High Point Design LLC et al. v. Buyers Direct, Inc.

The Court of Appeals for the Federal Circuit (CAFC) recently issued a precedential unanimous opinion in High Point Design LLC et al. v. Buyers Direct, Inc. reversing in part, vacating in part, and remanding the district court’s decision in relation to design patent D598,183 (“the ‘183 patent”).

The case primarily addressed the validity of design patents in terms of obviousness and functionality, and also considered the sufficiency of pleadings of trade dress infringement.  In its discussion, the CAFC clarified the proper standards for determining the obviousness and functionality of design patents.   By way of disclosure, Buyers Direct, Inc. (“BDI”) was represented on appeal by Andrew M. Ollis, Frank J. West, and Philippe J.C. Signore of Oblon Spivak.

The ‘183 patent claims an “ornamental design for a slipper,” as shown in the drawing below:

The ‘183 patent has been commercialized in the snoozies!® footcovering, shown here:

After BDI sent a cease and desist letter to High Point Design LLC (“High Point”), High Point filed suit for declaratory judgment that the ‘183 patent was invalid and/or unenforceable and not infringed.  In its answer, BDI filed counterclaims of infringement of the ‘183 patent and trade dress infringement.

Four days after the deadline to amend pleadings had passed, High Point filed a combined motion seeking summary judgment of invalidity and non-infringement of the ‘183 patent and judgment on the pleadings in regard to the trade dress infringement counterclaims.  In BDI’s opposition, it included an expert declaration from a designer opining that the ‘183 patent was valid, and included proposed amended pleadings supplementing the trade dress infringement counterclaim.

The district court granted the motion for summary judgment, finding that the ‘183 patent was invalid as (1) obvious in light of the prior art and (2) primarily functional rather than primarily ornamental.  The district court also dismissed the trade dress infringement counterclaims with prejudice.


The CAFC reversed the grant of summary judgment of obviousness and remanded the case to the district court.  The CAFC explained the test for determining obviousness of design patents, clarifying that potential obviousness must be evaluated from the point of view of an ordinary designer, not an ordinary observer as the district court had done.  As such, the expert declaration submitted by BDI should have been considered.

Additional errors made by the district court were also noted by the CAFC for correction on remand.  First, the CAFC held that the district court failed to discern the correct visual impression of the patented design and, instead, simply described the general concept by using “too high a level of abstraction” and “failing to focus on the distinctive visual appearances of the reference and the claimed design.” Second, the CAFC held that the judge did not communicate her reasoning behind the selection of a primary reference, and the CAFC suggested that a side-by-side comparison is necessary.  Last, the CAFC stated that the district court did not consider BDI’s evidence of secondary considerations, but this evidence must always be considered when determining obviousness.


The CAFC also reversed the grant of summary judgment of functionality and remanded the case to the district court for reconsideration.  The panel cautioned that the function of the article must not be confused with the functionality of the design, and held that the district court used the wrong standard in evaluating functionality.  The correct standard is to assess whether “the claimed design is 'primarily functional' or 'primarily ornamental,' i.e., whether the claimed design is ‘dictated by’ the utilitarian purpose of the article,” not to determine whether “the design’s primary features can perform functions.”

Trade Dress

Since the deadline for amending pleadings was over, the CAFC noted that the standard in evaluating a request to amend pleadings is “good cause” under Rule 16(b).  Since the district court did not explain whether this standard was used, and, if so, failed to explain why good cause did not exist, the dismissal was vacated and the case remanded.  The CAFC noted factors to be considered, including the moving party’s diligence, whether amendment will prejudice the defendants, and notice.


ITC: Toyo - Investigation Instituted

Further to our prior post on Toyo's ITC filing, according to a news release of September 16, 2013, the ITC voted to investigate Toyo's claims and will set a target date for completing the investigation within 45 days. 


ITC: Toyo files new complaint regarding tire design patents

On August 14, 2013, Toyo Tire & Rubber Co., Ltd. of Japan filed a new complaint requesting that the ITC commence an investigation pursuant to Section 337.  In summary, Toyo alleges 22 proposed Respondents infringe Toyo's design patents with one or more tire models, as follows (see pp. 41-42 of the complaint).

Toyo alleges Respondents' products are for many different types of vehicles and terrain, and Respondents' tires copy unique and innovative tread and side wall designs that Toyo incorporates into its tires.  Toyo's design patents at issue are directed to various sidewall and tread designs. 

The design patent alleged to be infringed by the most number of models is US D487,424, Fig. 2 of which is reproduced below.


Apple v. Samsung: ITC - No violation of Apple's Design Patents

According to the Notice of August 9, 2013, the ITC determined that Apple has proven a violation of Section 337 with respect to US 7,479,949 and 7,912,501, but that no violation has been proven with respect to US D618,678 and US D558,757.  Specifically, the Notice at p. 3 states:

[T]he Commission has determined that Apple has not proven a violation based on alleged infringement of the D’678, the D’757, the ‘922, and the ‘697 patents.  Specifically, the Commission has determined that the asserted claim of the D’678 patent is valid but not infringed, and that Apple’s iPhone, iPhone 4 and iPhone 4s practice the D’678 patent, but not the iPhone 3G and iPhone 3GS.  The Commission has also determined that the asserted claim of the D’757 patent is valid but not infringed, and Apple’s iPhone 3G and 3GS do not practice the D’757 patent. 
The Commission has further determined that Apple has proven a domestic industry exists in the United States relating to articles protected by the D’678, the ’922 and the ’697 patents, but not the D’757 patent.

As summarized by Eric Schweibenz at the ITC 377 Law Blog:

The Commission’s decision in favor of Apple in this investigation comes on the heels of President Obama’s recent decision to disapprove of the Commission’s determination to issue an exclusion order and a cease and desist order against various Apple products in Certain Electronic Devices, Including Wireless Communication Devices, Portable Music and Data Processing Devices, and Tablet Computers (Inv. No. 337-TA-794).  See our August 5, 2013 post for more details.


Graphical User Interfaces

Design patents for graphical user interfaces (GUIs) and computer-generated icons are becoming increasingly popular in the U.S. and abroad, with large technology companies enhancing their patent portfolios in this regard as the strategic value of such patents becomes more evident.  One high-profile, high-stakes case illustrating this point is the ongoing patent infringement saga between Apple and Samsung, which involves several design patents directed to GUIs and computer-generated icons.  Other large technology companies, such as Microsoft and Sony, are also active in the area of design patent protection for GUIs and computer-generated icons.

Whether patent protection is available for GUIs and computer-generated icons differs from country to country, and the various laws in this area are constantly evolving, or at the very least are hot topics for discussion.  For example, Taiwan’s new Patent Act, which took effect on January 1, 2013, broadened the scope of design patent protection to GUIs and computer-generated icons, among others areas.

Also, as previously reported, during the U.S. Patent and Trademark Office’s Design Day earlier this year, Japanese Patent Office (JPO) representative Mr. Omine, Deputy Director, Design Policy Section, International Affairs Division, presented on the topic of recent developments regarding design protection for graphical user interfaces GUIs before the JPO.

Less than a year ago, Oblon Spivak hosted a delegation from the Japanese Patent Office, including Messrs. Masato Yamada (Director of Legislative Affairs), Takao Seino, Tatsuya Suto, and Masashi Nemoto.  Design protection for GUIs and computer-generated icons in the U.S. and Japan was a major topic of discussion.

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