High Point - Appellant Brief

2012-1455
IN THE
UNITED STATES COURT OF APPEALS
FOR THE FEDERAL CIRCUIT
HIGH POINT DESIGN LLC,
Plaintiff/Counterclaim Defendant-Appellee,
and
MEIJER, INC., SEARS HOLDINGS CORPORATION,
AND WAL-MART STORES, INC.,
Third Party Defendants-Appellees,
v.
BUYERS DIRECT, INC.,
Defendant/Counterclaim Plaintiff-Appellant.
Appeal from the United States District Court for the
Southern District of New York in Case No. 11-CV-4530,
Judge Katherine B. Forrest.
BRIEF FOR APPELLANT BUYERS DIRECT, INC.
October 11, 2012
ANDREW M. OLLIS
FRANK J. WEST
PHILIPPE J.C. SIGNORE
OBLON, SPIVAK, MCCLELLAND,
MAIER & NEUSTADT L.L.P.
1940 Duke Street
Alexandria, VA 22314
(703) 413-3000
Attorneys for Appellant
CERTI FI CATE OF I NTEREST

Counsel for Appellant, Buyers Direct, Inc., certifies the following:
1. The full name of every party or amicus represented by me is:
Buyers Direct, Inc.
2. The name of the real party in interest (if the party named in the
caption is not the real party in interest) represented by me is:
N/A.
3. All parent corporations and any publicly held companies that own 10
percent or more of the stock of the party or amicus curiae represented by me are:
N/A.
4. The names of all law firms and the partners or associates that
appeared for the party or amicus now represented by me in the trial court or agency
or are expected to appear in this court are:
Andrew M. Ollis
Frank J . West
Philippe J .C. Signore
OBLON, SPIVAK, McCLELLAND,

Anthony F. Lo Cicero
David A. Boag
AMSTER, ROTHSTEIN & EBENSTEIN LLC

Dated: October 11, 2012 /s/ Andrew M. Ollis
Andrew M. Ollis

i
TABLE OF CONTENTS

TABLE OF AUTHORITIES................................................................................... iii
STATEMENT OF RELATED CASES.....................................................................1
STATEMENT OF J URISDICTION..........................................................................1
STATEMENT OF THE ISSUES...............................................................................1
STATEMENT OF THE CASE..................................................................................2
STATEMENT OF FACTS........................................................................................4
I. Introduction..................................................................................................4
II. The 183 Design Patent................................................................................6
III. The Woolrich Shoes & the 183 Design Patent...........................................8
IV. The District Courts Decision....................................................................14
SUMMARY OF THE ARGUMENT ......................................................................17
ARGUMENT...........................................................................................................21
I. Standard of Review........................................................................................21
II. The District Courts Legal Errors Require Reversal of the Grant
of Summary J udgment of Invalidity of the 183 Design Patent....................22

A. The Law of Obviousness for Design Patents..........................................22
B. The Legal Errors in the District Courts Analysis..................................24
1. The Woolrich shoes cannot be a primary reference...............................24

2. The district court failed to explain why a person of
ordinary skill in the art would modify the Woolrich

ii
shoes to achieve the same overall visual impression
as the 183 design patent.........................................................................29

3. The district court applied the wrong legal tests for
obviousness.............................................................................................31

4. The district court failed to consider the secondary
considerations of non-obviousness.........................................................33

C. The District Court Committed Legal Error by Applying the Wrong
Legal Test for Functionality...................................................................35

1. A design patent is invalid as functional if the design
is dictated by the use or purpose of the article....................................35

2. The district court erred by failing to determine whether
the 183 patent design was dictated by function.................................36

3. The 183 patent design is ornamental and not
dictated by function.............................................................................38

III. The District Court Abused its Discretion in Dismissing
BDIs Trade Dress Claim with Prejudice......................................................40

CONCLUSION........................................................................................................43

iii
TABLE OF AUTHORI TI ES
CASES
Allergan, Inc. v. Athena Cosmetics, Inc.,
640 F.3d 1377 (Fed. Cir. 2011)................................................................................22

Anderson v. Liberty Lobby, Inc.,
477 U.S. 242 (1986).................................................................................................21

Apple, Inc. v. Samsung Elecs. Co.,
678 F.3d 1314 (Fed. Cir. 2012)........................................................................ passim

Avia Group Intl., Inc. v. L.A. Gear Cal., Inc.,
853 F.2d 1557 (Fed Cir. 1988).......................................................................... 36, 39

Benchcraft, Inc. v. Broyhill Furniture Indus., Inc.,
681 F.Supp. 1190 (N.D. Miss. 1988).......................................................................34

Berry Sterling Corp. v. Pescor Plastics, Inc.,
122 F.3d 1452 (Fed. Cir. 1997)................................................................................38

Crocs, Inc. v. Intl Trade Commn,
598 F.3d 1294 (Fed. Cir. 2010)................................................................................39

Durling v. SpectrumFurniture Co.,
101 F.3d 100 (Fed. Cir. 1996).......................................................................... passim

E*Trade Fin. Corp. v. Deutsche Bank AG,
420 F. Supp. 2d 273 (S.D.N.Y. 2006) .....................................................................42

E.I. du Pont de Nemours & Co. v. MacDermid Printing Solutions, L.L.C.,
525 F.3d 1353 (Fed. Cir. 2008)................................................................................22

Egyptian Goddess, Inc. v. Swisa, Inc.,
543 F.3d 665 (Fed. Cir. 2008)..................................................................................23

Ellis v. Chao,
336 F.3d 114 (2d Cir. 2003).....................................................................................22

Grahamv. J ohn Deere,
383 U.S. 1 (1966)........................................................................................ 19, 23, 33
iv

Hughes v. Anderson,
449 Fed. Appx. 49 (2d Cir. 2011)............................................................................41

Ideal Steel Supply Corp. v. Anza,
652 F.3d 310 (2d Cir. 2011).............................................................................. 20, 41

In re Harvey,
12 F.3d 1061 (Fed. Cir. 1993)..................................................................................18

In re Rosen,
673 F.2d 388 (CCPA 1982).............................................................................. 23, 32

Int'l Seaway Trading Corp. v. Walgreens Corp.,
589 F.3d 1233 (Fed. Cir. 2009)................................................................... 23, 32, 39

Iron Grip Barbell Co. v. USA Sports, Inc.,
392 F.3d 1317 (Fed. Cir. 2004)................................................................................33

L.A. Gear, Inc. v. ThomMcAn Shoe Co.,
988 F.2d 1117 (Fed. Cir. 1993)......................................................................... 35, 36

McCarthy v. Dun & Bradstreet Corp.,
482 F.3d 184 (2d Cir. 2007).....................................................................................41

Metz v. U.S. Life Ins. Co.,
662 F.3d 600 (2d Cir. 2011) (per curiam)................................................................22

Microsoft v. i4i Ltd. Pship,
131 S. Ct. 2238 (2011).............................................................................................22

OddzOn Prods., Inc. v. J ust Toys, Inc.,
122 F.3d 1396 (Fed. Cir. 1997)................................................................... 19, 21, 27

Payless Shoesource, Inc. v. Reebok Intl, Ltd.,
998 F.2d 985 (Fed. Cir. 1993)..................................................................................39

Perez v. Ortiz,
849 F.2d 793 (2d Cir. 1988).....................................................................................41

PHG Techs., LLC v. St. J ohn Cos., Inc.,
469 F.3d 1361 (Fed. Cir. 2006)........................................................................ passim
v

Power-One, Inc. v. Artesyn Techs., Inc.,
599 F.3d 1343 (Fed. Cir. 2010)................................................................................21

Rachman Bag Co. v. Liberty Mut. Ins. Co.,
46 F.3d 230 (2d Cir. 1995).......................................................................................41

Reebok Intl, Ltd. v. J . Baker, Inc.,
32 F.3d 1552 (Fed. Cir. 1994)..................................................................................39

Rosco, Inc. v. Mirror Lite Co.,
304 F.3d 1373 (Fed. Cir. 2002)................................................................... 35, 36, 38

Stratoflex, Inc. v. Aeroquip Corp.,
713 F.2d 1530 (Fed. Cir. 1983)......................................................................... 19, 33

Titan Tire Corp. v. Case New Holland, Inc.,
566 F.3d 1372 (Fed. Cir. 2009)................................................................................24

Transmatic, Inc. v. Gulton Indus., Inc.,
53 F.3d 1270 (Fed. Cir. 1995)..................................................................................21

STATUTES
15 U.S.C. 1125(a) ...................................................................................................1
28 U.S.C. 1295(a)(1)...............................................................................................1
28 U.S.C. 2201 et seq..............................................................................................1
35 U.S.C. 103..........................................................................................................1
35 U.S.C. 171........................................................................................................35
35 U.S.C. 282........................................................................................................22
35 U.S.C. 1331 and 1338......................................................................................1
vi
RULES
Fed. R. Civ. P. 12(c)...................................................................................................3
Fed. R. Civ. P. 15(a).......................................................................................... 22, 41
Fed. R. Civ. P. 52(a).................................................................................................21

1
STATEMENT OF RELATED CASES
There was no previous appeal in or from this civil action before this or any
other appellate court.
Civil action no. 10-CV-00065, Buyers Direct, Inc. v. Belk Inc. and Belk
International, Inc., is currently pending in the United States District Court for the
Southern District of North Carolina and will be directly affected by this Courts
decision in the pending appeal, as the same design patent (D598,183) is at issue in
both cases.
STATEMENT OF J URI SDI CTI ON
The jurisdiction of the district court was based upon 35 U.S.C. 1331 and
1338 with respect to the patent claims, 28 U.S.C. 2201 et seq. in relation to the
Declaratory J udgment Act, and 15 U.S.C. 1125(a) in relation to trade dress
infringement. J urisdiction of this timely appeal of a final judgment is based upon
28 U.S.C. 1295(a)(1).
STATEMENT OF THE I SSUES
1. Did the district court err in granting summary judgment of invalidity
of U.S. Design Patent No. D598,183 (the 183 design patent) under 35 U.S.C.
103, when it failed to correctly apply the test for obviousness of a design patent,
and when the Woolrich shoes do not convey the same overall visual impression as
the subject matter of the 183 design patent?
2. Did the district court err in concluding that the 183 design patent is
2
invalid as primarily functional, when it did not apply the correct legal test for
determining functionality, and when the 183 design patent covers an ornamental
design?
3. Inasmuch as granting Buyers Direct, Inc. (BDI) leave to amend its
pleading would not have prejudiced High Point Design LLC (High Point) or
hindered the district courts schedule, did the district court err in dismissing BDIs
trade dress infringement claim with prejudice?
STATEMENT OF THE CASE
High Point sued BDI on J uly 1, 2011 seeking a declaratory judgment that
High Point did not infringe the 183 design patent and that the 183 design patent
was invalid and/or unenforceable.
High Point waited nearly 120 days before serving its complaint on October
22, 2012.
BDI filed an answer and counterclaim against High Point on December 29,
2011, asserting that High Point infringed the 183 design patent and
misappropriated the trade dress in BDIs SNOOZIES!
slipper-socks. Also on
December 29, 2011, BDI filed a Third-Party Complaint against Meijer, Inc., Sears
Holdings Corporation, and Wal-Mart Stores, Inc., alleging that each retailer had
infringed the 183 design patent and misappropriated the trade dress in BDIs
SNOOZIES!
slipper-socks.
3
On February 16, 2012, the district court issued a Scheduling Order setting
J uly 2, 2012 as the close of discovery date.
On February 28, 2012, the district court issued a Stipulation and Schedule
setting March 16, 2012 as the deadline to amend the pleadings.
On March 20, 2012, High Point filed a combined motion for summary
judgment of invalidity and/or non-infringement of the 183 design patent and for
judgment on the pleadings with respect to BDIs trade dress infringement
allegations pursuant to Fed. R. Civ. P. 12(c).
On May 1, 2012, High Point requested a two month extension of all
discovery deadlines. The district court denied High Points requested extension
three days later, noting that it would promptly review High Points summary
judgment motion.
On May 11, 2012, the district court stayed all discovery.
On May 15, 2012, the district court issued an Order granting the motion for
summary judgment of invalidity of the 183 design patent on the grounds that the
183 design patent was obvious over certain Woolrich shoes in view of U.S.
D566,934 and U.S. D540,517 (A15-18; A20), and that the 183 design patent was
purely functional rather than ornamental (A18-19). The district court also
dismissed BDIs trade dress claims with prejudice, stating that at this stage of the
proceedings it would not allow an amended pleading. A10; A21-22.
4
BDI timely filed a notice of appeal on J une 13, 2012.
STATEMENT OF FACTS
I . I ntroduction
BDI manufactures and sells highly popular slipper-socks known as
SNOOZIES!
. The SNOOZIES!
slipper-socks have been hugely successful.

SNOOZIES!
were first sold in September 2008, and by 2011, annual sales of

SNOOZIES!
slipper-socks were in the millions of dollars. A340; A504, 5.

Sales of SNOOZIES!
slipper-socks have continued to grow rapidly in 2012, are

now sold globally, and have been featured on the Today Show and other popular
media.
A representative picture of BDIs SNOOZIES!
slipper-socks is shown
below.

SNOOZI ES!
Slipper-Socks (A504)
5
The SNOOZIES!
marketing literature explains that SNOOZIES!
are not
socks and theyre not slippers - sort of a crossover between the two. A497. The
SNOOZIES!
advertising touts the advantages of the slipper-socks, describing

them as soft, comfy, warm, and simply adorable. Id. (emphasis added). The
slipper-socks are soft and squishy with visually pleasing bright colors and designs
and presented outside of packaging, like stuffed animals, encouraging touching.
The fleece-lined curved opening is far larger than a typical sock or slipper opening.
Additionally, the fleece extends up and above the foot opening, but does not
overlie the outer edge of the slipper-sock. A457, 13. As a result, SNOOZIES!

slipper-socks have an overall look and feel that is immediately recognizable and
constitutes protectable trade dress that is an embodiment of the ornamental design
in the 183 design patent (discussed below).
In early 2011, Marshall Bank, the President of BDI and the inventor of the
183 design patent, noticed products in stores that appeared to be direct copies of
the SNOOZIES!
slipper-socks. A504, 7-8. These products were distributed by

defendant High Point (A505, 7) and sold by defendants Wal-Mart Stores, Inc.,
Sears Holdings Corporation, and Meijer, Inc. A photo of the infringing High Point
product appears below, which shows its undeniable similarity to the SNOOZIES!

design. A505, 8; compare with A34.
6

An I nfringing High Point Slipper (A505)
A505. After BDI brought the 183 design patent to High Points attention, the
lawsuit was filed by High Point and discussions between BDI and High Point
ensued. After it was clear that the dispute could not be settled, the Complaint was
eventually served by High Point.
I I . The 183 Design Patent
SNOOZIES!
slipper-socks are a commercial embodiment protected by the

183 design patent. The 183 design patent was filed and issued in 2009. Two
years after the introduction of the slipper-socks, BDI observed that its
SNOOZIES!
design had been copied. A33-37. Representative Figures 1 and 4

from the 183 design patent are reproduced below, showing perspective and side
views of the patented slipper-sock. A34-35.
7

The 183 design patent depicts an ornamental design for a slipper-sock having a
distinctive silhouette, important in attracting customers and a primary method of
identifying footwear to consumers. A456, 8. The surface of the 183 design
patent slipper-sock is also smooth and continuous right up to the foot opening.
A456, 10. An important visual feature is the fleece-lined opening to the slipper-
sock. A457, 12. The opening is relatively large, more than half the length of the
slipper-sock (as seen from the side view shown in Fig. 4), and has a gradual curve.
FIG. 1
'I r 1111111111" 1/ f
FIG.4
I 111111111 II
8
Id. The fleece material extends up and above the foot opening, and does not
overlie the outer surface of the slipper-sock. A457, 13. Thus, the fleece can be
thought of like the head of beer in a mug that extends above the lip of the mug, but
does not spill down the sides of the mug.
The 183 design patent includes two embodiments with different soles. In
the embodiment shown in Fig. 7 (A36), the sole has a pattern of two groups of
dots. In a second embodiment shown in Fig. 8 (A37), the sole is smooth and has
no dots.
I I I . The Woolrich Shoes & the 183 Design Patent
The district court granted summary judgment of invalidity of obviousness
based primarily over two shoes known as the Laurel Hill and Penta (collectively
the Woolrich shoes). The district court relied secondarily on two design patents
showing various dot patterns on footwear (U.S. D566,934 and U.S. D540,517).
BDI disputes that High Point presented sufficient evidence that the Woolrich shoes
are, in fact, prior art to the 183 patent. See A353-54.
Even if prior art, these two Woolrich shoes convey a dramatically different
visual impression than the 183 design patent and are readily distinguishable from
the slipper-socks in the 183 design patent.
BDI explained in great detail the differences between the 183 design patent
and the Woolrich shoes in opposing High Points motion for summary judgment.
9
A339; A349-50. BDI supported its opposition with the unrefuted Expert
Declaration of Lance Rake. A455-502.
1
In contrast, High Point submitted no
declarations and relied solely on attorney argument in making its invalidity
allegations.
Each of the Woolrich shoes is an indoor/outdoor shoe, which includes a
prominent rolled over collar around the opening of the foot, a raised toe, and a
thick sole made of different material. See A455-502; A206 (noting the Penta sole
is designed for inside or outside wear); A226 (noting the Laurel Hill shoe has
indoor/outdoor soles). Together with the overall contour of the shoes, these
features present a distinctly different overall visual impression than the 183 design
patent slipper-sock. Several of these differences are illustrated in relation to the
Laurel Hill shoe in the following drawings:

1
Mr. Rake is an industrial designer with 36 years of experience, including
experience in footwear design. A455-456.
10

183 Design Patent Fig. 4 and Laurel Hill Shoe Side Views
As can be seen from the above comparisons, the Laurel Hill shoe differs
substantially from the 183 design patent. Among other differences, the Laurel
Hill design is for a structured indoor/outdoor shoe that has a:
Prominent rolled collar that extends over the sides of the shoe that
does not exist in the 183 design patent, A460, 24;
Substantially different curved silhouette (A456-57, 9-12) due to its:
'183
Design
Patent
Fleece projects
-above foot
opening and does
not overlie sides
Longer foot opening
Gently curved
opening
Flattoe
.. ''
No thick sale line
FIG,4 Higher sidewall
Raised toe
portion
Shorter foot opening
Rolled collar of
fleece overlaps
sides of shoe
Laurel
Hill
Thick sale line
FIG.4
Lower
sidewall
11
o Raised toe and heel;
o More pronounced vertical curve at the front of the foot opening;
o Prominent seam on the sidewall with visible stitching;
o Distinct contour around the toe; and
o Shorter foot opening relative to the length of the shoe;
Lower sidewall, A460, 24; A494 and
Thick sole edge, A460, 25; A494-95.
The prominent rolled collar by itself distinguishes the Laurel Hill shoe from the
soft-bodied slipper-socks of the 183 design patent. Mr. Rake identified other
differences that further distinguish the two designs. A456-57, 9-12; A460-61,
24-26; A494-95.
A comparison between the 183 design patent and the Penta indoor/outdoor
structured shoe leads to the same conclusion.
12

183 Design Patent Fig. 4 and Penta Shoe Side Views
As can be seen from the above comparisons, the Penta shoe differs substantially
from the 183 design patent. Among other differences, the Penta indoor/outdoor
structured shoe has a:
Prominent rolled collar that extends over the sides of the shoe that
does not exist in the 183 design patent, A460, 24;
Flat toe
portion
Thinner front
slipper body
'1111111111
Longer foot opening
Fleece projects
above foot
opening and does
not overlie sides
'183
Design
Patent
I , I J II'" /I
No welt
No thick sole line
FIG. 4 Higher sidewall
Fatter front(oe body
Raised toe
portion
l .FIG.4
Thick sole line
Lower
sidewall
Rolled collar of
fleece overlaps
sides of shoe
Penta
13
Thick two part welt that juts out prominently around the base of the
entire shoe with visible stiching, A457, 11; A460, 25; and
Substantially different curved silhouette (A456-57, 9-12) due to
o Raised toe and heel;
o Fatter contour around the front of the shoe;
o Prominent seam on the sidewall with visible stitching;
o Shorter foot opening relative to the length of the shoe, and
o Lower sidewall, A460, 24; A494-95.
Mr. Rake identified additional differences that further distinguish the two designs.
A456-57, 9-12; A460-61, 24-26; A494-95.
These and other distinctions between the slipper-sock of the 183 design
patent and the Woolrich shoes were identified in BDIs brief opposing High
Points motion for summary judgment and Mr. Rakes Declaration. A339; A349-
50. Mr. Rake pointed out that, unlike the slipper design in the 183 design patent,
the Woolrich shoes include (1) fleece which substantially overlapped the top of the
shoe (a rolled collar), (2) substantial welts or a thick sole line, (3) an overall
different contour, and (4) a low sidewall. A456, 8-12; A460-61, 24-26.
For these and other reasons, Mr. Rake concluded that the Woolrich shoes do
not convey the same overall visual impression as the 183 design patent. A461,
27. Ultimately, Mr. Rake concluded that an ordinary observer, familiar with the
14
prior art and given such attention as a purchaser usually gives, would not find the
prior art designs substantially similar in overall appearance. A463, 34
(emphasis added).
I V. The District Courts Decision
Despite the detailed evidence offered by BDI illustrating the differences
between the design of the 183 design patent and the alleged prior art, and the
explicit ornamental features of the slipper-sock of the 183 design patent, the
district court granted summary judgment of invalidity. The district court found
that the design was (1) obvious over the Woolrich shoes in view of U.S. D566,934
and U.S. D540,517, and (2) merely functional. A8-23.
The district court summarily dismissed the 183 design patent, stating that it
is a rather run-of-the-mill fuzzy slipper (A9) that it looks like many slippers I
purchased and wore throughout my youth some time ago - - and certainly before
2009.
2
A11. Despite the footnoted comment that the adverse decision was not
influenced by anecdotal memories, the statement and summary manner in which
the court ruled on the various issues is striking. More importantly, the district
courts decision lacked any discussion, or even mention, of the multiple, readily

2
The district court added a footnote, stating, [a]s discussed below, the critical
legal basis for disposing of this matter rests not on the Courts anecdotal memories
and assumptions of common sense obviousness, but rather on the facts relating to
prior art available in the marketplace prior to the time that Buyers Direct even
applied for the 183 patent. A11.
15
apparent features that contribute to a very different overall visual impression
provided by the 183 design patent as compared to the Woolrich shoes. Nowhere
did the district court acknowledge the prominent rolled collar, thick welts, or
different shoe contours of the Woolrich shoes as compared to the 183 design
patent. Instead, the district court concluded, without explanation, that this Penta
slipper looks indistinguishable from the drawing shown in the 183 patent and
[t]o an ordinary observer, they are the same slippers. A12; A18 (emphasis
added).
The district court also wrongly ignored the Rake declaration as merely the
opinion of an expert rather than an ordinary observer. A20. Mr. Rake pointed out
numerous differences between the 183 design patent and the Woolrich shoes.
A455-502. Regardless of his status as an expert, the numerous differences
observed are highly relevant to the overall appearance of the Woolrich shoes. In
fact, Mr. Rake concluded that an ordinary observer, familiar with the prior art
and given such attention as a purchaser usually gives, would not find the prior art
designs substantially similar in overall appearance. A463, 34.
In evaluating functionality, the district court summarily concluded that the
183 design patents features are merely functional and that [t]he face of the
patent itself leaves no doubt that there is nothing ornamental about the slippers.
A10. Most importantly, the district court never found that the 183 design was
16
dictated by function and, indeed, the district court even acknowledged that at
least the fuzz overflow can be characterized as ornamental. A19.
Last, the district court dismissed BDIs trade dress claim with prejudice
based on an alleged insufficiency of the trade dress pleadings. A21-22.
3
The
district court dismissed the trade dress claim with prejudice due to what was
asserted to be the late stage of the proceedings (A10) and thus refused to
consider the amended counterclaim offered by BDI. The dismissal with prejudice
was made despite the fact that substantial discovery remained to be taken at the
time of the decision.
4
J ust prior to the district courts ruling on the summary
judgment motion, High Point had requested an extension of the discovery dates, so
clearly there would be no prejudice to High Point. In contrast, the prejudice to
BDI is clear in light of the district courts recognition that there are some trade
dress characteristics shared between High Points slipper and the embodiment
provided to the Court. A22 (emphasis added).

3
BDI does not concede that the originally filed trade dress was insufficient, A359-
60, but focuses on the dismissal with prejudice aspect of the district courts
decision for the purpose of narrowing the issues on appeal.
4
Prior to the decision, the parties had taken only one fact deposition of a third
party and noticed several others. Not a single deposition of any party had taken
place. BDI and High Point had each produced limited discovery. No expert
reports had been exchanged.
17
SUMMARY OF THE ARGUMENT
The decision below should be reversed and remanded because the district
court wrongly held that (1) on summary judgment the 183 design patent was
obvious primarily in view of the quite distinct Woolrich shoes, (2) on summary
judgment the ornamental 183 design patent was purely functional, and (3) BDIs
trade dress infringement claim should be dismissed with prejudice even
though substantial discovery remained and BDI promptly offered an amended
pleading.
The district courts legal conclusion that the 183 design patent was obvious
contained a series of reversible errors. The district court committed clear error in
deciding that a designer of ordinary skill in the art would have found the Woolrich
shoes to be substantially the same design as the 183 design patent and thus
suitable as a primary reference -- without even addressing BDIs arguments and
ignoring the unrefuted Rake Declaration. This conclusion was reached despite the
many substantial differences, including the significant rolled collar, thick welts and
sole line, smaller foot opening, raised toes, and overall differences in contour and
stitching that readily distinguish the Woolrich shoes from the 183 design patent.
See Apple, Inc. v. Samsung Elecs. Co., 678 F.3d 1314, 1328-32 (Fed. Cir. 2012)
(finding error where the patented design for a tablet and the prior art created
substantial differences in overall appearance).
18
Indeed, the facts in this case are remarkably similar to those in Apple v.
Samsung. In Apple, this Court overruled a district court decision that focused on
the broad similarities between the patented design for an iPad
and the prior art,

rather than the substantial differences that distinguished the two. The prior art in
Apple had a frame around the perimeter of the tablets screen. 678 F.3d at 1330-
31. This Court found that the prior art frame created a different visual impression
than the unbroken slab of glass extending across the front of the Apple design. Id.
Similarly, in this case, the Woolrich shoe collar overlays the surface of the shoe,
breaking the smooth continuity of the shoe body, whereas the 183 design patent
has a continuous upper body up to the foot opening. As with the frame in the
Apple prior art, the Woolrich collar creates a substantial difference in visual
impression in comparison to the 183 design patent. Thus, the Woolrich shoes
cannot qualify as a primary reference.
The district court further erred by concluding, without explanation or
evidentiary support, that an ordinary designer would be motivated to perform
major modifications to the Woolrich shoes to be substantially the same as the
slipper-sock of the 183 design patent. See In re Harvey, 12 F.3d 1061, 1063 (Fed.
Cir. 1993). Similarly, the district court made a clear error in determining that an
ordinary observer would have found that the hypothetical prior art combination of
Woolrich shoes, with the dot patterns of U.S. D566,934 and U.S. D540,517,
19
conveyed substantially the same overall visual impression as the slipper-sock of
the 183 design patent.
The district courts summary and dismissive conclusion that the Woolrich
shoes are the same as the slipper-sock of the 183 design patent (A18)
constituted a failure to carry out the second step of the obviousness analysis
articulated in the Supreme Courts Grahamtest, which requires a court to compare
the prior art with the patented features. Grahamv. J ohn Deere, 383 U.S. 1, 17-18
(1966). These errors were particularly significant in view of the procedural
posture of the case, where all factual inferences must be drawn in favor of BDI,
and the differences between the Woolrich shoes and the 183 design patent raised
numerous genuine issues of material fact. See, e.g., OddzOn Prods., Inc. v. J ust
Toys, Inc., 122 F.3d 1396, 1401 (Fed. Cir. 1997). Finally, the district court
improperly failed to consider BDIs evidence of secondary considerations of
copying by High Point and BDIs own commercial success. See, e.g., Stratoflex,
Inc. v. Aeroquip Corp., 713 F.2d 1530, 1538 (Fed. Cir. 1983).
The district courts conclusion that the 183 design patent was invalid as
purely functional must also be reversed. To be invalid as primarily functional, a
design must be dictated by function. PHG Techs., LLC v. St. J ohn Cos., Inc.,
469 F.3d 1361, 1366 (Fed. Cir. 2006). The district court never applied this
central legal test and failed to consider whether the 183 patent design was
20
dictated by function. This failure alone constitutes reversible legal
error. Moreover, common sense shows that the 183 design patent is not dictated
by function. There are countless alternative distinct designs that perform the
same functions of warmly and comfortably covering a foot. The non-functional
differences between these designs are ornamental. Thus, even if the correct legal
test had been applied, the district courts functionality conclusion
constituted clear and reversible error.
Finally, the district court abused its discretion by dismissing BDIs trade
dress claim with prejudice due to the late stage of the proceedings.
A10. In fact, not one deposition of a party had been taken and substantial
discovery remainedand High Point had requested an extension of the discovery
period days before the decision on High Points summary judgment motion issued.
Consequently, granting leave to amend BDIs counterclaim with a more detailed
recitation of its trade dress would have prejudiced neither High Point nor the
district courts schedule. In these circumstances, the Second Circuit has held that
leave to amend should be liberally granted, see, e.g., Ideal Steel Supply Corp. v.
Anza, 652 F.3d 310, 325 (2d Cir. 2011), and the district courts dismissal with
prejudice was an abuse of discretion.
21
ARGUMENT
I . Standard of Review
This Court reviews a district courts grant of summary judgment de novo.
OddzOn Prods., 122 F.3d at 1401. Summary judgment is appropriate where there
is no genuine issue as to any material fact and the moving party is entitled to
judgment as a matter of law. Id. Thus, summary judgment may be granted when
no reasonable jury could return a verdict for the nonmoving party. Anderson v.
Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). In determining whether there is a
genuine issue of material fact, the evidence must be viewed in a light most
favorable to the party opposing the motion, with doubts resolved in favor of the
opponent. OddzOn Prods., 122 F.3d at 1401; Transmatic, Inc. v. Gulton Indus.,
Inc., 53 F.3d 1270, 1274 (Fed. Cir. 1995).
A determination of obviousness under 35 U.S.C. 103(a) is a legal question
based on underlying questions of fact. Power-One, Inc. v. Artesyn Techs., Inc.,
599 F.3d 1343, 1351 (Fed. Cir. 2010). This Court reviews the ultimate
determination of obviousness by a district court de novo and the underlying factual
inquiries for clear error. Id. (internal citations omitted).
Furthermore, [w]hether a patented design is functional or ornamental is a
question of fact. PHG Techs., 469 F.3d at 1365. Thus, this Court reviews the
determination of functionality for clear error. Fed. R. Civ. P. 52(a). This Court
22
also review[s] the district courts legal conclusions de novo. E.I. du Pont de
Nemours & Co. v. MacDermid Printing Solutions, L.L.C., 525 F.3d 1353, 1358
(Fed. Cir. 2008). Thus, the district courts legal test for determining functionality
must also be reviewed de novo.
As a purely procedural issue, an appeal from an order granting a motion for
judgment on the pleadings is reviewed under the law of the regional circuit. See,
e.g., Allergan, Inc. v. Athena Cosmetics, Inc., 640 F.3d 1377, 1380 (Fed. Cir.
2011). Under Second Circuit law, a district courts decision to dismiss a complaint
with prejudice, thereby implicitly denying a partys request for leave to amend
under Fed. R. Civ. P. 15(a), is reviewed for an abuse of discretion. See Metz v.
U.S. Life Ins. Co., 662 F.3d 600, 603 (2d Cir. 2011) (per curiam). See also Ellis v.
Chao, 336 F.3d 114, 127 (2d Cir. 2003) (stating that a denial of leave to amend is
reviewed for an abuse of discretion).
I I . The District Courts Legal Errors Require Reversal of the Grant of
Summary J udgment of I nvalidity of the 183 Design Patent

A. The Law of Obviousness for Design Patents

Patents are presumed valid. 35 U.S.C. 282. An accused infringer
asserting invalidity of a patent must prove invalidity under the clear and
convincing evidentiary standard. Microsoft v. i4i Ltd. Pship, 131 S. Ct. 2238,
2245-47 (2011).
The fact finder employs a two step process in making the determination of
23
obviousness for a design patent.
5
Apple, 678 F.3d at 1329-30; Durling v. Spectrum
Furniture Co., 101 F.3d 100, 103 (Fed. Cir. 1996), distinguished on other grounds
by Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 679 (Fed. Cir. 2008). First,
one must find a single [primary] reference, a something in existence, the design
characteristics of which are basically the same as the claimed design. Durling,
101 F.3d at 103 (quoting In re Rosen, 673 F.2d 388, 391 (CCPA 1982). Second,
other references may be used to modify [the primary reference] to create a design
that has the same overall visual appearance as the claimed design. Durling, 101
F.3d at 103. Without a primary reference having the same overall visual
impression as the claimed design, there can be no finding of obviousness under 35
U.S.C. 103(a). See Apple, 678 F.3d at 1331-32.
If a single reference is identified (or a hypothetical piece of art is created
through combination by an ordinary designer), it must then be analyzed from the
point of view of the ordinary observer. Int'l Seaway Trading Corp. v. Walgreens
Corp., 589 F.3d 1233, 1240-41 (Fed. Cir. 2009). The ordinary observer test looks
at whether the primary or hypothetical piece of combined prior art and the claimed
design are substantially the same such that an ordinary observer, giving such
attention as an ordinary observer usually gives, would be deceived into purchasing

5
These steps are required in order to follow the Supreme Courts guidance in
Graham. 383 U.S. at 17-18 (the scope and content of the prior art are
determined; differences between the prior art and the claims at issue are
ascertained).
24
one supposing it to be the other. Titan Tire Corp. v. Case New Holland, Inc., 566
F.3d 1372, 1384 (Fed. Cir. 2009).
B. The Legal Errors in the District Courts Analysis
1. The Woolrich shoes cannot be a primary reference
Prior art must create basically the same visual impression as the patented
design to serve as a primary reference. Durling, 101 F.3d at 103. The basically
the same test requires consideration of the visual impression created by the
patented design as a whole.
6
Id. A reference does not convey basically the
same visual impression as a patented design when there are significant
differences between the two. Id. at 104.
Neither of the Woolrich shoes meet this standard.
Each of the Woolrich shoes is a structured indoor/outdoor shoe including a
prominent rolled over collar around the opening of the foot, a distinctly different
structured shoe body contour, and a thick sole and/or welt. A456, 8-12; A460-
61, 24-26. These and other features present a distinctly different overall visual
impression than the 183 design patent for a slipper-sock. These differences are

6
Notably, the district court completely failed to carry out the first step of this
analysis, i.e., discerning the correct visual impression created by the patented
design as a whole, Durling, 101 F.3d at 103, even though both parties presented
versions of the overall visual impression of the 183 patent in their briefing. A88;
A346-47. The district court merely provided a statement of the concept of fuzzy
slippers, and a description of a general concept in place of describing the overall
visual impression of the patent in question has been held to be erroneous. See
Durling, 101 F.3d at 104.
25
illustrated in relation to the Laurel Hill shoe in the following drawings:

The prominent rolled collar by itself distinguishes the Laurel Hill shoe from the
183 patented design. The other substantial differences in the shape of the shoes
and the sole of the shoes in relation to the 183 slipper-sock design further
distinguish the Laurel Hill shoe to the ordinary designer.
A comparison of the design for a slipper-sock in the 183 design patent in
relation to the Penta shoe leads to the same conclusion.
'183
Design
Patent
Fleece projects
-above foot
opening and does
not overlie sides
Longer foot opening
Flat toe
.. !':i':;::,
No thick sale line
FIG,4 Higher sidewall
Raised toe
portion
Rolled collar of
fleece overlaps
sides of shoe
Laurel
Hill
Thick sale line
FIG.4
Lower
sidewall
26

These and other distinctions between the slipper-sock of the 183 design
patent and the Woolrich shoes were provided in BDIs brief opposing High Points
motion for summary judgment and in the Declaration of Mr. Rake. A339; A349-
50. Mr. Rake pointed out that, unlike the slipper-sock design in the 183 design
patent, the Woolrich shoes include (1) fleece which substantially overlapped the
top of the shoe (a rolled collar), (2) substantial welts or a thick sole line, (3) an
Flat toe
portion
Thinner front
slipper body
'1111111111
Longer foot opening
Fleece projects
above foot
opening and does
not overlie sides
'183
Design
Patent
I , I J II'" /I
No welt
No thick sole line
FIG. 4 Higher sidewall
Fatter front(oe body
Raised toe
portion
l .FIG.4
Thick sole line
Lower
sidewall
Rolled collar of
fleece overlaps
sides of shoe
Penta
27
overall different contour, and (4) a low sidewall. A456, 8-10; A460-61, 24-
26. For these and other reasons, Mr. Rake concluded that the Woolrich shoes do
not convey the same overall visual impression as the 183 design patent. A461,
27. In view of these substantial differences, neither Woolrich shoe could be
considered the primary reference in carrying out an obviousness analysis for the
slipper-sock of the 183 design patent. See Durling, 101 F.3d at 104; Apple, 678
F.3d at 1331-32.
Nowhere did the district court acknowledge or take into consideration the
prominent rolled collar, thick welts, or different shoe contours of the Woolrich
shoes as compared to the slipper-sock of the 183 design patent. Importantly, at
the summary judgment stage, all of these differences must be viewed in the light
most favorable to BDI. See, e.g., OddzOn Prods., 122 F.3d at 1401. Therefore, it
was error for the district court to summarily determine that the Woolrich shoes
created substantially the same visual impression as the 183 design patent and
could be used as the primary reference when the unrefuted evidence of record
concluded the exact opposite.
In fact, this case is analogous to this Courts recent decision in Apple v.
Samsung. 678 F.3d 1314. In both Apple and the present case, elegant, simple, and
highly successful products covered by design patents were compared to prior art
inappropriate as primary references. Id. at 1330. In Apple, the district court found
28
that Apples design patent covering the iPad
was invalid based on prior art that

included the 1994 Fidler reference. In fact, the alleged prior art reference in Apple
was closer to the iPad
design than the Woolrich shoes are to the 183 patent

design. The comparison presented by this Court showing the Apple patented
design and the 1994 Fidler reference is shown below:

Id. at 1330. The primary difference noted by this Court was that the Fidler tablet
includes a frame surrounding the screen that contrasted with the screen itself,
breaking the continuity of the glass surface. Id. at 1330-31. This difference was
sufficient for the Court to find that the Fidler tablet could not be used as a primary
reference. Id. at 1331 (stating that the D889 design creates the visual impression
of an unbroken slab of glass extending from edge to edge on the front side of the
tablet. The Fidler reference does not create such an impression). The Fidler
0504,889
/
1994 Fidler
29
tablets frame is directly analogous to the rolled collar of the Woolrich shoes: the
collar overlays the surface of the shoe, breaking the smooth continuity of the shoe
body. On the other hand, the design of the 183 design patent has a continuous
outer body up to the foot opening, analogous to the surface of the iPad
.
Furthermore, as explained above, this is just one of the differences between the
183 design patent and the Woolrich shoes. As in Apple, this Court should find
that the district court committed reversible error in relying on the Woolrich shoes
as the base reference in its prior art analysis.
2. The district court failed to explain why a person of ordinary skill in the
art would modify the Woolrich shoes to achieve the same overall visual
impression as the 183 design patent
The district court also failed to address the many modifications of the
Woolrich shoes necessary to achieve the same overall visual impression as the
183 design patent either on its own or in combination with secondary references to
arrive at a hypothetical piece of prior art. See Durling, 101 F.3d at 103 (stating
that other references may be used to modify [the primary reference] to create a
design that has the same overall visual appearance as the claimed design). In its
opinion, the district court found that the Woolrich shoes were the same as the
183 design patent and that the only differences related to the soles. A18. In
reaching this conclusion, the district court summarily characterized the 183 design
patent as a generic piece of footwear, ignoring all constituent elements of the
30
design that distinguish the 183 design patent from the Woolrich shoes. This broad
and conclusory approach is contrary to the law. As explained in the Apple case,
modifications must not be considered from a broad or general concept (in that case,
a tablet, akin to footwear in this case). Apple, 678 F.3d at 1332.
For example, the district court never explained why an ordinary designer
would completely remove the visually prominent rolled collar on the Woolrich
shoes so that the fleece matched the interior fluff of the slipper-sock of the 183
design patent, creating a smooth outer surface. Notably, the analogous
modification of extending a sheet of glass over the frame at the edge of the Fidler
tablet (to arrive at a design with an overall visual impression that is basically the
same as the iPad
) was precisely the modification that this Court rejected in

Apple, even in combination with a secondary reference having a flat glass front.
Id. at 1331.
Furthermore, the district court never explained why an ordinary designer
would remove the substantial welts and sole thicknesses in the Woolrich shoes to
appear more like the 183 design patent. These changes would make the Woolrich
shoes less functional. Considering the indoor/outdoor intended use of the
Woolrich shoes, these design changes would make no sense. See A206 (noting the
Penta sole is designed for inside or outside wear); A226 (noting the Laurel Hill
shoe has indoor/outdoor soles). Removing the welt and thick sole of the
31
Woolrich shoes would make them less suitable for their intended purpose, and the
district court provided no reasons as to why an ordinary designer would make such
a modification.
In addition, the district court never explained why an ordinary designer
would expand the size and modify the contours of the foot opening of the Woolrich
shoes to more closely match the 183 design patent. Finally, the district court
never explained why an ordinary designer would modify the overall contours of
the Woolrich shoes, such as by lowering the raised toe of the Laurel Hill shoe and
reducing the thickness of the front of the Penta shoe, to be more similar to the
design in the 183 design patent. In fact, the district court never even discussed
why an ordinary designer would combine the dots on the soles of the prior art
patents, the only difference noted by the court, with the Woolrich shoes.
7
Absent
some explanation accounting for these significant differences, the district court
failed to carry out the second step of the obviousness analysis, and its legal
conclusion of obviousness must be reversed. See Durling, 101 F.3d at 103.
3. The district court applied the wrong legal tests for obviousness

Not only did the district court come to the wrong conclusion for the reasons
explained above, the district court arrived at the wrong conclusion in a legally

7
Notably, Mr. Rake found no reason for an ordinary designer to combine the sole
designs of prior art patents U.S. D566,934 and U.S. D540,517 with the Woolrich
shoes. A461-62, 28-29.
32
erroneous manner in at least two distinct ways.
First, the district courts conclusion (i.e., that to an ordinary observer, they
are the same slippers, (A18) is contrary to the law, which requires an ordinary
designer to determine the primary reference, not the ordinary observer. Intl
Seaway, 589 F.3d at 1240. This difference is significant because a designer in the
art would have a more discriminating eye than an ordinary observer, who may be
an ordinary purchaser of the shoes at issue. Applying the wrong standard
constitutes legal error.
Second, the law requires a district court to explain its reasoning in
comparing references. Although the trial court judge may determine almost
instinctively whether the two designs create basically the same visual
impressionthe judge must communicate the reasoning behind the decision. This
explanation affords the parties a basis upon which to challenge, and also aids the
appellate court in reviewing, the judge's ultimate decision. Durling101 F.3d at
103 (emphasis added). The district court failed to provide any legal explanation
underlying the conclusion that the Woolrich shoes and the slipper-sock of the 183
design patent have the same overall visual impression and that either of the
Woolrich shoes could qualify as the primary reference to one skilled in the art. See
Rosen, 363 F.2d at 391; Intl Seaway, 589 F.3d at 1240. In fact, it is even unclear
33
which Woolrich shoe the district court considered to be the primary reference.
8

4. The district court failed to consider the secondary considerations of
non-obviousness

An obviousness analysis requires a determination of secondary
considerations that may indicate non-obviousness. Graham, 383 U.S. at 17-18; see
also Stratoflex, 713 F.2d at 1538 (stating that it is jurisprudentially inappropriate
to disregard any relevant evidence relating to secondary considerations). Thus, it
was legal error for the district court to disregard BDIs secondary considerations of
non-obviousness.
a. Copying
Important secondary evidence of non-obviousness offered to the district
court by BDI included High Points copying of the SNOOZIES!
slipper-socks
(embodiments of the 183 design patent). A353; A505. High Point never denied
that it copied the SNOOZIES!
slipper-socks in its reply brief (A513) and the

similarity between SNOOZIES!
and the High Point slipper is striking. Copying

by others is highly persuasive evidence of non-obviousness. Iron Grip Barbell Co.
v. USA Sports, Inc., 392 F.3d 1317, 1324 (Fed. Cir. 2004) (stating that [t]his court
has previously identified, inter alia, commercial success, satisfaction of a long-felt
need, and copying to be relevant factors regarding secondary evidence of non-
obviousness); see also Benchcraft, Inc. v. Broyhill Furniture Indus., Inc., 681

8
See opinion at A18, line 3, referring to the Woolrich prior art in general.
34
F.Supp. 1190, 1217 (N.D. Miss. 1988) (stating that copying by others, including
the infringer, is perhaps one of the most probative and compelling arguments that
the design is novel and unique).
SNOOZIES!
, a commercial embodiment of the 183 design patent, were

copied by High Point, as illustrated in the photographs below:

SNOOZI ES!

(A504)

An I nfringing High Point Slipper (A505)
b. Commercial success
BDI also offered evidence of the commercial success of SNOOZIES!
.
A353; A504, 4-5. Common sense tells one that the overall visual impression of
any footwear is an important component of whether or not the footwear is
successful. The SNOOZIES!
slipper-sock had sales of millions of dollars in 2011

alone. A340; A504, 5. Furthermore, sales have continued to expand worldwide.
In contrast, the record indicates that the Woolrich shoes were far less successful
than SNOOZIES!
, with sales two orders of magnitude lower ranging from

$24,000 to $30,000 per year from 2005 to 2007 as compared to the millions of
35
dollars in sales in a single year for SNOOZIES!
. A512; A522-23, 5-7 (see also

underlying exhibits on A525, A527, and A529); A504. Indeed, it appears that the
commercial success of SNOOZIES!
enticed High Point to copy SNOOZIES!
in
the first place.

C. The District Court Committed Legal Error by Applying the Wrong
Legal Test for Functionality

1. A design patent is invalid as functional if the design is dictated
by the use or purpose of the article

A design patent is directed towards the ornamental design of an article of
manufacture. 35 U.S.C. 171. Invalidity due to functionality must be proven by
the party asserting the defense by clear and convincing evidence. L.A. Gear, Inc.
v. ThomMcAn Shoe Co., 988 F.2d 1117, 1123 (Fed. Cir. 1993). This Court applies
a stringent standard for invalidating a design patent on grounds of functionality.
Rosco, Inc. v. Mirror Lite Co., 304 F.3d 1373, 1378 (Fed. Cir. 2002). With respect
to the test for functionality, this Court has explained,
An article of manufacture necessarily serves a utilitarian
purpose, and the design of a useful article is deemed to be
functional when the appearance of the claimed design is
dictated by the use or purpose of the article

*****
In determining whether a design is primarily functional or
primarily ornamental the claimed design is viewed in its entirety,
for the ultimate question is not the functional or decorative
aspect of each separate feature, but the overall appearance of the
36
article, in determining whether the claimed design is dictated by
the utilitarian purpose of the article.

L.A. Gear, 988 F.2d at 1123 (Fed. Cir. 1993) (emphasis added; internal citations
omitted). Thus, whether a design is primarily functional requires consideration
of whether the claimed design is dictated by a utilitarian purpose or functional
considerations. See PHG Techs., 469 F.3d at 1366; Rosco, 304 F.3d at 1378; Avia
Group Intl., Inc. v. L.A. Gear Cal., Inc., 853 F.2d 1557, 1563 (Fed Cir. 1988).
2. The district court erred by failing to determine whether the 183
patent design was dictated by function

Despite the fact that the 183 design patent depicts a slipper-sock which, as
an article of footwear, inherently creates a particular visual impression and has
important ornamental aspects, the district court summarily concluded there is little
doubt that all major characteristics of this slipper are functional, A17; see also
A10-11; A18-19. In reaching this conclusion, the district court misunderstood the
applicable law of functionality.
By definition, a design patent covers the ornamental design of a useful (i.e.,
functional) article and thus the features at issue are often primarily functional.
The prohibition on functionality of a design patent does not mean that the design
cannot contain functional elements. See, e.g., Avia Group, 853 F.2d at 1563
(stating that a distinction exists between the functionality of an article or features
thereof and the functionality of the particular design of such article or features
37
thereof that perform a function. Were that not true, it would not be possible to
obtain a design patent on a utilitarian article of manufacture). Indeed, the district
courts application of the primarily functional test would destroy the validity of
countless design patents.
The district court stated that when a design patents primary features are
functional rather than ornamental, it may be declared invalid citing PHG Techs.,
469 F.3d at 1366 (emphasis added). However, this Courts PHG decision states
[t]he design of a useful article is deemed to be functional when the appearance of
the claimed design is dictated by the use or purpose of the article. 469 F.3d at
1366 (internal citations omitted).Critically, the district court never found that the
183 design was dictated by function and the district court even acknowledged
that at least the fuzz extending out of the slipper-sock was ornamental.
This Courts PHG decision identifies various factors to consider in
determining whether the overall appearance of an article is dictated by function.
These include (1) whether the protected design represents the best design, (2)
whether alternative designs would adversely affect the utility of the article, (3)
whether advertising touts particular features of the design as having specific utility,
(4) whether there are concomitant utility patents, (5) whether there are elements in
the design not dictated by function, and especially (6) whether there are alternative
designs. PHG Techs., 469 F.3d at 1366 (quoting Berry Sterling Corp. v. Pescor
38
Plastics, Inc., 122 F.3d 1452, 1456 (Fed. Cir. 1997)). With respect to factor (6) in
particular, [w]hen there are several ways to achieve the function of an article of
manufacture, the design of the article is more likely to serve a primarily
ornamental purpose. PHG Techs.,469 F.3d at 1367 (quoting Rosco, 304 F.3d at
1378). Not one of these factors is discussed in the district courts decision. It thus
appears that the district court failed to recognize that it was required to determine
whether the 183 design patent was dictated by function before it could find the
patent invalid on this basis. For all of the above reasons, the district court
committed reversible legal error in its functionality analysis.
3. The 183 patent design is ornamental and not dictated by
function

Many of the PHG factors strongly support the conclusion that the 183
design patent is ornamental. For example, alternative designs would not adversely
affect the utility of the article, there are no concomitant utility patents covering the
slipper-sock embodied in the 183 design patent, many elements of the 183 design
patent are not dictated by function, and there are alternative designs that could
accomplish the goals of comfortably and warmly covering the foot. As just one
example, the Woolrich catalog excerpts attached to High Points motion for
summary judgment depict numerous different slippers and shoes all designed to
comfortably and warmly cover the foot. A205-06; A209-10; A221-22; A225-26;
A229-30; A233-34. Similarly, a number of the prior art patents of record during
39
prosecution of the 183 design patent show other designs of slippers designed to
comfortably and warmly cover the foot. A417; A420; A422; A425; A427-29.
9

Finally, and as previously pointed out, it defies common sense to state that
the overall appearance of any footwear article does not have an important
ornamental aspect to it.
10
BDI offered unrebutted testimony from Mr. Rake that
while a slipper must conform to a human foot, the foot only determines minimum
size and shape. A462. For example, the size, shape, and design of the foot
opening can vary substantially and still perform the necessary functions. Id.
Similarly, seams and stitch pattern placement and design perform a function, but
their placement and design can vary considerably and have a significant effect on
the overall appearance of the product. Id. In fact, there is no evidence in the
present record that the 183 design patent is dictated by function. Viewing the
evidence in the light most favorable to BDI, there can be no question that the 183
design patent is not dictated by function.
For all of the above reasons, the district court committed clear error in
determining that the 183 design patent is functional, and its holding of invalidity

9
The record further indicates that there may be thousands of design patents on
slippers. A339, footnote 2.
10
Indeed, the importance of the ornamental appearance of footwear is reinforced
by this Courts numerous decisions addressing design patents on footwear. See,
e.g., Crocs, Inc. v. Intl Trade Commn, 598 F.3d 1294 (Fed. Cir. 2010); Int'l
Seaway, 589 F.3d 1233; Reebok Intl, Ltd. v. J . Baker, Inc., 32 F.3d 1552 (Fed. Cir.
1994); Payless Shoesource, Inc. v. Reebok Intl, Ltd., 998 F.2d 985 (Fed. Cir.
1993); Avia Group, Inc., 853 F.2d 1557.
40
on this basis must also be reversed.
I I I . The District Court Abused its Discretion in Dismissing BDI s Trade
Dress Claim with Prejudice

The district court dismissed BDIs trade dress infringement claim with
prejudice even though substantial discovery remained to be taken, no prejudice
was found to High Point, and BDI offered an amended complaint within 30 days of
High Points motion. A339-40; A360-61; A431-50; see particularly A437
(specifying at least six elements of trade dress in the SNOOZIES!
slipper-socks).
High Points motion was also granted despite the district courts agreement that
High Points products shared some of the characteristics alleged to be
SNOOZIES!
trade dress. A22. Nonetheless, the district court dismissed BDIs

trade dress infringement claim with prejudice, finding that the allegations pled in
BDIs original counterclaim were insufficient to state a cause of action and that it
was not inclined to permit amendment of the pleadings at this stage of the
litigation. A22. The dismissal with prejudice was improper and an abuse of
discretion.
BDI proposed and submitted an amended counterclaim as an exhibit to its
opposition to High Points Rule 12(c) motion. A361; A437-39; A448-49. The
proposed amended counterclaim alleged additional details with respect to
SNOOZIES!
trade dress (A437), some of which the district court found to be

embodied in the accused products (A22). This request was treated as a motion for
41
leave to amend. A22. BDI had not previously amended its counterclaims, and
leave to amend is to be liberally granted. See Fed. R. Civ. P. 15(a)(2). See also
Ideal Steel, 652 F.3d at 325 (stating that [p]rior to trial, after the time to amend as
of right has passed, [t]he court should freely give leave [to amend] when justice so
requires.) (interpolation in original) (citing Rachman Bag Co. v. Liberty Mut. Ins.
Co., 46 F.3d 230, 234-35 (2d Cir. 1995)). Indeed, the March 16, 2012 deadline for
amending pleadings in the case had passed only four days before High Point filed
its Rule 12(c) motion on March 20, 2012. A646-50; A68-69.
Under well settled Second Circuit law, it is improper for a district court to
dismiss a complaint [or counterclaim] with prejudice for failure to state a claim
without giving the plaintiff notice and an opportunity to be heard and to offer an
amended pleading. Hughes v. Anderson, 449 Fed. Appx. 49, 51 (2d Cir. 2011)
(non-precedential) (interpolation added) (citing Perez v. Ortiz, 849 F.2d 793, 797
(2d Cir. 1988)); A690-91. The Second Circuit has denied leave to amend only in
circumstances that are inapplicable to this case, e.g., futility, undue prejudice, or
delay of the courts schedule. See, e.g., McCarthy v. Dun & Bradstreet Corp., 482
F.3d 184, 200-01 (2d Cir. 2007).
High Point did not raise any issues regarding the specificity of BDIs trade
dress counterclaim until four days after the March 16, 2012 deadline to amend the
pleadings. Under the circumstances presented here, when a Rule 15(a) motion for
42
leave to amend is filed in response to a dispositive motion under Rule 12(b) or
12(c) based solely on the pleadings, the motion for leave to amend will be granted
unless the amendment would be futile. E*Trade Fin. Corp. v. Deutsche Bank
AG, 420 F. Supp. 2d 273, 283 (S.D.N.Y. 2006) (citations omitted). As to this
point, the amendment to the trade dress counterclaim would not have been futile as
the district court itself noted that SNOOZIES!
trade dress shared characteristics

with the accused products. A22.
Moreover, granting BDIs requested leave to amend would not have resulted
in undue prejudice, or delay of the district courts schedule. First, High Point was
on notice of the trade dress claim and the accused products from the filing of the
original counterclaim. Accordingly, there would have been no prejudice in
defending against the claim. Second, the amendment would not have caused delay
of the district courts schedule as there was sufficient time remaining in discovery
to serve and obtain responses to discovery regarding trade dress. Furthermore,
High Point itself had requested that the court extend the discovery dates prior to
the courts ruling on High Points motion for summary judgment. In contrast, the
dismissal with prejudice severely impairs BDI. For all of the above reasons, the
district courts extraordinary step of dismissing BDIs counterclaim with prejudice
constituted an abuse of discretion and should be reversed.

43
CONCLUSI ON
For the foregoing reasons, BDI asks that this Court reverse the district
courts judgment that design patent D598,183 is invalid and reverse the district
courts dismissal of BDIs trade dress infringement claim with prejudice.
Respectfully submitted,
BUYERS DIRECT, INC.

Dated: October 11, 2012 /s/ Andrew M. Ollis
Andrew M. Ollis
OBLON, SPIVAK, McCLELLAND,

1940 Duke Street
Alexandria, Virginia 22314
Attorney for Appellant

CERTI FI CATE OF COMPLI ANCE WI TH FED. R. APP. P. 32(a)(7)(B)
Counsel for Buyers Direct, Inc. certifies that the body of this brief,
beginning with the Statement of Related Cases on page 1 and ending with the
last line of the Conclusion on page 43, contains 8667 words, in compliance with
Rule 32(a)(7)(B)(i) of the Federal Rules of Appellate Procedure.

October 11, 2012 /s/ Andrew M. Ollis
Andrew M. Ollis
Counsel for Buyers Direct, Inc.

ADDENDUM
A 1
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
------------------------------------------------------------X
Plaintiff,
-against-
BUYER'S DIRECT, INC.,
Defendant.
------------------------------------------------------------X
Counterclaim Plaintiff/
Third Party Plaintiff,
-against-
MEIJER, INC., SEARS HOLDINGS
CORPORATION, AND WAL-MARTS
STORES, INC.,
Third Party Defendants.
-------------------------------------------------------------X
11 CIVIL 4530 (KBF)
JUDGMENT
USOCSONY
DOCUMENT
ELECfRONICALLY FILED
DOC 1: ,, ... -..r
DATE FILED: ~ ' " I t ~
Plaintiff and third party defendants (collectively referred to herein as "Movants") having
moved for summary judgment, Movants contend that Buyer's Direct's design for fuzzy slippers is
invalid as a matter oflaw-i.e .. that the design is both obvious and merely functional, and separately,
Movants having moved for judgment on the pleadings as to Buyer's Direct's trade dress
counterclaim, and the matter having come before the Honorable Katherine B. Forrest, United States
District Judge, and the Court, on May 15, 2012, having rendered its Memorandum and Order
granting plaintiffs and third party defendants' motion for summary judgment as to invalidity;
granting plaintiff's and third party defendants' motion for judgment on the pleadings with respect
to defendant's trade dress claim, and directing the Clerk of the Court to enter judgment in favor of
plaintiff High Point Design LLC and third party defendants Meijer, Inc., Sears Holdings
Corporation, and Wal-Mart Stores, Inc. Declaring the '183 patent invalid and thus, not infringed by
High Point Design LLC or Meijer, Inc., sears Holdings Corporation, and Wal-Mart Stores, Inc., it
A 2
is,
ORDERED, ADJUDGED AND DECREED: That for the reasons stated in the
Court's Memorandum and Order dated May 15, 2012, plaintiffs and third party defendants' motion
for summary judgment as to the invalidity is granted; plaintiffs and third party defendants' motion
for judgment on the pleadings with respect to defendant's trade dress claim is also granted, and
judgment is hereby entered in favor of plaintiff High Point design LLC and third party defendants'
Meijer, Inc., Sears Holdings Corporation, and Wal-Mart stores, Inc. Declaring the '183 patent
invalid and thus, not infringed by High Point Design LLC or Meijer, Inc., Sears Holdings
Corporation, and Wal-Mart Stores, Inc.
Dated: New York, New York
May 16,2012
RUBY J. KRAJICK
B
TI fJS DOCUMENT WAS ENTERED
ONTHEDOCKETON ______ __
Case 1:11-cv-04530-KBF Document 48-1 Filed 05/16/12 Page 1 of 5
A 3
...
United States Disbict urt
Southern District of New ork
Office of the Cleek
U.S. Courthouse
SOO Pearl Street, New York, N.Y. 0007-1213
Date:
InRe:
Case#:
Dear Litigant,
Enclosed is' a copy of the judgment entered in your case.
Your.attention is directed to Rule 4(a)(l) of the F
requires 1ha.t if you wish to appeal the judgment in yom case, you
oftbe date of eil.1ry of the judgment (60 days if the United States
is a party).
-v-
( )
Rules of Appellate Procedure, which
ust file a notice of appeal within 30 days
an officer or agency of the United States
If you wish to appeal the judgment but for any reason Y' are unable to file your notice of appeal
within the required time, you may make a motion for an extensi of time in accordance with the provision
of Fed. ll App. P. 4(a)(5). That rule requires you to show "exc le neglect" or "good cause" for your
failure to file your notice of appeal within the time allowed. Any h motion must first be serVed upon the
other patties and then filed with the Pro Se Office no later 60.days from the date of entry of the
judgm.ent (90 days if the United States or an officer or agency o the United States is a party).
The enclosed Forms 1, 2 and 3 cover some common si
them if appropriate to your circl.JJI1Stimces.
The Filing fee for a notice of appeal is $5.00 and the
the "Clerk of the Court, USDC, SDNY" by certified check, m
aecepted.
APPEAL FORKS
U.S.D.C. S.D.N.Y. CMIECF Support Unit
11ate docketing fee is $450.00 payable to
order or cash. No personal checks are
. . -
, Deputy Clerk
Revised: May4, 2010
A 4
United States District C urt
Offiee of the Clerk
U.S. Courthouse
500 Pearl Street, New York, N.Y. 0007-1213
__________ ..... ----------X
I
I
I
-"- I
I
I
l
-------------------------X
I NOTICE OF APPEAL
I
I
civ. ( )
Notice is hereby given that ---------+-------------
(party)
hereby to the United States Court of Appeals for the d Circuit from the Judgment [ desenoe it]
entered in this action on the ---- day of ------1---
(day) (mo ) (year)
(Signature)
(Address)
(City, State and Zip Code)
Date:---------
(
(Telephone Number)
Note: You may use this form to take an appeal provided that it received by the office of the Clerk of the
District Court within 30 days of the date on which the judgment was entered ( 60 days if the United States
or an officer or agency of the United States is a party).
APJ?EAL f01!MS
IT!::: nc. S.D.N.Y. CM/ECF'SUDDort Unit 7.
A 5
FORM 1
United States District Ct urt
Office of the Clerk
U.S. Courthouse
500 Pearl Street, New York, N.Y. 0007-1213
______________________ ;_ _____________ X I
:
I TO A NOTICE OF APPEAL
-V- I
I
1 civ. ( )
I
---------------------------X
Pursuant to Fed. R. App. P. 4(a)(5), _____ _,If--------- respectfully
(party)
(party)
_ __,1-------- but failed to file a
requests leave to file the wjtl:rin notice of appeal out of time.
desires to appeal the judgment in this action entered on
notice of appeal within the required number of days because:
(day)
[Expla:in here the "excusable neglect'' or "good cause" which led to Y' fitilure to file a notice of appeal witlrin the
required number of days.]
(Signature)
(Address)
Date:--------
(
} ______ _
I (Telephone Nmnber)
1 .
. You may u8e this :form, together with a copy of Form 1, . you are seeking to appeal a judgment and
did not file a copy of Form 1 within the required time. If you llow this procedure, these forms must be
received in the office of the Clerk of the District Court no later 60 days of the date which the judgment
was entered{90 days if the United States or an officer or agen of the United States is a party).
APl?BAI.o FORMS
U.S.D.C. S.D.N.Y. CM/BCF Support Unit 3 R-evised: May 4. 2010
A 6
r
'I; ,.
Court will receive it within the 30 days of the dare on

FORM 3
United States District
Southern District of New York

-V-
Office of the Clerk
u.s. Courthouse
500 Pearl Street, New York, N.Y.
------X
I
I
I
I
I
I
I
------------------------------X
AFFIRMATION OF SERVICE
I civ. ( )
I,---------------' penalty of perjury that I have

upon

Date:-----------
NewYorlc, NewYodc
APPEAL FQRMS
U.SD.C. S.D.N.Y. CMIECF 'Support Unit 5
(Signature)
(Address}
Revised: May4, 2010
A 7
..
. .
'
United States District Co
Office of the Clerk
U.S. Courthouse
SOO Pearl Street, NeW York, N . Y ~ 1 -1213
------------ ---
X
I
I
OTICE OF APPEAL
-----------
-V-
I
I
I
AND
FOREXTENSIONOFTJME
I
I
----------------------------X
( )
l. Notice is hereby given that ----------1------- hereby appeals to
(party)
the United States Court of Appeals for the Second Circuit :from e judgment entered on ------
[Give a description of the jud ent]
2. In the event that this form was not received in the Clerk office within the required time
- - - - - - ~ - - - - - - respectfully requests comt to grant an extension of time in
(party}
accordance with Fed. R App. P. 4(a)(5).
a.
In support of this request, -------+--------- states that
(party)
this Court's judgment was received on ---------1--- and that 1his form was mailed to the
(date)
comton --------
(date)
(Signature)
(Address)
Date:-------
( )
(Telephone Number)
Note: You may use this form if you are mailing your notice oi appeal and are not sme the Clerk of the
APP.Jii:AL PORMS
U.S.D.C. S.D.N.Y. CMIBCF Support Unit 4 Revised: May 4, 2010
Case 1:11-cv-04530-KBF Document 47 Filed 05/15/12 Page 1 of 16
A 8
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
-----------------------------------X
Plaintiff,
-v-
Defendant.
----- -----X
Counterclaim Plaintiff/
Third Party Plaintiff,
-v-
Counterclaim Defendant,
MEIJER, INC., SEARS HOLDINGS
CORPORATION, AND WAL-MART STORES,
INC. I
Third Party Defendants.
-----------------------------------X
KATHERINE B. FORREST, District Judge:
USDCSDNY
DOCUMENT
ELECTRONICALLY FILED
DOC#:

11 Civ. 4530 (KBF)
MEMORANDUM & ORDER
This is a case about whether a design patent for fuzzy
slippers is valid and enforceable--and therefore whether
plaintiff High Point Design LLC ("High Point") and third party
defendants Meijer, Inc., Sears Holding Corporation, and Wal-Mart
Stores, Inc. (the "third party defendants") may be held liable
1
A 9
for infringement. As set forth below, the answer to both
questions is "no."
On July 1, 2011, High Point brought a two-count action
against defendant Buyer's Direct, Inc. ("Buyer's Direct") for
declarations that High Point's particular version of fuzzy
slippers do not infringe the design patent owned by defendants
and that such patent is, in any event, invalid and
unenforceable. (Dkt. No. 1.) Buyer's Direct responded with a
two-count counterclaim for patent and trade dress infringement,
and joined as third party defendants three retailers--Meijer,
Inc., Sears Holdings Corporation and Wal-Mart Stores, Inc.--to
(and through) whom plaintiff is alleged to sell its slippers
(Dkt. No. 13.}
After a period of discovery, plaintiff and third party
defendants (collectively referred to herein as "Movants"} have
now moved for summary judgment. Movants contend that Buyer's
Direct's design for fuzzy slippers is invalid as a matter of
law--i.e., that the design is both obvious and merely
functional. Separately, Movants seek judgment on the pleadings
as to Buyer's Direct's trade dress counterclaim.
This Court has carefully examined Buyer's Direct's patent--
Patent No. D598,183S (the "'183 patent"}--and finds that it is
both obvious as against the prior art--at the end of the day it
is a rather run-of-the-mill fuzzy slipper--and in all events,
2
A 10
its features are merely functional. The face of the patent
itself leaves no doubt that there is nothing ornamental about
the slippers.
Accordingly, plaintiff and third-party defendants' motion
for summary judgment is GRANTED.
In addition, this Court finds that defendant
1
S counterclaim
and third party claim for trade dress infringement is conclusory
and fails to meet the minimal requirements for claims of this
sort. Given the late stage of these proceedings, this Court
dismisses that claim with prejudice.
On the basis that Buyer's Direct's other counterclaim is
for a declaration of infringement of the '183 patent by High
Point and the Court finds the '183 patent invalid, Buyer's
Direct's remaining counterclaim is rendered moot. This action
is therefore dismissed in its entirety.
I. FACTS
No one can seriously doubt that slippers with an opening
for a foot that contain a fuzzy (fleece} lining and have a
smooth outer surface have been around for years. Indeed, the
Court assumes that many readers of this opinion have had the
experience of having placed their own foot in such a slipper.
Nevertheless, in January 2009, Buyer's Direct applied for a
design patent that appears to look like many slippers that are
widely available. The Patent and Trademark Office ("PTO"},
3
A 11
perhaps not being as familiar with slippers as some, saw fit to
issue the patent on August 18, 2009, as Patent No. 0598,1838.
The '183 patent references nine pieces of prior art dating back
to 1942. That comparatively limited list of prior art is itself
somewhat surprising given how ubiquitous similar fuzzy slippers
are in retail stores. It is suggestive of an absence by slipper
manufacturers of a need or desire for exclusive design rights/
or an assumption that such exclusivity could not reasonably be
sought
1
let alone obtained, given the similarity and
proliferation of many designs.
The '183 patent is unremarkably entitled "slipper." It
consists of a single claim: "The ornamental design for a
slipper/ as shown and described." The slipper shown has a
smooth exterior with a fuzzy interior. To the ordinary observer
{about which more shall be said in a moment), it looks like many
slippers that I purchased and wore throughout my youth some time
ago--and certainly before 2009. Put another way, and as
discussed further below, there does not appear to be anything
ornamental about the design shown in the '183 patent at all.
1
Among the individuals deposed in this action was Richard
Brayton/ President of Woolrich/ Inc., the consumer apparel
1
As discussed below, the critical legal basis for disposing of this matter
rests not on the Court's anecdotal memories and assumptions of common sense
obviousness, but rather on the facts relating to prior art available in the
marketplace prior to the time that Buyer's Direct even applied for the '183
patent.
4
A 12
company. See Decl. of Jeffrey M. Kaden ("Kaden Decl.
11
) (Dkt.
No. 34) Ex. 8 (Braden Dep. Tr.) .) Brayton testified that
Woolrich had two slippers that Woolrich began to market in the
United States in 2006 and that bear striking similarities to the
design of the '183 Patent: Woolrich's "Penta
11
and "Laurel Hill/1
slippers. Woolrich's Penta slipper was marked at Exhibit 7A to
Brayton's deposition and he identified it as a slipper that his
company had designed in 2004 and had been selling to the public
since 2005. (The Court returns below to the fact that this
Penta slipper looks indistinguishable from the drawing shown in
the '183 Patent.)
Brayton's testimony was confirmed by his authentication of
advertisements for sale for the Penta slipper in at least two
2006 Woolrich catalogues (Kaden Decl. Exs. 10, 11 (also marked
as Brayton Dep. Exs. 6, 8)), the catalogue price is denominated
in u.s. dollars and bears a mailing address to an individual in
New York State, making clear (as Brayton so testified) that the
slipper was offered for sale in the United States since that
time. Brayton confirmed U.S. sales in his deposition testimony.
In addition, Brayton testified that Woolrich continued to
advertise and sell the Penta slipper in catalogues throughout
2007 (Kaden Decl. Exs. 13-16 (marked as Brayton Dep. Exs. 9, 11-
13)), and that the Penta was also offered for sale in 2008 and
2009.
5
A 13
The Penta slipper was joined by another fuzzy slipper that
woolrich designed in 2006 and started to sell in 2007 called the
"Laurel Hill" slipper. Brayton identified the Laurel Hill
slipper as Exhibit 10-A at his deposition. That slipper again,
while having certain differences with the Penta slipper that are
insubstantial and might be referred to as streamlining,
nonetheless has the precise look that an ordinary observer would
think of as a physical embodiment of the drawings shown on the
'183 Patent. Brayton testified that but for some minor changes,
the slippers are in fact the same. (Kaden Oecl. Ex. 8 at 57 ("I
would say it's essentially the same slipper.").)
After 2007, the Laurel Hill slipper became part of a line
of footwear sold by the Sierra Trading Post and that it is
currently for sale through that line and retailer.
Among the prior art cited in the '183 patent are U.S.
Patent Nos. 0566,934 and 0540,517. (Kaden Oecl. Exs. 17-18.)
Each of those design patents depicts slippers with a pattern of
small dots on the bottom surface.
High Point does not make a slipper that so closely
resembles the drawings shown on the face of the '183 patent as
the Penta and Laurel Hill slippers. High Point's slipper is
marketed commercially under the name "JAQUES MORET Fuzzy Babba
Slipper Socks."
(Kaden Oecl. Ex. 19.) A photograph of that
slipper shows a slipper that quickly stands out due to its
6
A 14
large, colorful round "dots,, or "balls
11
that are imprinted on
the top and bottom surfaces of the slipper. ( Id. ) An ordinary
observer would describe it as looking "floppy
11
--hence, the
unsurprising description of it as a "Slipper Sock.
11
High Point
does not contest that it sells its slipper commercially in the
United States.
Third party defendants do not contest that they sell High
Point,s slipper, and thus, they join in each of High Point,s
arguments regarding the '183 patent invalidity.
In terms of its trade dress claim, Buyer,s Direct asserts
that the slippers sold via the '183 patent, sold under the
commercial name "Snoozies,
11
"have a distinctive and recognizable
overall look and feel that constitutes protectable trade d r e s s . ~ ~
(Countercl. (Dkt. No. 13) ~ ~ 25-26.) Buyer,s Direct also
contends that Snoozies have acquired secondary meaning in the
marketplace and that the trade dress is non-functional and
ornamental. (Id. ~ ~ 27-28.)
DISCUSSION
I. STANDARD OF REVIEW
In reviewing a motion for summary judgment, this Court must
determine whether there are material disputes of fact that must
be resolved by a trier of fact. See Celotex Corp. v. Catrett,
477 U.S. 317, 327 (1986). If the party opposing a summary
judgment motion does not raise a triable issue of fact, the
7
A 15
movant is entitled to judgment as a matter of law. Fed. R. Civ.
P. 56; Celotex, 477 u.s. at 324. The Court must construe the
facts and draw all reasonable inferences in favor of the non-
moving party. McClellan v. Smith, 439 F.3d 137, 144 (2d Cir.
2006}. To demonstrate the existence of a material, disputed
issue of fact, the non-movant must do more than rely upon
conclusory allegations or speculation--i.e., it "must offer some
hard evidence showing that its version of events is not wholly
fanciful." D'Amico v. City of New York, 132 F.3d 145, 149 (2d
Cir. 1998}. "If the evidence is merely colorable, or is not
significantly probative, summary judgment may be granted."
Anderson v. Liberty Lobby, Inc., 477 u.s. 242, 249-50 (1986}.
II. RELEVANT PATENT LAW PRINCIPLES
A. Presumption of Validity
The patent laws provide that a design patent may be granted
for "any new, original, and ornamental design for an article of
manufacture." 35 U.S.C. 171. As with any patent, once it has
been issued, a design patent carries a presumption of validity
that can generally only be overcome only by a showing of clear
and convincing evidence. 35 u.s.c. 282; Microsoft v. i4i
Ltd. P'ship, 131 S. Ct. 2238, 2245 (2011}. However, if at the
time that the PTO was reviewing a patent application, it did not
have before it certain prior art (which, as discussed below, was
the case here with respect to the Woolrich slippers}, its
8
A 16
judgment may lose significant force and a challenger's burden
may be easier to sustain. i4i Ltd. P'ship, 131 S. Ct. at 2251.
B. Obviousness
One defense to patent validity is that the patent "would
have been obvious at the time the invention was made to a person
having ordinary skill in the art.'' 35 U.S. C. 103 {a) . There
is no exception to that rule for design patents. Titan Tire
Corp. v. Case New Holland, Inc., 566 F.3d 1372, 1384 {Fed. Cir.
2009).
Whether or not an invention is "obvious
11
is a question of
law. See Crocs, Inc. v. Int'l Trade Commission, 598 F.3d 1294,
1308 {Fed. Cir. 2010). In order to make this determination,
courts ask four questions: {1) the scope and content of prior
art; (2) the level or ordinary skill in the art; (3) the
differences between the prior art and the claimed invention; and
(4) the extent of any objective indicia of non-obviousness.
Id.; see also Advanced Design Display Systems, Inc. v. Kent
State University, 212 F.3d 1272, 1284-85 (Fed. Cir. 2000).
In the context of design patents, the Federal Circuit has
held that the inquiry is whether one skilled in the prior art
would have combined the teachings of that art "to create the
same overall visual appearance.
11
Durling v. Spectrum Furniture
Co., Inc., 101 F.3d 100 (Fed. Cir. 1996), distinguished on other
grounds by Egyptian Goddess, Inc. v. Swisa, 543 F.3d 665, 679
9
A 17
{Fed. Cir. 2008). To undertake that inquiry, the Federal
Circuit has outlined a two-step process. First, the Court must
find a "primary reference"--that is, something in existence, the
design characteristics of which are basically the same as the
claimed design." Durling, 101 F.3d at 103. Second, after that
primary reference has been located, additional references may be
used "to modify it to create a design that has the same overall
visual appearance of the claimed design." Id. Once the court
has undertaken that comparison, then it must undertake the
"ordinary observer test/ not the view of one skilled in the
art." Titan Tire Corp., 566 F.3d at 1381-82.
The ordinary observer test for obviousness is that same as
that for patent infringement: they are flip sides of one
another. See Egyptian Goddess/ Inc.
1
543 F.3d at 678. That
test asks whether an ordinary observer, familiar with the prior
art
1
would be deceived into thinking that the accused design was
the same as the patented design. See id. at 677-78.
Movants assert that the Woolrich Penta and Lauren Hill
slippers constitute marketplace prior art that this Court should
consider as the primary reference against which the obviousness
of the '183 patent is measured. They also note that those two
slippers were not before the PTO at the time that it was
considering the defendant
1
S application of the '183 patent.
Accordingly, this Court can take that fact into consideration
10
A 18
when determining how much deference the PTO's decision should be
given. See i4i Ltd. P'ship, 131 S. Ct. at 2252.
The overall visual effect created by the Woolrich prior art
is the same overall visual effect created by the '183 patent.
To an ordinary observer, they are the same slippers. The only
difference between the slippers relates to the sole of the
slippers, which is quite minor in the context of the overall
slipper. Even if, however, this Court were to find that the
differences in the sole design were of any note, the design of
the dots on the '183 patent are anticipated by the dots on the
two design patents that were before the PTO during the
prosecution of the patent: D566
1
934 and D540
1
517.
Since both of those design patents were noted on the face
of the '183 patent, and since both relate to slippers, they
would have been available to a slipper designer skilled in the
art--and would have easily suggested the addition of "dots" to
the sole of a slipper. Combining the dots shown on those two
design patents with the prior art in the Woolrich slipper would
have been obvious to any designer. That combination would have
created a slipper with a virtually identical visual impression
as Buyer's Direct's '183 patent.
C. The '183 Patent is Primarily Functional
Design patents only protect ornamental features--not
functional aspects of an invention. OddzOn Prods. v. Just Toys,
11
A 19
Inc., 122 F.3d 1396, 1405 {Fed. Cir. 1997). When a design
patent's primary features are functional rather than ornamental,
it may be declared invalid. See, e.g., PHG Techs., LLC. V. St.
John Cos., Inc., 469 F.3d 1361, 1366 (Fed. Cir. 2006).
A review of the drawings on the face of the '183 patent as
well as a review of the physical slipper attached as Exhibit 2
to the Declaration of David A. Boag ("Boag Decl.") (Dkt. No. 38)
leaves little doubt that all major characteristics of this
slipper are functional. It is a slipper that completely covers
the foot; that is a functional design to provide complete foot
warmth and protection. That's the primary function of
innumerable slippers. The slipper at issue has a fuzzy interior
for comfort--again, a functional characteristic that many
slippers share. The fuzz overflows can be characterized as
"ornamental," but can also be characterized as functional--i.e.,
as providing an extra element of comfort. It certainly cannot
be said that the slipper shown in the '183 patent drawings is
"primarily ornamental." It is therefore invalid for that reason
as well. See Arminak & Assoc., Inc. v. Saint-Gobain Calmar,
Inc., 501 F.3d 1314, 1319 (Fed. Cir. 2007), cert. denied, 553
u.s. 1102 (2008) .
2
2
Upon close inspection, it might be the case that the particular arrangement
of the non-skid dots on the sole of Buyer's Direct's slipper could be
considered "ornamental"--though since those are typically used while walking
and not seen, it is analytically hard to get one's head around an ornamental
design whose potentially unique look is most apparent to the floor.
12
A 20
D. The Expert Opinion and Consideration of the Prior Art
Buyer's Direct has submitted a declaration from Lance Rake
(Dkt. No. 39), a proposed expert in industrial design, as
supportive of its claim that there are sufficient differences
between the Woolrich prior art and the '183 Patent to defeat the
obviousness test. In the context of the \\ordinary observer"
test, the Court is not concerned with whether an expert could
find differences, but rather whether an ordinary observer would
find substantial similarity.
As the Supreme Court stated more than one hundred years
ago, \\To constitute infringement of a patent for a design, it is
not essential that the appearance should be the same in the eye
of the expert. The test of a patent for a design is the eye of
an ordinary observer . . .
II
Gorham Co. v. White, 81 U.S. 511,
527 (1871) . Specifically regarding differences pointed out by
an expert/ the Court said that if that was always required
\\there never could be piracy of a patented design/ for human
ingenuity has never produced a design
1
in all its details
1
exactly like another, so like, that an expert could not
distinguish them." Id. Thus, Mr. Rake's declaration does not
get Buyer's Direct over the hurdle of the ordinary observer
test.
13
A 21
III. THE TRADE DRESS CLAIM
Movants also seek to dismiss Buyer's Direct's trade dress
claim under Fed. R. Civ. P. 12(c). Motions under Rule 12(c) of
the Federal Rules of Civil Procedure are analyzed similarly to
motions brought under Rule 12(b) (6). Nogbou v. Mayrose, 400 F.
Appx. 617, 619 (2d Cir. 2010) (summ. order); Patel v.
Contemporary Classics of Beverly Hills, 259 F.3d 123, 126 (2d
Cir. 2001). Accordingly, this Court assumes the truth of the
allegations in the counterclaim, draws all inferences in favor
of the counterclaimant, and seeks to determine whether the
allegations state a plausible claim. Patel, 259 F.3d at 126.
Movants' primary assertion, with which this Court agrees,
is that in order to state a claim for trade dress infringement,
a plaintiff must the specific characteristics and scope of the
trade dress at issue. See Sherwood 48 Assoc. v. Sony Corp. of
Am., 76 Fed. Appx. 389, 391 (2d Cir. 2003). Buyer's Direct has
failed to do so. Mere conclusory reliance on the overall look
of a product is insufficient to meet that requirement. Nat'l
Lighting Co., Inc. v. Bridge Metal Indus., LLC, 601 F. Supp. 2d
556, 562 (S.D.N.Y. 2009).
Buyer's Direct's sole allegation in support of the
characteristics and scope of its allegedly distinctive trade
dress is that the slippers "have a distinctive, immediately
recognizable overall look and feel that constitutes protectable
14
A 22
trade dress." (Countercl. ~ 2 5 ; Third-party Compl. ~ 44.) As
set forth above, that is inadequate as a matter of law.
While the Court notes that there are some trade dress
characteristics shared between High Point's slipper and the
embodiments provided to the Court (Boag Decl. Exs. 2-3), that
does not eliminate the pleading deficiency. At this stage of
the litigation, the Court is unwilling to entertain an amendment
to the pleadings and therefore dismisses this claim with
prejudice.
CONCLUSION
For the aforementioned reasons, plaintiff's and third party
defendants' motion for summary judgment as to invalidity is
GRANTED; plaintiff's and third-party defendants' motion for
judgment on the pleadings with respect to defendant's trade
dress claim is also GRANTED.
The Clerk of the Court is directed to terminate the motion
at Docket No. 31 and to terminate this action.
The Clerk of the Court is further directed to enter a
judgment in favor of plaintiff High Point Design LLC and third
party defendants Meijer, Inc., Sears Holdings Corporation, and
Wal-Mart Stores, Inc. declaring the '183 patent invalid and
15
A 23
thus, not infringed by High Point Design LLC or Meijer, Inc.,
Sears Holdings Corporation, and Wal-Mart Stores, Inc.
SO ORDERED:
Dated: New Y ~ k , New York
May _(.S_, 2012
KATHERINE B. FORREST
United States District Judge
16

CERTI FI CATE OF SERVI CE
I hereby certify that the foregoing BRIEF FOR APPELLANT BUYERS
DIRECT, INC. was served by email (per agreement), this 11th day of October,
2012 on counsel for appellees High Point Design LLC as follows:

J effrey Mark Kaden, Esq.
Ariel Samuel Peikes, Esq.
Steven Stern, Esq.

GOTTLI EB RACKMAN &
REI SMAN, P.C.
270 Madison Avenue
8
th
Floor
New York, New York 10016

jkaden@grr.com
apeikes@grr.com
sstern@grr.com

Tel: (212) 684-3900
Fax: (212) 684-3999

By: /s/ Andrew M. Ollis

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2012-1455

slipper-socks have been hugely successful.

were first sold in September 2008, and by 2011, annual sales of

slipper-socks were in the millions of dollars. A340; A504, 5.

slipper-socks have continued to grow rapidly in 2012, are

marketing literature explains that SNOOZIES!

advertising touts the advantages of the slipper-socks, describing

slipper-socks. A504, 7-8. These products were distributed by

slipper-socks are a commercial embodiment protected by the

design had been copied. A33-37. Representative Figures 1 and 4

and the prior art,

was invalid based on prior art that

design than the Woolrich shoes are to the 183 patent

) was precisely the modification that this Court rejected in

slipper-socks in its reply brief (A513) and the

and the High Point slipper is striking. Copying

, a commercial embodiment of the 183 design patent, were

slipper-sock had sales of millions of dollars in 2011

, with sales two orders of magnitude lower ranging from

. A512; A522-23, 5-7 (see also

enticed High Point to copy SNOOZIES!

trade dress. A22. Nonetheless, the district court dismissed BDIs

trade dress (A437), some of which the district court found to be

trade dress shared characteristics

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