## Facts

- Rockport Company, Inc. owned U.S. Design Patent No. 380,594 for the ornamental design of a shoe upper used on its ProWalker® World Tour walking shoe.
- The patented upper depicted a specific arrangement of ornamental elements, including: an elongated heel counter wrapping around the rear with double-row stitching; a five-eyelet eyestay with the top eyelet in a narrow ankle collar; a raised rear ankle collar with seams and a gap between the collar and heel counter; a thin curved half-moon stitched panel connected to the eyestay; and a heel tab intersecting the raised collar.
- The drawings also depicted a mudguard wrapping along the sides and around the front and an upper layering/seam feature running from the heel counter toward the area between the second and third eyelets.
- Deer Stags, Inc. marketed a shoe called the “Destination,” which Rockport alleged copied the overall ornamental appearance of the patented design.
- Deer Stags contended that a catalog image showed a prototype by mistake and that a later modified Destination did not infringe because similarities were functional or in the prior art, and differences (including a segmented mudguard and seam treatment) altered the design.
- The parties filed cross-motions for partial summary judgment on infringement; Deer Stags also moved to strike certain evidence submitted by Rockport.

## Issues

1. Whether the Destination shoe was substantially the same in overall ornamental appearance as the patented shoe upper under the ordinary observer test.
2. Whether the Destination shoe appropriated the patented design’s point of novelty as against the prior art, including whether novelty lay in a combination of features.
3. Whether evidence submitted with Rockport’s summary-judgment filings should be stricken.

## Decision

- Rockport’s motion for partial summary judgment of design patent infringement was granted.
- Deer Stags’ cross-motion for partial summary judgment of non-infringement was denied.
- Deer Stags’ motion to strike Rockport’s evidence was denied.
- The court held that, as a matter of law, the Destination shoe infringed the ’594 design patent under both the ordinary observer and point of novelty tests.

## Legal Principles

- Design patent infringement (at the time) required satisfaction of: (1) the ordinary observer test, asking whether an ordinary purchaser would find the overall ornamental appearance substantially the same; and (2) the point of novelty test, requiring appropriation of the novel aspects distinguishing the patented design from prior art.
- In evaluating substantial similarity, the focus is the overall visual impression rather than isolated component-by-component differences.
- Minor variations in panel segmentation or seam treatment do not avoid infringement when the accused design preserves the dominant ornamental configuration and overall appearance of the patented design.
- A design’s point of novelty may reside in a particular combination and arrangement of features, even if individual elements exist in the prior art.
- Summary judgment is appropriate where no genuine dispute of material fact exists and no reasonable factfinder could conclude the accused design is non-infringing under the applicable tests.

## Conclusion

The court found the Destination shoe nearly identical in overall ornamental appearance to Rockport’s patented shoe upper and concluded that Deer Stags copied the patented design’s novel combination and arrangement of features; it therefore entered partial summary judgment for Rockport on infringement and denied Deer Stags’ non-infringement and evidentiary motions.


Rockport Co. v. Deer Stags, Inc., 65 F. Supp. 2d 189 (S.D.N.Y. 1999)