In a case involving fuzzy slippers, the Federal Circuit has provided in-depth guidance on the standards to be use when seeking to invalidate or assert a design patent.
Buyer’s Direct, Inc. (BDI) is the owner of Design Patent D598,183, which has one claim: “the ornamental design for a slipper.” BDI sells slippers known as “SNOOZIES®.”
High Point Design manufactures and distributes similar “FUZZY BABBA®” slippers.
In 2011, BDI sent High Point a cease-and-desist letter, alleging infringement of the ‘183 patent.
In response, High Point filed a complaint for a declaratory judgment that its slippers did not infringe the patent, and that the patent was invalid or unenforceable.
On a motion for summary judgment, the district court found that the patent was invalid in that it was both 1) obvious in light of the prior art for slipper design, and 2) primarily functional rather than ornamental.
The court characterized the patent as disclosing “slipper with an opening for a foot that contains a fuzzy (fleece) lining and have a smooth outer surface.”
The court also found that a company called Woolrich had sold two similar models of slippers before the effective date of the ‘183 patent.
The Federal Circuit noted that the standard for determining obviousness in the case of a design patent is the “ordinary designer” standard rather than the “ordinary observer standard,” and that the district court erred in applying the latter standard.
The Federal Circuit then addressed whether an expert declaration should be considered with respect to obviousness, and held that it was relevant but neither necessary nor controlling. Thus, the district court had erred when it disregarded an expert declaration on the topic.
With respect to obviousness, the Federal Circuit noted that there is a two-step test:
- One must find a primary art reference with design characteristics that are basically the same as the patented design, and
- Once this primary reference is found, other references may be used to modify it to create a design that looks “basically the same” overall as the patented design.
The Federal Circuit found that the district court’s description of the SNOOZIES® slipper was at too high a level of abstraction, and instructed it on remand to add more detail.