The Sole Test for Anticipation in Design Patents is the “Ordinary Observer Test”

In MOJAVE DESERT HOLDINGS, LLC, v. CROCS, INC., No. 20-1167 (Feb. 18, 2021), the Court upheld the Board’s finding that the prior art reference failing to show key surfaces in the asserted design patent cannot anticipate it.

Crocs owned U.S. Patent No. D517,789 (the ‘798 patent):

’789 patent, Figure 3 (left side view).

On August 6, 2012, Crocs sued U.S.A. Dawgs, Inc. for infringement of the ’789 patent. Dawgs’s manufacture and sale its own form of foam molded clog footwear. In response, Dawgs filed a request for inter partes reexamination of the ‘789 patent. The USPTO ordered the reexamination on November 19, 2012; however, the Examiner did not adopt the proposed rejections and instead issued a final rejection in the ‘798 patent on the grounds of anticipation by the shoe shown in Examiner’s Citation U:

Crocs appealed this final rejection to the Board. The Board issued a decision reversing the Examiner’s anticipation finding. The sole test for anticipation in design patents is the “ordinary observer test.” Int’l Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1239 (Fed. Cir. 2009). According to this test, two designs are substantially the same if, “in the eye of an ordinary observer, giving such attention as a purchaser usually gives, … the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other.” Id. (quoting Gorham Mfg. Co. v. White, 81 US 511, 528 (1871)). (“The publication must show the same subject matter as that of the patent, and must be identical in all material respects.”)). “In other words, the two designs must be substantially the same.” High Point Design, 621 F. App’x at 638. The Board agreed with the Patent Owner in its assertion that Figure 11 of the cited reference lacks views of the shoe showing: the inner side to allow comparison with the ornamental design shown in Figure 3 of the ‘789 Patent; the front to allow comparison with the ornamental design shown in Figure 4 of the ‘789 Patent; the rear to allow comparison with the ornamental design shown in Figure 5 of the ‘789 Patent; and the bottom to allow comparison with the ornamental design shown in Figure 7 of the ‘789 Patent. FF IA-IF and 2. Although the photographs of Figure 11 do appear to adequately show a top of the shoe when the photographs are considered in combination, this does not address the noted deficiencies with respect to other views. While we do not find that “every surface or angle of the entire shoe” must be shown in a prior art reference, the missing views of Figure 11 establish a sufficient gap in the evidence as to the shown design to preclude a finding of anticipation.

Dawgs, (Mojave substituting) appealed to the Court. The Court reviewed the Board’s decision and found that there was not any substantial evidence on the anticipation rejection to reverse the decision of the Board.