The Ordinary Designer Trumps The Ordinary Observer in High Point Design v. Buyer's Direct

September 12, 2013 – Firm News


The U.S. Court of Appeals for the Federal Circuit issued a precedential decision on September 11th relating to the test of obviousness for design patents in High Point Design v. Buyer’s Direct (No. 2012-1455). Oblon Spivak, counsel for Buyer’s Direct (BDI), succeeded in obtaining a reversal of the district court’s summary of judgment of invalidity of Buyer’s Direct design patent (U.S. Design Patent No. D598,183). In addition, the district court’s dismissal of Buyer’s Direct trade dress claim was vacated.

Before yesterdays’ decision, the Federal Circuit’s decision in International Seaway Trading Corp. v. Walgreens Corp. had led to uncertainty by suggesting that obviousness of a design patent is determined by an “ordinary observer” despite precedent holding that obviousness was determined from the viewpoint of an “ordinary designer.” Oblon Spivak partner Andy Ollis, who argued the appeal for BDI, explained “yesterday’s decision made clear that obviousness is assessed from the viewpoint of an ordinary designer and not from the viewpoint of an ordinary observer."

"By confirming that the “ordinary designer” test is applicable, Buyer’s Direct highly successful SNOOZIES® slippers, which are sold in at least 35 countries around the world, will continue to receive the patent protection to which they are entitled" according to Oblon Spivak partner Philippe Signore, who specializes in design patent law. As with several of its other recent opinions the Federal Circuit also reiterated the importance of addressing evidence of secondary considerations such as commercial success. Finally, the decision included a helpful summary of the law of functionality for design patents. The case will now be remanded to the district court where Buyer’s Direct will continue to pursue its claims against High Point Design.

Members of the Oblon Spivak team that successfully represented Buyer’s Direct in this matter include Andrew Ollis, Philippe Signore, Frank West, Lisa Mandrusiak, and Chris Ricciuti.

Assisting clients for over 40 years, Oblon Spivak is one of the largest intellectual property specialty firms in the United States. The firm provides a full range of intellectual property services and is the recognized leader in patent prosecution and post grant trials before the USPTO’s Patent Trial & Appeal Board. The firm also represents their clients in all forms of intellectual property litigation, including trademark, copyright and trade dress disputes.