The Federal Circuit continues to issue high profile decisions on design patents, elevating them to a higher status. Yesterday, the courts issued an opinion in Crocs, Inc. v. ITC where the court reversed the ITC’s decision that a design patent was not infringed. The court issued guidance on claim construction and application of the ordinary observer test for design patents.
Design patents do not include claims that consist of numbered paragraphs of varying lengths as do utility patents. Instead, the claim for a design patent is the various views presented in the drawings. In performing claim construction of a design patents, courts often issue a detailed verbal description of the drawings. The Federal Circuit, while not banning this practice completely, continues to caution against this.
[T]his court warned that misplaced reliance on a detailed verbal description of the claimed design risks undue emphasis on particular features of the design rather than examination of the design as a whole. In many cases, the considerable effort in fashioning a detailed verbal description does not contribute enough to the infringement analysis to justify the endeavor. Depictions of the claimed design in words can easily distract from the proper infringement analysis of the ornamental patterns and drawings.
(references omitted). The court noted that the illustration in the drawings is the best description of what is claimed.
In Crocs, the claimed invention is, of course, the particular type of shoes.
The Administrative Judge had issued a claim construction as follows:
In summary, when the ’789 patent is considered as a whole, the visual impression created by the claimed design includes: footwear having a foot opening with a strap that may or may not include any patterning, is attached to the body of the footwear by two round connectors, is of uniform width between the two round connectors, has a wrench-head like shape at the point of attachment, and extends to the heel of the shoe; with round holes on the roof of the upper placed in a systematic pattern; with trapezoid-shaped holes evenly spaced around the sidewall of the upper including the front portion; with a relatively flat sole (except for upward curvature in the toe and heel) that may or may not contain tread on the upper and lower portions of the sole, but if tread exists, does not cover the entire sole, and scalloped indentations that extend from the side of the sole in the middle portion that curve toward each other.
The Federal Circuit noted that the written claim construction required that the design include (1) a strap of uniform width, and (2) holes evenly spaced around the sidewall of the upper. Neither of these were required by the drawings.
Ordinary Observer Test
The ordinary observer test for design patent infringement requires that the ordinary observer compared the claimed design to the accused design. If the ordinary observer would be deceived into believing that the accused products are the same as the patented design, the product infringes the patent. The comparison is to be conducted for the designs as a whole.
Instead, due to its erroneous claim construction, the ITC placed undue emphasis on the two features recited in the detailed verbal claim construction. In its opinion, the court included pictures of the accused products compared to the drawings in the patent. The court then concluded that the accused products appear nearly identical to the patented designs. The court was not confident that an ordinary observer could determine which was which.
The ITC had also ruled that Crocs’ products did not meet the industrial applicability requirement for ITC relief. Basically, this requirement means that the patent owner must practice the patent, i.e., the patent owner’s own products must be covered by the patent. In this case, due to its erroneous claim construction, the ITC has ruled that Crocs’ own shoes were not covered by the patent. The Federal Circuit also reversed on this issue.
Crocs also holds a utility patent on its shoe products. The Federal Circuit reversed the ITC’s ruling that the utility patent was invalid for obviousness.