Int'l Seaway Trading Corp. v. Walgreens Corp.

Int'l Seaway Trading Corp. v. Walgreens Corp.

Opinion

 [***1002]  [*1235]   DYK, Circuit Judge.

Plaintiff-Appellant International Seaway Trading Corporation ("Seaway") filed suit against Walgreens Corporation ("Walgreens") and Touchsport Footwear USA, Inc. ("Touchsport") claiming infringement of Seaway's patents, U.S. Design Patents Nos. D529,263 ("the '263 patent"), D545,032 ("the '032 patent"), and D545,033 ("the '033 patent"). The district court granted summary judgment for defendants, finding that the claims of the asserted patents were invalid under 35 U.S.C. § 102 as anticipated by a patent assigned to Crocs,  [**2] Inc. ("Crocs"), U.S. Design Patent No. D517,789 ("the Crocs '789 patent"). Int'l Seaway Trading Corp. v. Walgreens Corp., 599 F. Supp. 2d 1307, 1319 (S.D. Fla. 2009).

On appeal, Seaway contends that the district court erred by basing its invalidity determination solely on the ordinary observer test and by failing to apply the point of novelty test. We agree with the district court that the point of novelty test should not be utilized for anticipation, and that only the ordinary observer test applies. However, while we conclude that the exterior appearance of the patented designs would be substantially similar to the prior art in the eyes of an ordinary observer, we conclude that the district court erred in failing to compare the insoles of the patents-in-suit with the prior art from the perspective of the ordinary observer. Accordingly, we affirm-in-part, vacate-in-part, and remand.

BACKGROUND

Plaintiff-Appellant Seaway is an Ohio corporation that acts as a buyer's agent and/or importer of footwear to mass merchandise retailers, as well as to footwear, apparel, and sporting goods stores. Seaway also creates its own shoe and boot designs and pursues design patents for them. Defendant-Appellee  [**3] Walgreens is an Illinois corporation with retail drug stores across the country that sell footwear, among other products. Defendant-Appellee Touchsport is a California corporation that, like Seaway, serves as a buyer's agent and/or importer of footwear to retailers, including Walgreens.

 [*1236]  Seaway's '263, '032, and '033 patents (collectively "the patents-in-suit") claim designs for casual, lightweight footwear, which are typically referred to as "clogs." The '263 patent application was filed on February 18, 2005, and issued on October 3, 2006. The '032 and '033 patents were filed as continuations-in-part of the '263 patent in February 2006, and both issued on June 26, 2007. It is undisputed that the '032 and '033 patents are "substantially the same as the '263 patent design" except that the heel strap is in a forward position overlying a portion of the clog upper in the '032 patent and that the heel strap is not part of the claimed design for the '033 patent. [***1003]  

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