Filewrapper-old

More on Crocs at the CAFC
February 28, 2010

Another decision regarding a number of patents relating to foam based footware, this time held by Crocs, Inc. ("Crocs") has been handed down from the Court of Appeals for the Federal Circuit ("CAFC"). In this appeal from the U.S. International Trade Commission ("USITC"), the court addressed obviousness of a utility patent and claim construction of a design patent.

This case comes to the CAFC by an unusual track, at least for patent suits. The respondants are a number of importers of shoes which resemble the famous and easily recognizable Crocs brand. The complainant, Crocs, is a manufacturer of plasic foam shoes made in the style of "clogs." These products vary in color, shape, size, and style, but share some general characteristics, including air holes, foam material, and straps which encircle the heal of the wearer. Crocs is the assignee of two patents that were at issue in this case, U.S. Patent number 6,993,858 ("the '858 patent") and U.S. Design Patent number D517,789 ("the '789 patent").

Crocs filed a complaint with the USITC alleging violation of 35 U.S.C. § 337 due to their importation of infringing products into the United States. The administrative judge found that the asserted claims of the '858 patent were invalid as obvious in light of two pieces of prior art, and that the '789 patent was not infringed as the allegedly infringing products lacked features shown in the '789 patent. Crocs appealed to the Commission which affirmed the finding of no infringement and augmented the decision of non-obviousness based on the fact that there was no nexus between the claimed shoes and their commercial success.

Review of the decisions of the Commission, an administrative agency, is made without deference to legal determinations and for substantial evidence to factual findings. This is unlike most other patent cases which come to the CAFC from either a District Court or from the Board of Patent Appeals and Intereferences which include a higher deference to the decision of the lower court.

First addressing the '789 design patent, the court noted that the Commission's description of the elements of the patented design risks "undue emphasis on particular features of the design, rather than examination of the design as a whole." Slip op. at 9 citing Egyptian Goddess Inc. v. Swisa, Inc., 543 F.3d 665, 679-80 (Fed. Cir. 2008) (en banc). Further, the court emphasized that the comparison between the infringing product and the design patent must be done as a whole, which is better suited to pictoral settings. Here, the Commission explicitly referred to two elements which were required in their written description, but were not supported by the drawings: a "strap of uniform width" and "holes evenly spaced around the sidewall of the upper." Slip op. at 10 (emphasis added). The drawings themselves contradicted this construction, and therefore the Commission was in error to base its finding of noninfringement on these facts.

The court considered the allegedly infringing products next to the drawings in the '789 patent, and determined that an ordinary observer, considering the designs as a whole, would have been deceived into believing that the accused products were the same as the patented design. Therefore, the court concluded that the accused products infringed the '789 design patent.

In order to recover under §337, there must be a 'domestic industry' related to the patents asserted. The test for this is whether there are articles which are covered by the patents sold domestically, based on the ordinary observer test. Because this test is the same as the test for infringement of a design patent, the court compared the Crocs product to its patent, and concluded that the domestic industry prong had been satisfied.

Finally the court addressed the Commission's determination that the '858 patent was obvious in light of the prior art references. The court found that the Commission's reliance on these references was improper, the two references actually taught away from the particular function claimed by the '858 patent. Further, the court stated that the prior art references relied on by the Commission did not teach all of the limitations of the asserted claims. Therefore, because the references could not and would not have been combined in a manner suggested by the Commission to create the claimed product, a determination of obviousness was improper.

Based on this reasoning, the court reversed the Commission on all of its findings, and remanded to the Commission to determine if the allegely infringing products actually infringed the '858 patent, a determination which was never made.

More on the case of Crocs, Inc. v. International Trade Commission available here.

Post has no comments.
Post a Comment




Captcha Image
Return to the Filewrapper Blog
  Newer Posts Older Posts  

Purpose

The attorneys of McKee, Voorhees & Sease, P.L.C. designed this blog as an informational and educational resource about intellectual property law for our clients, other attorneys, and the public as a whole. Our goal is to provide cutting-edge information about recent developments in intellectual property law, including relevant case law updates, proposed legislation, and intellectual property law in the news.

Disclaimer

McKee, Voorhees & Sease, P.L.C. provides this blog for general informational purposes only. By using this blog, you agree that the information on this blog does not constitute legal or other professional advice and no attorney-client or other relationship is created between you and McKee, Voorhees & Sease, P.L.C. Do not consider this blog to be a substitute for obtaining legal advice from a qualified, licensed attorney. While we try to revise this blog on a regular basis, it may not reflect the most current legal developments. We consciously refrain from expressing opinions on this blog and instead, offer it as a form of information and education, however if there appears an expression of opinion, realize that those views are indicative of the individual and not of the firm as a whole

Connect with MVS

Enter your name and email address to recieve the latest news and updates from us and our attorneys.

Subscribe to: MVS Newsletter

Subscribe to: Filewrapper® Blog Updates

  I have read and agree to the terms and conditions of McKee, Voorhees & Sease, P.L.C.