CAFC re-visits design patents in High Point Design vs. BDI

The outcome:


BDI challenges each of these determinations on appeal.
For the reasons set forth below, we reverse summary
judgment of invalidity, affirm summary judgment of
non-infringement, affirm the denial of BDI’s motion for
additional discovery, and affirm the denial of BDI’s motion
to amend the complaint.



The CAFC gave background:


Design patents are presumed to be valid. 35 U.S.C.
§ 282(a). A party seeking to invalidate a patent on the
basis of anticipation must do so by clear and convincing
evidence. See Catalina Lighting, Inc. v. Lamps Plus, Inc.,
295 F.3d 1277, 1288 (Fed. Cir. 2002). Design patent
anticipation requires a showing that a single prior art
reference is “identical in all material respects” to the
claimed invention. Door-Master Corp. v. Yorktowne, Inc.,
256 F.3d 1308, 1312 (Fed. Cir. 2001) (quoting Hupp v.
Siroflex of Am., Inc., 122 F.3d 1456, 1461 (Fed. Cir.
1997)). In other words, the two designs must be substantially
the same. See Door-Master, 256 F.3d at 1312, 1313
(applying design patent infringement test from Gorham
Mfg. Co. v. White, 81 U.S. 511, 528 (1871), as the test for
anticipation). Two designs are substantially the same “if
the resemblance is such as to deceive [an ordinary observer],
inducing him to purchase one supposing it to be the
other[.]” Gorham, 81 U.S. at 528. Anticipation is a question
of fact. Int’l Seaway Trading Corp. v. Walgreens
Corp., 589 F.3d 1233, 1237 (Fed. Cir. 2009). Summary
judgment is proper only when the evidence underlying
anticipation is clear and convincing such that no reasonable
fact-finder could find otherwise. See SRAM Corp. v.
AD-II Eng’g, Inc., 465 F.3d 1351, 1357 (Fed. Cir. 2006).
Viewing all evidence in the light most favorable to the
non-moving party—BDI—we conclude that a reasonable
jury could have found there was not clear and convincing
evidence of anticipation.
In High Point I, we instructed that on remand, the
district court should “add sufficient detail to its verbal
description of the claimed design to evoke a visual image
consonant with [the] claimed design.” 730 F.3d at 1314.
We also instructed that the district court should perform
a side-by-side comparison of the claimed and prior art
designs as part of the proper obviousness determination.
Id. Notably, we cautioned that there appeared to be
“genuine issues of material fact as to whether the Woolrich
Prior Art are, in fact, proper primary references” for
obviousness purposes under 35 U.S.C. § 103. Id.
On remand, the district court did not perform a sideby-side
comparison, but concluded that the claimed and
prior art designs share the “same characteristics” because
they share “a structured body, a soft-looking fluff surrounding
the opening of the slipper, and a sole that appears
durable and fairly thick.” Remand Order, 2014 WL
1244558, at *6; see also id. at *7.
We find again that the district court fundamentally
erred in its analysis by analyzing the designs from “too
high a level of abstraction” and failing to focus “on the
distinctive visual appearances of the reference and the
claimed design.” High Point I, 730 F.3d at 1314 (quoting
Apple, 678 F.3d at 1331–32). Specifically, the court’s
description does little more than point out the main
concepts of the claimed design: a structured slipper
having fuzzy material at the foot opening. See Durling v.
Spectrum Furniture Co., 101 F.3d 100, 104 (Fed. Cir. 1996)