April 22, 2010

It’s Not a Croc - or Is It?: Federal Circuit Relies on 'Secondary Considerations' to Reverse ITC's Obviousness Finding

3 min

Imported articles that infringe a U.S. patent, copyright, trademark, or other intellectual property right may be prevented from entering the United States (See 19 U.S.C. 337). Someone who believes an imported article is infringing their IP rights may file a complaint with the International Trade Commission (ITC) and request an investigation.

Crocs, the company that makes the “stylish” plastic-swiss-cheese-type clogs, filed a complaint with the ITC arguing that its design patent (U.S. Patent No. D717789) and its utility patent (U.S. Patent No. 6,993,858) were being infringed. The ITC investigated the complaint and found that neither the design patent nor the utility patent were infringed. In fact, the ITC found the utility patent invalid for obviousness. Crocs appealed to the U.S. Court of Appeals for the Federal Circuit (CAFC).

On February 24, 2010, the CAFC reversed the ITC’s rulings, further clarified the design patent infringement finding, and the reiterated utility patent obviousness standards.

For the design patent, the CAFC reaffirmed the “ordinary observer” test established in Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008). Thus the court held that, in order to show design patent infringement, the patent owner must establish that “an ordinary observer, familiar with the prior art designs, would be deceived into believing that the accused product is the same as the patented design.” The CAFC stressed the importance of the design figures over the “verbal description” of the design when assessing infringement. The court concluded that the “proper comparison requires a side-by-side view of the drawings of the ’789 patent design and the accused products…”

With respect to the utility patent, the court determined that the patent was not invalid for obviousness and relied on secondary considerations in making the determination. The court concluded that the prior art “taught away from” the claimed invention and the invention “yielded more than predictable results.” Further, the court found “that the Crocs shoes were commercially successful” and the court acknowledged “the administrative judge’s finding of substantial industry praise for the claimed invention.” In addition, the court highlighted the ITC’s finding of copying in that “copying may indeed be another form of flattering praise for inventive features.”

In another recent Federal Circuit decision, Judge Rader wrote, “Lurking just beneath the surface of this court’s blindness to the underlying facts supporting non-obviousness is a bias against non-technical arts…[investments that] advance [] non-technical fields of human endeavor…deserve the same protection as any other advances.” Whether one finds Crocs shoes as “stylish” or still needing vast stylish improvement, Crocs still deserve the same protection under the law as any other invention.

Given these CAFC findings, the Crocs case will go back to the ITC for further review of the infringement issues.