## Facts

- Buyers Direct, Inc. (BDI) owned U.S. Design Patent No. D598,183 for the ornamental design of a sock-like slipper depicted in patent drawings and marketed as SNOOZIES®.
- High Point Design LLC sold FUZZY BABBA® slippers that BDI accused of infringing the D’183 patent.
- After BDI sent a cease-and-desist letter threatening suit, High Point filed a declaratory-judgment action seeking noninfringement and invalidity (including obviousness and functionality).
- BDI counterclaimed for design-patent infringement and asserted trade dress infringement based on the overall appearance of its SNOOZIES slippers.
- The district court granted summary judgment that the D’183 design patent was invalid as obvious and “primarily functional,” relying heavily on a Woolrich slipper product it found visually indistinguishable, and it dismissed BDI’s trade dress claim with prejudice after denying leave to amend as untimely.

## Issues

1. Whether the district court applied the correct legal standard for design-patent obviousness and properly analyzed prior art and secondary considerations.
2. Whether the district court applied the correct legal test for design-patent functionality when concluding the claimed design was “primarily functional.”
3. Whether the district court erred in dismissing the trade dress claim with prejudice and denying leave to amend without adequate analysis under Rules 16(b) and 15(a).

## Decision

- Reversed the grant of summary judgment that the D’183 design patent was invalid as obvious.
- Rejected the district court’s functionality analysis as applying an incorrect test; the invalidity ruling could not stand.
- Vacated the dismissal with prejudice of BDI’s trade dress claim and remanded for reconsideration of amendment and the claim under the proper procedural standards.
- Remanded for further proceedings consistent with the Federal Circuit’s opinion.

## Legal Principles

- Design-patent obviousness is assessed from the viewpoint of an ordinary designer in the relevant field, not an ordinary observer used in infringement analysis.
- Under the Rosen/Durling framework, a design-obviousness analysis requires identification of a primary reference that is “basically the same” in overall visual impression; use of secondary references requires a reasoned explanation of their relationship to the primary reference and the claimed design.
- When evidence of objective indicia of nonobviousness exists, secondary considerations must be considered and may be highly probative against summary judgment of obviousness.
- A design patent is invalid as primarily functional only if the overall design is dictated by the article’s use or purpose; the presence of functional elements does not alone negate protectable ornamentality.
- The availability of alternative designs that can perform the same function is relevant to whether an overall design is dictated by function.
- Dismissal with prejudice of a trade dress claim after denying leave to amend requires a reasoned application of Rule 16(b) “good cause” and Rule 15(a) amendment standards; an inadequate record and insufficient findings warrant vacatur and remand.

## Conclusion

The Federal Circuit held that the district court’s summary judgment invalidating BDI’s design patent rested on incorrect legal standards for both obviousness and functionality and that the trade dress dismissal lacked sufficient procedural analysis; it therefore reversed the patent invalidity judgment, vacated the trade dress dismissal, and remanded.


High Point Design LLC v. Buyers Direct, Inc., 730 F.3d 1301 (Fed. Cir. 2013)