Friday, September 13, 2013

High Point Design: design patent case

As to the outcome:

Buyer’s Direct, Inc. (“BDI”) appeals from a final
judgment of the United States District Court for the
Southern District of New York holding BDI’s asserted
design patent invalid on summary judgment and also
dismissing BDI’s trade dress claims with prejudice. See
High Point Design LLC v. Buyer’s Direct, Inc., No. 11-CV-
4530, 2012 WL 1820565 (S.D.N.Y. May 15, 2012) (“Final
Decision”). For the reasons set forth below, we reverse the
grant of summary judgment of invalidity, vacate the
dismissal of BDI’s trade dress claims, and remand for
further proceedings consistent with this opinion.

As to obviousness:

When assessing the potential obviousness of a design
patent, a finder of fact employs two distinct steps: first,
“one must find a single reference, a something in existence,
the design characteristics of which are basically the
same as the claimed design”; second, “[o]nce this primary
reference is found, other references may be used to modify
it to create a design that has the same overall visual
appearance as the claimed design.” Durling v. Spectrum
Furniture Co., 101 F.3d 100, 103 (Fed. Cir. 1996) (internal
quotations omitted); see also Apple, Inc. v. Samsung Elecs.
Co., 678 F.3d 1314, 1329 (Fed. Cir. 2012).

Under the first step, a court must both “(1) discern the
correct visual impression created by the patented design
as a whole; and (2) determine whether there is a single
reference that creates ‘basically the same’ visual impression.”
Durling, 101 F.3d at 103. The ultimate inquiry in
an obviousness analysis is “whether the claimed design
would have been obvious to a designer of ordinary skill
who designs articles of the type involved.” Id., quoted in
Apple, 678 F.3d at 1329.

Of experts:

Although obviousness is assessed from the vantage
point of an ordinary designer in the art, “an expert’s
opinion on the legal conclusion of obviousness is neither
necessary nor controlling.” Avia Grp., 853 F.2d at 1564.
That said, an expert’s opinion may be relevant to the
factual aspects of the analysis leading to that legal conclusion.
See Peterson Mfg. Co. v. Cent. Publ’g, Inc., 740
F.2d 1541, 1547 (Fed. Cir. 1984), abrogated on other
grounds by Beatrice Foods Co. v. New England Printing
and Lithographing Co., 899 F.2d 1171, 1177–78 (Fed. Cir.
1990) (“In civil litigation involving a design [patent], an
expert’s testimony is most helpful, as in the determination
of obviousness with respect to any other type of
invention, to explain the technology, the scope and content
of the prior art, the differences between the prior art
and the invention, and the level of skill in the art.”). For
that reason, the district court erred by categorically
disregarding the Rake Declaration. See Final Decision,
2012 WL 1820565, at *5.
We now turn to what we conclude were additional errors
in the district court’s application of the two-step
analysis set forth in Durling.

Of secondary considerations:

Finally, we turn to secondary considerations, which
the district court did not address in the Final Decision.
This court has held that “evidence rising out of the socalled
‘secondary considerations’ must always when
present be considered en route to a determination of
obviousness.” Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d
1530, 1538 (Fed. Cir. 1983); see also Hupp v. Siroflex of
Am., Inc., 122 F.3d 1456, 1462 (Fed. Cir. 1997) (“Invalidity
based on obviousness of a patented design is determined
on factual criteria similar to those that have been
developed as analytical tools for reviewing the validity of
a utility patent under § 103, that is, on application of the
Graham factors.”). Here, BDI alleged both commercial
success of the claimed design as well as copying. To the
extent that the obviousness of the ’183 patent remains at
issue on remand, the district court should address any
evidence of secondary considerations.
For the foregoing reasons, we reverse the grant of
summary judgment of obviousness and remand the case
to the district court.



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