D517789 et al.Download PDFPatent Trials and Appeals BoardSep 10, 201995002100 - (D) (P.T.A.B. Sep. 10, 2019) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 95/002,100 08/24/2012 D517789 2200929.00228 US1 2333 23483 7590 09/10/2019 WILMERHALE/BOSTON 60 STATE STREET BOSTON, MA 02109 EXAMINER PRATT, DEANNA L ART UNIT PAPER NUMBER 2911 MAIL DATE DELIVERY MODE 09/10/2019 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ U.S.A. DAWGS, INC. Requester, Respondent v. Patent of CROCS, INC. Patent Owner, Appellant ____________________ Appeal 2019-004306 Reexamination Control 95/002,100 Patent US D517,789 S1 Technology Center 2900 ____________________ Before JOHN C. KERINS, DANIEL S. SONG, and RAE LYNN P. GUEST, Administrative Patent Judges. SONG, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Patent Owner appeals under 35 U.S.C. §§ 134 and 315 (2002) from a Final Rejection of the claim of the ’789 Patent. We have jurisdiction under 35 U.S.C. §§ 134 and 315 (2002). 1 Issued March 28, 2006 to Scott Seamans (“the ’789 Patent”). Appeal 2019-004306 Reexamination Control 95/002,100 Patent US D517,789 S 2 We are informed that the ’789 Patent, and related Patent US 6,993,858 B2,2 were involved in proceeding In the Matter of Certain Foam Footwear, USITC Inv. No. 337-TA-567 (USITC), the decisions of the U.S. International Trade Commission having been appealed to the Court of Appeals for the Federal Circuit, which rendered its decision in Crocs, Inc. v. Int’l Trade Comm’n, 598 F.3d 1294 (Fed. Cir. 2010). Appeal Brief (“App. Br.”) 1–2. We are also informed that the ’789 Patent and the ’858 Patent are being asserted in Crocs, Inc. v. Effervescent, Inc. et al., Civ. No. 1:06-cv- 00605-PAB-KMT (D. Colo.). App. Br. 1–2. An oral hearing with the Patent Owner’s representative was held before the Patent Trial and Appeal Board on August 26, 2019. A transcript of the hearing will be entered into the electronic record in due course. In addition to the Appeal Brief, the Patent Owner also relies on a Rebuttal Brief (hereinafter “Reb. Br.”), declarations of Mr. Whatley, Mr. Seamans, Mr. Evard, Mr. Hall, Mr. Prats, and Mr. Butler, and various exhibits submitted therewith, in support of its appeal. The Requester relies on its Respondent Brief (“Resp. Br.”) and declarations of Mr. Tonkel and Mr. Butler, and various exhibits submitted therewith, in support of the Examiner’s findings and rejection. We REVERSE. THE ’789 PATENT The ’789 Patent is entitled “FOOTWEAR,” and claims an “ornamental design for footwear, as shown and described” in its seven 2 Issued to Scott Seamans on February 7, 2006 (“the ’858 Patent”). Appeal 2019-004306 Reexamination Control 95/002,100 Patent US D517,789 S 3 figures. ’789 Patent, Claim; Figs. 1–7. Figure 1 of the ’789 is reproduced below. Figure 1 of the ’789 Patent reproduced above shows a front perspective view of the claimed ornamental design for footwear. The ’789 Patent issued from Application No. 29/206,427, filed May 28, 3004, and has the following related U.S. application data: Continuation-in-part of application No. 10/803,569, filed on Mar. 17. 2004, which is a continuation-in-part of application No. 10/602,416, filed on Jun. 23, 2003, and a continuation-in- part of application No. 10/603,126, filed on Jun. 23, 2003. ’789 Patent, Related U.S. Application Data. Application No. 10/803,569 issued as US 7,146,751 B2 on December 12, 2006, application No. 10/602,416 was abandoned, and application No. 10/603,126 (“the ’126 Application”) issued as the ’858 Patent. Appeal 2019-004306 Reexamination Control 95/002,100 Patent US D517,789 S 4 ISSUES The following issues have been raised in the present appeal: 1. Whether the Examiner erred in finding that the ’789 patent is not entitled to the benefit of an earlier filing date of June 23, 2003. 2. Whether the Examiner erred in rejecting the claim of the ’789 Patent under 35 U.S.C. § 102, finding that “Figure 11” of Appendix UX anticipates the claimed design. FINDINGS OF FACT The record supports the following findings of fact (FF) by a preponderance of the evidence. 1. In addition to Figure 1 reproduced above, the ’789 Patent also includes the following figures: A. Figure 2 Figure 2 reproduced above shows a right side view of the claimed ornamental design for footwear. Appeal 2019-004306 Reexamination Control 95/002,100 Patent US D517,789 S 5 B. Figure 3 Figure 3 reproduced above shows a left side view of the claimed ornamental design for footwear. C. Figure 4 Figure 4 reproduced above shows a front view of the claimed ornamental design for footwear. Appeal 2019-004306 Reexamination Control 95/002,100 Patent US D517,789 S 6 D. Figure 5 Figure 5 reproduced above shows a rear view of the claimed ornamental design for footwear. E. Figure 6 Figure 6 shows a top view of the claimed ornamental design for footwear. Appeal 2019-004306 Reexamination Control 95/002,100 Patent US D517,789 S 7 F. Figure 7 Figure 7 shows a bottom view of the claimed ornamental design for footwear. Appeal 2019-004306 Reexamination Control 95/002,100 Patent US D517,789 S 8 2. “Figure 11” of Examiner’s Appendix UX is reproduced below: Figure 11 reproduced above shows four photographs of footwear. Appeal 2019-004306 Reexamination Control 95/002,100 Patent US D517,789 S 9 PRINCIPLES OF LAW The sole test for anticipation in design patents is the “ordinary observer test.” Int’l Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1239 (Fed. Cir. 2009). According to this test, two designs are substantially the same if, “in the eye of an ordinary observer, giving such attention as a purchaser usually gives, . . . the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other.” Id. (quoting Gorham Mfg. Co. v. White, 81 US 511, 528 (1871)). In that regard, a prior art reference may anticipate a claimed design if it “is ‘identical in all material respects’ to the claimed invention.” High Point Design LLC v. Buyer’s Direct, Inc., 621 F. App’x 632, 638 (Fed. Cir. 2015) (quoting Door–Master Corp. v. Yorktowne, Inc., 256 F.3d 1308, 1312 (Fed. Cir. 2001); Hupp v. Siroflex of Am., Inc., 122 F.3d 1456, 1461 (Fed. Cir. 1997) (“The publication must show the same subject matter as that of the patent, and must be identical in all material respects.”)). “In other words, the two designs must be substantially the same.” High Point Design, 621 F. App’x at 638. ANALYSIS Preliminarily, we note that only those arguments timely made in the briefs of record in this appeal have been considered. Other arguments not made or those not properly presented to the Board have not been considered and are deemed to be waived. See 37 C.F.R. § 41.67(c)(1)(vii). In addition, while we have fully considered all of the evidence of record, including the declarations, we cite to the briefs of the parties in the analysis below, the Appeal 2019-004306 Reexamination Control 95/002,100 Patent US D517,789 S 10 briefs citing to specific portions of the evidence in support of the facts and contentions set forth therein. We also address the issues in an order different than the order presented by the involved parties. Issue 2 The Examiner finds that the claim of the ’789 Patent is anticipated by “Figure 11” of Appendix UX.3 Right of Appeal Notice 4.4 The Examiner explains that Figure 11 is a compilation of “[t]he shoe shown in several images throughout Citation U.” RAN 4. The Examiner finds that the shoe of Figure 11 “has an overall appearance that is substantially the same as the claimed design of the ’789 patent.” RAN 4. In particular, the Examiner states that the Examiner has presented a prima facie case that shoe shown in Fig. 11 of Appendix UX is substantially similar as the shoe of the ‘789 patent when viewed through the eyes of the ordinary observer armed with knowledge of the prior art. The only differences between the shoe shown in Fig. 11 of Appendix UX and the shoe design of the ’789 patent reside in the number of views provided. RAN 9. The Patent Owner disagrees and argues that “Figure 11 does not anticipate the ’789 Patent’s design” (App. Br. 30) because a shoe is 3 The record interchangeably refers to Figure 11 of Citation U and Appendix UX. It is our understanding that there is only one Figure 11, which is reproduced above. 4 Mailed August 9, 2017 (“RAN”). The Examiner’s Answer mailed November 28, 2018, incorporates by reference, the RAN. Ans. 1. Thus, we cite to the RAN herein. Appeal 2019-004306 Reexamination Control 95/002,100 Patent US D517,789 S 11 asymmetrical, and Figure 11 shows only outside and top views (App. Br. 32). Specifically, the Patent Owner argues Missing from OA Figure 11 is any depiction of a bottom view, front view, back view, insole view, or full top view. Yet Figures 3-7 of the ’789 Patent provide just such views, meaning that [] Figure 11 does not provide a comparable view for over half of the figures of the claimed design in the 789 Patent. App. Br. 33. We generally agree with the Patent Owner. As the Patent Owner points out, “a shoe is not a symmetrical object, and any number of design flourishes could exist in the portions of the shoes not depicted in . . . Figure 11.” App. Br. 34. In particular, Figure 11 lacks views of the shoe showing: the inner side to allow comparison with the ornamental design shown in Figure 3 of the ’789 Patent; the front to allow comparison with the ornamental design shown in Figure 4 of the ’789 Patent; the rear to allow comparison with the ornamental design shown in Figure 5 of the ’789 Patent; and the bottom to allow comparison with the ornamental design shown in Figure 7 of the ’789 Patent. FF 1A–1F and 2. Although the photographs of Figure 11 do appear to adequately show a top of the shoe when the photographs are considered in combination, this does not address the noted deficiencies with respect to other views. Int’l Seaway Trading, 589 F.3d at 1235 (“the district court erred in failing to compare the insoles of the patents-in-suit with the prior art from the perspective of the ordinary observer.”). The Examiner states that “the ornamental aspects of the designs at issue” have been properly considered, and finds that “when comparing the visible portions of the shoe shown in the images of . . . Fig. 11 . . . to the Appeal 2019-004306 Reexamination Control 95/002,100 Patent US D517,789 S 12 corresponding portions of the shoe of the ’789 patent, the designs are identical.” RAN 11. However, the record lacks evidentiary support for the finding of anticipation because, at minimum, Figure 11 fails to show the inner side of the shoe, and fails to show the inner side portion of the front, the rear, and the bottom of the shoe. FF 2. Accordingly, it is not possible from the photographs of Figure 11 to determine whether shoe design of Figure 11 is substantially the same as the shoe design claimed in the ’789 Patent. The Requester argues that Figure 11 shows a top view and a partial side view, so “Appellant’s bizarre hypothetical designs . . . are impossible.” Resp. Br. 20–21 (referring to hypothetical figures appearing in App. Br. 35). However, the alleged “top view” of Figure 11 shows only a portion of the upper and the strap, and does not show the entire upper with the side wall or the heel portion, to thereby establish the ornamental design of the inner side of the shoe, including the design of the sidewall ventilator holes on the inner side wall. FF 2. The Examiner further finds that Because the field of related prior art was not crowded with many designs that look like the claimed design, despite the fact that the images of Citation U shown in Fig. 11 of Appendix UX do not fully disclose every surface or angle of the entire shoe, an ordinary observer armed with the knowledge that there were no similar designs in existence, would recognize the shoe shown in Fig. 11 of Appendix UX and the shoe design of the ’789 patent to be one and the same. RAN 9–10. However, this line of reasoning appears to draw too much upon non- documentary evidence, and imputes substantive knowledge of ornamental Appeal 2019-004306 Reexamination Control 95/002,100 Patent US D517,789 S 13 aspects of the shoe of Figure 11 to “an ordinary observer” without evidentiary support. While we do not find that “every surface or angle of the entire shoe” must be shown in a prior art reference, the missing views of Figure 11 establish a sufficient gap in the evidence as to the shown design to preclude a finding of anticipation. The Examiner also finds that the Patent Owner’s continued reminder that they are not denying that they were selling a shoe that was within the scope of the design of the ’789 patent adds to the preponderance of evidence (i.e., that it is more likely than not) that the shoe shown in the images of Citation U compiled in Fig. 11 of Appendix UX anticipates the claimed design of the ’789 patent. RAN 10; see also Resp. Br. 20 (“At no point in this proceeding did Appellant point to any difference between the prior art and the claimed design . . . . Of course, Appellant could not possibly do so because, as the Examiner recognized, Appellant was selling the shoe at the time.”); Resp. Br. 4 (“Appellant does not, and cannot dispute that the shoe it sold is the same one depicted in Citation U.”). However, inter partes reexamination must be based on “prior art cited under the provisions of section 301.” 35 U.S.C. § 311(a) (pre-AIA). Section 301 states that “prior art” consists of “patents or printed publications.” 35 U.S.C. § 301(a). Accordingly, such issues of prior sales activity are not appropriately raised in this proceeding. Therefore, in view of the above considerations, we agree with the Patent Owner that “[t]here is simply not enough information” to support a finding of anticipation by Figure 11. App. Br. 35. Appeal 2019-004306 Reexamination Control 95/002,100 Patent US D517,789 S 14 The parties also disagree as to whether Figure 11 is a publically- available printed publication. See RAN 9; App. Br. 29–30; Resp. Br. 18–19; Reb. Br. 9–11. However, this additional issue is moot and we decline to address it because, as we find above, even if Figure 11 was a publically- available printed publication, it fails to anticipate the claim of the ’789 Patent. Issue 1 In rejecting the claim of the ’789 Patent as anticipated by Figure 11, the Examiner finds that The effective filing date of the ’789 patent is determined to be May 28, 2004. The ’789 patent is not entitled to the benefit of the earlier filing dates of prior-filed applications 10/602,416 and 10/603,126 because the design of the ’789 patent was not described in the prior-filed applications. RAN 4. In denying benefit to the earlier date, the Examiner finds that “[t]he design of the ’789 patent exhibits at least five clear differences in appearance compared to the shoe design disclosed in the earlier ’416 and ’126 applications” as follows: the rising toe; the sidewall ventilator holes; the edge of the upper; the shape of the strap at the rivet connection point; and the shape of the outer heel area. RAN 5. The parties disagree as to the level of one of ordinary skill in the art, whether these five differences are merely a result of perspective and Appeal 2019-004306 Reexamination Control 95/002,100 Patent US D517,789 S 15 rendering/formalizing of the drawings,5 and whether one of ordinary skill would have found the inventor had possession of the design of the ’789 Patent in light of such differences. RAN 5; App. Br. 8, 10–15, 17–22, 27; Resp. Br. 4–5, 10–16; Reb. Br. 3, 7, 8. This earlier filing date issue affects whether Figure 11 of Appendix UX is available, date-wise, as prior art to the design claimed in the ‘789 patent. We need not reach these issues because, even if the ’789 Patent is not entitled to its claim to priority based on patent application No. 10/603,126, thus making Figure 11 of Appendix UX available as prior art, Figure 11 does not anticipate the claim of the ’789 Patent as discussed above relative to Issue 1. CONCLUSION The Examiner’s rejection of the claim of the ’789 Patent as anticipated by “Figure 11” of Appendix UX is REVERSED. Requests for extensions of time in this inter partes reexamination proceeding are governed by 37 C.F.R. § 1.956. In the event neither party files a request for rehearing within the time provided in 37 C.F.R. § 41.79, and this decision becomes final and appealable under 37 C.F.R. § 41.81, a party seeking judicial review must timely serve notice on the Director of the 5 We observe that patent application No. 10/603,126, to which the subject ’789 Patent claims benefit, issued as the ’858 Patent. The formalized drawings of the ’858 Patent includes the same five differences as compared to the drawings of the subject ’789 Patent. Appeal 2019-004306 Reexamination Control 95/002,100 Patent US D517,789 S 16 United States Patent and Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983. REVERSED Copy with citationCopy as parenthetical citation