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In 35 U.S.C.S. § 289 infringement is defined as unauthorized manufacture or sale of the patented design, or any colorable imitation thereof. Design patent infringement is a question of fact, to be proven by a preponderance of the evidence. Design patent infringement requires a showing that the accused design is substantially the same as the claimed design. The criterion is deception of the ordinary observer, such that one design would be confused with the other. If, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, and if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, then the first one patented is infringed by the other.
Appellee L.A. Gear designed a line of athletic shoes. Appellants sold similar shoes. Appellee sued appellants for design patent infringement and for unfair competition based on trade dress infringement under § 43(a) of the Lanham Act, 15 U.S.C.S. § 1125(a). The district court found appellants liable, enjoined infringement, and awarded damages, but declined to award enhanced damages or attorney fees, finding that the appellants’ patent infringement was not willful.
1) Yes, with respect to four shoe models.
On appeal, the court affirmed appellants' patent infringement liability as to four shoe models, but reversed the ruling that appellants' infringement was not willful, reversed the ruling of liability under § 43(a) as to six shoe models, and remanded. The court found that appellants' defenses based on alleged functionality and obviousness were properly rejected. The four infringing models were confusingly similar to the patented design, as viewed by an ordinary observer. According to the court, appellants' deliberate copying without any excuse was willful infringement. The law imposed an affirmative duty of due care to avoid infringement of the known patent rights of another.