International Seaway Trading Corp. v. Walgreens Corp.

Section 171 makes design patents subject to the Patent Act’s general conditions, including anticipation and obviousness. Although earlier Federal Circuit cases had employed both the ordinary-observer and point-of-novelty tests in anticipation analysis, the Supreme Court’s traditional design-patent framework did not require the latter test.

In Egyptian Goddess, the en banc court eliminated the point-of-novelty test as an independent requirement for infringement and retained the ordinary-observer test, informed by the prior art. Longstanding patent doctrine provides that what would infringe if made later would anticipate if it existed earlier. Because infringement and anticipation must use the same comparison standard, Egyptian Goddess logically requires the same change for anticipation.

The point-of-novelty test would create the same problems in anticipation that it created in infringement: it invites undue focus on small individual differences, requires a burdensome search through prior art to identify novelty points, and raises difficult questions about whether combinations of old features can be novelty points. The refined ordinary-observer test avoids those problems while directing attention to the overall visual impression in light of the prior art.

Using the ordinary-observer test for anticipation does not collapse anticipation into obviousness. In design-patent obviousness analysis, an ordinary designer’s role is principally to determine whether prior-art designs should be combined or modified. Once the relevant prior-art design is identified, the ultimate visual comparison, like anticipation, is made from the perspective of the ordinary observer.

All ornamental features depicted in a design patent’s figures must be considered. Under Contessa, an article’s “normal use” extends from completion of manufacture through its ultimate destruction, loss, or disappearance; it is not confined to the period in which a particular user is actively wearing or operating the article.

The district court mistakenly treated normal use of a clog as limited to the time it is worn. A clog’s insole is visible at the point of sale, when shoppers inspect it, and when the wearer takes it off. Those events occur during the product’s normal-use lifetime, so the insole could not be disregarded merely because a foot covers it during wear.

The accused parties bore the clear-and-convincing-evidence burden on invalidity and offered no evidence that ordinary consumers consider insoles insignificant. Moreover, the Crocs patent showed a long U-shaped dimpling pattern, while Seaway’s patents showed multiple short rows of dimples. The court could not deem that difference legally insignificant as a matter of law.

The claimed variations in the number and placement of circular upper openings, rectangular cutouts, toe shape, and outsole pattern did not materially alter the clogs’ overall visual impression. An ordinary observer familiar with the prior art would regard those exterior variations as minor, so they did not themselves create a triable anticipation issue.

The requirement to assess a design as a whole does not bar a court from recognizing on summary judgment that particular asserted distinctions are trivial. Minor differences cannot defeat anticipation any more than they can defeat a finding of infringement between substantially similar designs.

Walgreens and Touchsport’s alternative obviousness argument also failed at this stage. Because design-patent obviousness ultimately requires the ordinary-observer comparison as well, the district court’s failure to consider the insole design prevented a conclusive finding of obviousness. The court therefore affirmed the legal rule governing anticipation, vacated the invalidity judgment in part, and remanded for further proceedings concerning the insole differences and their effect on anticipation or obviousness.