## Facts

- Avia Group International, Inc. owned two design patents covering ornamental aspects of an athletic shoe: one for an outer sole (D284,420) and one for an upper (D287,301).
- L.A. Gear California, Inc. sold two athletic shoes (“Thrasher” and “Thrasher Hi-Top”) designed and manufactured for it by a Taiwanese manufacturer.
- Avia sued for design patent infringement, alleging both accused shoes infringed the sole patent and the Hi-Top also infringed the upper patent.
- L.A. Gear counterclaimed, seeking declarations of noninfringement and invalidity, asserting the patented designs were functional and obvious.
- The district court granted Avia partial summary judgment, holding both design patents valid as between the parties, infringed, and willfully infringed; it also found the case exceptional under 35 U.S.C. § 285 and entered a permanent injunction, leaving damages and fee amounts for later determination.
- L.A. Gear took an interlocutory appeal under 28 U.S.C. § 1292(c).

## Issues

1. Whether summary judgment upholding validity was improper because the patented designs were functional rather than ornamental or were obvious over the prior art.
2. Whether summary judgment of design patent infringement was improper under the ordinary-observer standard.
3. Whether willfulness and an exceptional-case finding under 35 U.S.C. § 285 could properly be found on summary judgment, supporting injunctive relief and potential attorney’s fees.

## Decision

- The Federal Circuit affirmed summary judgment that the design patents were valid as between the parties.
- The court affirmed summary judgment that L.A. Gear’s accused shoes infringed the asserted design patents.
- The court affirmed the findings of willful infringement and exceptional case status under § 285, as well as the permanent injunction.

## Legal Principles

- A design patent is presumed valid under 35 U.S.C. § 282; the accused infringer bears the burden to produce evidence raising invalidity and must prove invalidity by clear and convincing evidence.
- A design is not invalid as “functional” merely because the article serves a utilitarian purpose; invalidity for functionality requires proof that the design, viewed as a whole, is dictated primarily by function rather than ornament.
- Design patent obviousness focuses on the overall appearance of the claimed design, not an element-by-element dissection; conclusory assertions and undeveloped comparisons to prior art do not create a triable issue against summary judgment.
- Design patent infringement turns on whether an ordinary observer would find the accused design substantially the same overall as the patented design; where the record shows no genuine dispute on overall visual similarity, infringement may be resolved on summary judgment.
- Willful infringement and exceptional-case status under 35 U.S.C. § 285 may be supported by evidence of close copying and the absence of substantial, good-faith defenses, and are reviewed with deference to the district court’s discretionary determinations.

## Conclusion

The Federal Circuit held that L.A. Gear failed to raise a genuine factual dispute or meet its clear-and-convincing burden on functionality or obviousness, and that the accused shoes were substantially the same in overall appearance as the patented designs; it therefore affirmed summary judgment of validity, infringement, willfulness, exceptional-case status, and injunctive relief.


Avia Grp. Int’l, Inc. v. L.A. Gear Cal., Inc., 853 F.2d 1557 (Fed. Cir. 1988)