The following is a summary of the precedential patent-related opinions issued by the Court of Appeals for the Federal Circuit for the week ending September 13, 2013. Michele Glessner prepared this edition.
Relationship to Other Intellectual Property: Trade Dress
High Point Design LLC, et al. v. Buyer’s Direct, Inc., No. 12-1455 (Fed. Cir. (S.D.N.Y.) Sept. 11, 2013). Opinion by Schall, joined by O’Malley and Wallach.
Reversing a grant of summary judgment of invalidity and remanding for further proceedings, the Federal Circuit held that the district court erred in the application of the law of obviousness as applied to design patents. Furthermore, the court vacated the dismissal of Buyer’s Direct, Inc.’s (“BDI”) trade dress claims and remanded so that the district court could reconsider and further explain its reasoning.
BDI sued High Point Design LLC and several retailers (collectively “High Point”) in the U.S. District Court for the Southern District of New York for infringement of U.S. Design Patent No. D598,183 (“the ’183 patent”), which relates to slippers known as SNOOZIES®. High Point was the manufacturer of a competing product known as FUZZY BABBA®. High Point asserted that prior art slippers referred to as the “Woolrich Prior Art” along with secondary references rendered the ’183 patent obvious. The district court granted a motion for summary judgment, holding the ’183 patent invalid because the claimed design was both obvious in light of the prior art and primarily functional.
According to the Federal Circuit, the test for design obviousness comprises a two-step analysis: first, “one must find a single reference, a something in existence, the design characteristics of which are basically the same as the claimed design”; and second, once “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). 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.” Id.
The Federal Circuit held that the district court applied the incorrect standard because the obviousness of a design patent must be assessed from the viewpoint of an ordinary designer, not an ordinary observer, and, thus, the district court erred by categorically disregarding an expert design opinion at trial. Next, the court held that the district court erred by failing to translate the design of the ’183 patent into a verbal description. The court noted that the district court further erred by failing to provide its reasoning as to whether there is a single reference that creates basically the same visual impression as the claimed design. On remand, the district court was instructed to do a side-by-side comparison of the two designs. Finally, the court held that the district court should address any evidence of secondary considerations to the extent that obviousness remains at issue because BDI had alleged both commercial success of the claimed design as well as copying.
Next, the Federal Circuit held that the district court applied an incorrect standard in assessing whether the design was primarily functional or primarily ornamental. When performing this assessment, the court noted that the claimed design should be viewed in its entirety, for the ultimate question is not the functional or decorative aspect of each separate feature, but the overall appearance of the article. Thus, the Federal Circuit reversed the district court’s ruling because a reasonable jury could have found the ’183 patent not invalid based on functionality.
Lastly, the Federal Circuit vacated the dismissal of BDI’s trade dress claims because the district court failed to provide an explanation of its reasoning, which is required by the Second Circuit in order to assess abuse of discretion in the application of Fed. R. Civ. P. 15(a) or 16(b).
Patentable Invention: Obviousness: Generally
Patentable Invention: Double Patenting
Patent Office Procedures: Prosecution Before the Office: Examination of Applications: Restrictions
St. Jude Medical Inc., et al. v. Access Closure, Inc., No. 12-1452 (Fed. Cir. (W.D. Ark.) Sept. 11, 2013). Opinion by Plager, joined by Wallach. Concurring opinion by Lourie.
In reversing the district court’s ruling as to a safe harbor under 35 U.S.C. § 121 regarding U.S. Patent No. 7,008,439 (hereinafter “the Janzen patent”), the Federal Circuit held that the claims at issue were invalid due to double-patenting in light of the claims of an issued sibling patent, and, thus, did not consider the district court’s rulings regarding claim constructions in the Janzen patent. The Federal Circuit also affirmed the district court’s ruling that U.S. Patent Nos. 5,275,616 and 5,716,375 (hereinafter “the Fowler patents”) were not shown to be invalid as obvious.
St. Jude Medical Inc. and St. Jude Medical Puerto Rico, LLC sued Access Closure, Inc. (“ACI”) in the U.S. District Court for the Western District of Arkansas. The technology at issue generally relates to methods and devices for sealing a vascular puncture. The Janzen patent and the Fowler patents were asserted against ACI. On appeal to the Federal Circuit, ACI challenged the district court rulings with respect to three issues: (1) the application of the safe harbor provision of 35 U.S.C. § 121 to protect the Janzen patent from invalidity due to double patenting; (2) the construction of key terms in the Janzen patent; and (3) ACI’s entitlement to a judgment as a matter of law that the Fowler patents were invalid as obvious.
The Janzen patent and a sibling patent are both continuations of a parent patent, which is a divisional of a grandparent patent. The U.S. Patent and Trademark Office had issued a restriction requirement in the grandparent and parent applications, dividing the claims into Group I claims drawn to devices for sealing a vascular puncture and Group II claims drawn to methods for sealing a vascular puncture. Also, a species election was required with respect to three identified species (Species A, B, and C), with no claims being deemed generic. According to the safe harbor provision of 35 U.S.C. § 121, an application filed as a result of a restriction requirement shall not be used as a reference against either the parent or the divisional application if the divisional application is filed before the issuance of the patent on the other application. Despite a jury finding that Claims 7-9 of the Janzen patent were not patentably distinct from Claim 7 of the sibling patent, the district court ruled that the safe harbor applied and that, therefore, the claims were not invalid.
ACI argued that the Janzen patent violated consonance, which requires the line of demarcation between independent and distinct inventions that prompt a restriction requirement to be maintained. Citing 37 C.F.R. § 1.146, which states that if no generic claim is found allowable then the election of species will create a restriction under 35 U.S.C. § 121, the Federal Circuit held that the election of a species, in this case, was a restriction and affected the line of demarcation such that the Janzen patent and the sibling patent did not maintain consonance and the safe harbor provision did not apply.
The court then held that Claim 1 of the sibling patent generically claimed Group II and overlapped Group II, Species C of the Janzen patent. Accordingly, the Federal Circuit held that Claims 7-9 of the Janzen patent were invalid.
Lastly, ACI argued that the claims of the Fowler patents were invalid as obvious. ACI cited art that described a method and device for sealing a puncture in a liver vein with a compressed gelfoam stick and art that described a technique for blocking bleeding from a vessel using a balloon catheter. The Federal Circuit held that neither publication discloses a balloon configured to operate as a positioning device to prevent a plug from entering a blood vessel, as claimed in the Fowler patents. Therefore, ACI’s arguments failed to bridge the “logical chasm” found in the art.
In a concurring opinion, Judge Lourie stated that he agreed with the result, but would have reached the majority’s conclusion without addressing the election of species in the Janzen patent because the distinction between the Group I and Group II inventions was the actual subject of the original restriction requirement.
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