Florida IP Trends

One of the very first cases featured on Florida IP Trends was International Seaway v. Walgreens, in which Walgreens was sued for some allegedly infringing Crocs-like shoes (original post HERE).

The case involved design patent infringement and was one of the first cases in Florida to handle the Federal Circuit’s Egyptian Goddess opinion.

This is text from my original post.  I thought the Southern District misapplied the Contessa precedent:

In addition to that technicality(?), I think the court missed the overall point of Contessa.  The court used Contessa to justify excluding the insoles of the sandals from the comparison of the designs.  The reasoning was that “when a shoe is in use, it’s[sic] insole is, obviously, hidden by the user’s foot…[a]s such, this Court will not consider any aspects of the insoles of the shoes, but will consider the sole of the shoes as those are visible during use.”  Uh, except when someone happens to be WALKING ON THE SOLES!

The Court also stated that “the law requires a court to consider only those portions of the product that are visible during normal use, regardless of whether those portions are visible during the point of sale.”  While this might be true, in the case of Crocs-like shoes, I believe that the sole and insole are both visible during normal use – INCLUDING at the point of sale.  All of the Crocs and Crocs-like shoes I’ve seen for sale are hanging on a rack without boxes, thus, all sides and features are visible.  Because a feature that is more visible at the point of sale might be less visible later does not mean that the feature should be excluded.  Contessa said that the analysis should include “all ornamental features visible at any time during the normal use of the product.”  (emphasis added).  To me, this would include when the owner has the sandals sitting next to him or her on the beach, in which case the insole would be visible.

So, imagine my delight when I found out that on December 17, 2009, the United States Court of Appeals for the Federal Circuit agreed! (Fed. Cir. opinion HERE.)  Note that appeals of patent cases go directly to the Federal Circuit – that’s why we’re not discussing the 11th Circuit here.  (I also have to apologize for letting this slip through the cracks for so long.  I honestly missed the appeal.  I found out about it at the Florida Bar 1st Annual IP Symposium last week in Tampa.)

From the Federal Circuit’s opinion:

The district court here misconstrued Contessa as requiring that the normal use of a clog be limited to the time when it is worn. Contessa did not exclude the point of sale from the normal use of a product. Rather, it emphasized that normal use should not be limited to only one phase or portion of the normal use lifetime of an accused product. Id. at 1380 (citing KeyStone Retaining Wall Sys., Inc. v. Westrock, Inc., 997 F.2d 1444, 1450 (Fed. Cir. 1993)). The sale of a clog occurs after it has been manufactured and before it is ultimately destroyed. Thus, the point of sale for a clog clearly occurs during its normal use lifetime. At the point of sale, the insole is visible to potential purchasers when the clog is displayed on a shelf or rack and when the clog is picked up for examination. Similarly, removing a clog from a wearer’s foot also occurs after manufacture and before destruction of the clog, so it also falls squarely within the clog’s normal use lifetime. The wearer may remove the clog temporarily to stretch out his or her toes, leave the clogs on the beach to go for a swim, or engage in countless other activities that would leave the insole exposed.

Ok, who thinks the appellate court reads Florida IP Trends?  Me neither, but it’s still great to see the same analysis show up in the appellate opinion!