Infringing a Design Patent?: The Proper Comparison Requires a Side-By-Side View of the Drawings of the Patent Design and the Accused Products

Crocs, Inc. v. Int'l Trade Comm'n, No. 2008-1596 (Fed. Cir. Feb. 24, 2010)

Holding:

For the infringement analysis of a design patent, the “ordinary observer” test must be applied to the design as a whole, and the proper comparison requires a side-by-side view of the drawings of the patent design and the accused products. Slip op. at 12.

Relevant Facts:

Crocs is the assignee of U.S. Patent No. 6,993,858 and D517,789. Slip op. at 2. Crocs sued a number of foam footwear companies before the United States International Trade Commission. Id. at 5-6. The Commission found that the “’858 patent” was obvious and the ’789 patent was not infringed. The Commission also determined that Crocs had not satisfied the technical prong of the industry requirement under Section 337 for the ’789 patent. The Federal Circuit reversed the Commission’s decisions. Id. at 2.

Comments:

In this case, the Federal Court clarified the application of the “ordinary observer” test in the infringement analysis of the design patent, requiring a side-by-side comparison of the drawings of the patent design and the accused products.

While it is relatively easy to compare the designs in this case, one may imagine the situations where the side-by-side comparison may not be self-evident. In other words, while the side-by-side comparison is a clean concept in theory, it may not be practical in certain situations.

Therefore, the Federal Circuit may have to issue further clarification in the future regarding the “ordinary observer” test from Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 679 (Fed. Cir. 2008) (en banc).