to the Federal Circuit, the court reviewed the district court’s grant of summary judgment of invalidity and non-infringement.

Regarding invalidity, the Federal Circuit performed a side-by-side comparison of the ’183 Patent and the prior art (Laurel Hill slipper and Penta slipper shown above) noting that there were meaningful differences between the slipper designs overlooked in the district court’s analysis.  Specifically, the Court criticized the district court’s analysis of the ’183 Patent as doing little more than pointing out the main concepts of the claimed design as “a structural slipper having fuzzy material at the foot opening.”  In comparing the prior art and the ’183 Patent, the court pointed to differences in the curvatures of the slipper bodies, the protruding fuzz, and the ornamental aspects of the soles.  Based these features, the Court held that “the evidence is not so clear and convincing such that a reasonable fact-finder could not find for Buyer's Direct on anticipation.”

Regarding non-infringement, the Federal Circuit concluded that “the patented and accused designs bring to mind different impressions.”  The court noted that whereas the Fuzzy Babba slipper appears “soft and formless,” the claimed design appears “structured and formed.”  Further, the Federal Circuit identified meaningful differences in the soles, as the Court did when performing the invalidity analysis.  Based on these findings, the Court agreed with the district court that a comparison with the prior art was not necessary for a ruling on infringement, and a judgment of non-infringement was appropriate.

While this disposition was non-precedential, it does offer some insight as to how the Federal Circuit is scrutinizing judgments of invalidity and non-infringement.  A recurring theme in the decision is that the distinctive visual appearance of the claimed design must be considered when performing a side-by-side comparison with prior art.  Distillation of the visual appearance to a high level of abstraction will not support a summary judgment decision of invalidity. Similarly, high-level similarities between a claimed design and an alleged infringing product will not be sufficient to demonstrate infringement.  While the High Point decision doesn't announce a return to the old "point of novelty" test, it does seem to suggest that assessing the "overall appearance" of a design does not mean reducing the design to a design concept

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