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The U.S. Court of Appeals for the Federal Circuit recently changed the test for determining whether a design patent can be ruled invalid because a prior patent anticipated it. The court’s Dec. 17 majority panel decision in International Seaway Trading Corp. v. Walgreens Corp. upheld a lower court’s ruling that the sole test for patent invalidity because of anticipation should be whether an “ordinary observer” would consider the second patented design “substantially similar” to a previously patented design. The ruling means that courts should not use the so-called “point of novelty” test, which looks at whether the accused product used the novel or different features of the prior patent. The International Seaway ruling builds on a 2008 Federal Circuit en banc decision in Egyptian Goddess Inc. v. Swisa Inc. The Egyptian Goddess court ruled that the sole test of whether a design infringes a patent is the ordinary observer’s viewpoint, not the novelty test. International Seaway sued Walgreens in February 2008 for selling clogs that allegedly infringed its patent, along with Touchsport Footwear USA Inc. for importing the shoes. In the majority opinion in Seaway, Circuit Judge Timothy Dyk upheld a Southern District of Florida ruling that the exterior features of the clogs patented by the plaintiffs were substantially similar to a patent held by Crocs Inc., which is not involved in the case. Crocs’ plastic slip-on shoes became wildly popular a few years ago for men, women and children, and a sales spike prompted the company to quickly roll out many colors and design variations. “In light of Supreme Court precedent and our precedent holding that the same tests must be applied to infringement and anticipation, and our holding in Egyptian Goddess that the ordinary observer test is the sole test for infringement, we now conclude that the ordinary observer test must logically be the sole test for anticipation as well,” Dyk wrote. “In doing so, we will prevent an inconsistency from developing between the infringement and anticipation analyses, and we will continue our well-established practice of maintaining identical tests for infringement and anticipation.” The majority ruling also vacated and remanded part of the case back to the Florida federal court because the court did not compare the patents on the insoles of the shoes involved in the case with prior patents from the ordinary observer’s point of view. In his partially dissenting opinion, Senior Circuit Judge Raymond Clevenger wrote, “the ordinary observer test requires assessment of the designs as a whole.” He went on: “I agree that the differences in the inner sole designs are to be assessed as part of the anticipation inquiry. … The district court should be directed on remand to evaluate the differences in the designs as a whole.” International Seaway’s lawyers at Cleveland-based Tarolli, Sundheim, Covell & Tummino did not return calls for comment. The Federal Circuit needed to bring its invalidity case law in line with Egyptian Goddess, which changed the scope of enforcement for a design patent by taking away the point of novelty test as a way to prove infringement, said Mark Walters, a Seattle patent associate at New York-based Darby & Darby, who argued the Federal Circuit case for Walgreens and Touchsport. “It’s a noncontroversial decision,” Walters said. “It’s almost like a housekeeping matter after Egyptian Goddess.”

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