On February 24, 2010, in its first opinion reviewing claim construction for design patents since its landmark ruling in Egyptian Goddess v. Swisa in 2008, the Federal Circuit reversed a determination by the International Trade Commission, http://www.usitc.gov/, that several competitors in the shoe industry had not infringed a design patent owned by Crocs relating to its plastic clogs.

 

In this case, Crocs v. International Trade Commission,

Crocs sought to enforce one of its design patents by filing a complaint with the ITC accusing several companies of infringing the patent by importing similar-looking plastic clogs into the United States. 

 

In a determination made several months before the Federal Circuit's decision in Egyptian Goddess, an administrative judge at the ITC provided a detailed verbal claim construction of Crocs’ design patent describing, among other features, the shape of the heel strap, the connection between the strap and base, and the location and shape of the ventilation holes.

 

On appeal, the Federal Circuit took issue with the claim construction, arguing that it showed the dangers of relying on detailed verbal claim constructions and that its focus on small features of the design distracted from the overall impression of the claimed ornamental features. Moreover, the court noted that the claim construction itself was inaccurate. Specifically, the claim construction provided by the ITC required a strap of uniform width and holes evenly spaced around the sidewall of the shoe upper, neither of which are features actually present in the patent's figures.

 

In finding that infringement had occurred, the court emphasized the overall effect of the Crocs design and its impact on the ordinary observer, rather than focusing on a “checklist” of specific features. To illustrate its point, the Federal Circuit used comparison photos of Crocs’ products and those of its competitors, to show that the shoes had the same overall ornamental appearance.

 

The court identified several elements as contributing to the "overall effect" of the Crocs design. In particular, the court found that the area where the footwear's strap connects to the base constitutes a "focal point attracting the eye of the ordinary observer." Also contributing to the overall effect of the design is the "visual theme of rounded curves and ellipses throughout the design." Despite the accused shoes not being slavish copies of the patented Crocs design, the court nonetheless, found that the accused products had these same overall effect on the eye, that the designs were similar enough to cause market confusion, and held that the accused products infringed Croc's patent. 

 

One of the biggest questions following Egyptian Goddess is what role prior art would play when determining infringement. Unfortunately, this decision does not provide much guidance. Although the opinion includes several references to Egyptian Goddess about the importance of prior art and declares that "an ordinary observer, familiar with the prior art designs, would be deceived into believing the accused products are the same as the patented design," the court never explicitly identifies the prior art it considered or what weight to give it. Since there is still no guidance on applying prior art in design patent infringement analyses, we will continue to see District courts struggle to deal with this issue in the future.