U.S. International Trade Commission; General Exclusion Order; Investigation No. 337-TA-567; In the Matter of Certain Foam Footwear

U.S. Department of Homeland Security Washington, DC 20229 U.S. Customs and Border Protection HQ H247145 December 27, 2013 OT:RR:BSTC:IPR H247145 AAH CATEGORY: 19 U.S.C. § 1337; Unfair Competition Mr. Forrest King President Jensen Shipping Company, Inc. P.O. Box 11146 Birmingham, Alabama 35202 RE: U.S. International Trade Commission; General Exclusion Order; Investigation No. 337-TA-567; In the Matter of Certain Foam Footwear Dear Mr. King: This is in response to your letter, dated September 18, 2013, on behalf of your client Shoe Corporation of Birmingham, Inc., seeking a ruling whether certain foam footwear is covered by the claims of the patent included in the general exclusion order issued by the U.S. International Trade Commission (“ITC”) as a result of the above-referenced investigation. FACTS: On December 12, 2012, CBP excluded from entry for consumption into the United States, a shipment of 5,004 pairs of certain ethylene vinyl acetate footwear (EVA) imported by Shoe Corporation of Birmingham. Based on the information submitted, the exclusion was not the subject of a protest under 19 U.S.C. § 1514. In light of the exclusion, however, you have requested on behalf of Shoe Corporation, a ruling on whether your client may import and enter for consumption certain other styles of EVA footwear (hereinafter, “foam footwear”). Five samples of foam footwear were submitted with the ruling request, viz., styles A, B, C, D, and E. You have advised that the footwear is manufactured in the People’s Republic of China and was purchased from the Birmingham, Alabama store of the large national retailer. You state that identical styles of footwear are available from other major retailers in the Birmingham area. The Commission instituted Inv. No. 337-TA-567 on May 11, 2006, based on a complaint, as amended, filed by Crocs, Inc. (“Crocs”) of Niwot, Colorado. 71 Fed. Reg. 27514-15 (May 11, 2006). The complaint alleged violations of section 337 of the Tariff Act of 1930, as amended (19 U.S.C. § 1337), in the importation into the United States, the sale for importation, and the sale within the United States after importation, of certain foam footwear, by reason of infringement of claims 1-2 of U.S. Patent No. 6,993,858 (“the `858 patent”); U.S. Patent No. D517,789 (“the `789 patent”); and the Crocs trade dress (i.e., the image and overall appearance of Crocs-brand footwear). The complaint further alleged that an industry in the United States exists as required by subsection (a)(2) of section 337, and requested that the Commission issue a permanent general exclusion order and permanent cease and desist orders. The complaint named eleven (11) respondents that included: (1) Collective Licensing International, LLC of Englewood, Colorado; (2) Double Diamond; (3) Effervescent; (4) Gen-X Sports, Inc. of Toronto, Ontario; (5) Holey Soles; (6) Australia Unlimited, Inc. of Seattle, Washington; (7) Cheng’s Enterprises Inc. of Carlstadt, New Jersey; (8) D. Myers & Sons, Inc. of Baltimore, Maryland; (9) Inter-Pacific Trading Corp. of Los Angeles, California; (10) Pali Hawii of Honolulu, Hawaii; and (11) Shaka Shoes of Kaliua-Kona, Hawaii. The Commission terminated the investigation as to the trade dress allegation on September 11, 2006. A twelfth respondent, Old Dominion Footwear, Inc. of Madison Heights, Virginia, was added to the investigation on October 10, 2006. All but three respondents were terminated from the investigation on the basis of a consent order, settlement agreement, or undisputed Commission determination of non-infringement. The three remaining respondents were Double Diamond, Effervescent, and Holey Soles. On April 11, 2008, the presiding administrative law judge (“ALJ”) issued his final initial determination (“ID”) finding no violation of section 337. The ALJ found non-infringement and non-satisfaction of the technical prong of the domestic industry requirement with respect to the `789 patent and found that the `858 patent was invalid on obvious grounds under 35 U.S.C. § 103. However, the ALJ’s final ID also included a recommendation on remedy and bonding should the Commission find that there was a violation. On July 25, 2008, after review, the Commission affirmed the ALJ’s final ID with certain modifications and clarifications, and terminated the investigation with a finding of no violation of section 337. On February 24, 2010, the U.S. Court of Appeals for the Federal Circuit (“Federal Circuit”) issued its judgment overturning the Commission’s findings regarding invalidity of the `858 patent, and non-infringement/lack of domestic industry concerning the `789 patent. See Crocs, Inc. v. United States Int’l Trade Comm’n, 589 F.3d 1294, 1311 (Fed. Cir. 2010). The Federal Circuit also specifically “remanded the investigation for a determination of infringement of the `858 patent and any appropriate remedies.” Id. On April 25, 2011, the Commission issued a notice of its determination not to review the ALJ’s remand ID finding a violation of section 337, as amended, and requested written submissions on the issues of remedy, the public interest, and bonding from the parties and interested non-parties. See 76 Fed. Reg. 24052-53 (April 29, 2011). In doing so, the Commission’s notice also included its determination to reaffirm the ALJ’s previous ruling that claims 1 and 2 of the `858 patent are infringed by Effervescent’s accused products, and that claim 2 of the `858 patent is infringed by Double Diamond’s accused products. See 73 Fed. Reg. 35710-11 (June 24, 2008); Remand ID at 2 (February 9, 2011) (citing Final ID at 121 (April 11, 2008)); Comm’n Op. at 3-4, n. 1 (July 25, 2008). These actions, along with the Federal Circuit’s decision, resulted in a finding of a violation of section 337 with respect to both asserted patents by Double Diamond and Effervescent. Holey Soles was found in violation with respect to the `789 patent based on the Federal Circuit’s reversal of non-infringement and a lack of domestic industry as to this patent. See Crocs, 598 F.3d at 1311. Accordingly, the Commission determined that the appropriate form of relief is a general exclusion order. Specifically, the general exclusion order provides that foam footwear that is covered by one or more of claims 1 and 2 of the `858 patent or by the `789 patent are excluded from entry into the United States for consumption, entry for consumption for a foreign trade zone, or withdrawal from warehouse for consumption, except under license of the patent owner or as provided by law. ISSUE: The issue presented is whether Shoe Corporation of Birmingham, Inc.’s foam footwear (designated as Styles A, B, C, D, and E) is covered by the patent claims at issue in the exclusion order issued by the ITC in Investigation No. 337-TA-567. LAW AND ANALYSIS: Pursuant to the Tariff Act of 1930, the ITC has authority to conduct investigations into imported articles that allegedly infringe United States patents and impose remedies if the accused products are found to be infringing. See 19 U.S.C. § 1337(a)(1)(B), (b)(1), (d), (f). Specifically, 19 U.S.C. § 1337(d) provides the Commission authority to direct the exclusion from entry of articles found to be infringing. Moreover, when the Commission determines that there has been a violation of section 337, it may issue two types of exclusion orders: a limited exclusion order and/or a general exclusion order. See Fuji Photo Film Co., Ltd. v. U.S. Int’l Trade Comm’n, 474 F.3d 1281, 1286 (Fed. Cir. 2007); see also Certain Ink Cartridges and Components Thereof, Inv. No. 337-TA-565, Commission Opinion (October 19, 2007). Both types of orders direct CBP to bar the infringing products from entering the country. See Yingbin-Nature (Guangdong) Wood Indus. Co. v. U.S. Int’l Trade Comm’n, 535 F.3d 1322, 1330 (Fed Cir. 2008). A limited exclusion order is “limited” in that it only applies to the specific parties before the Commission in the investigation. Id. In contrast, a general exclusion order bars importation of the infringing products by everyone, regardless of whether they were respondents in the Commission’s investigation. Id. Patent infringement determinations for utility patents entail two steps. The first step is to interpret the meaning and scope of the asserted patent claims. The second step is to compare the properly construed claims to the accused device. See Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370 (1996). The first step is a question of law; the second step is a question of fact. See Freedman Seating Co. v. American Seating Company, 420 F.3d 1350, 1357 (Fed. Cir. 2005). In patent law, there are two types of infringement: direct and indirect infringement. Direct infringement includes two varieties: literal infringement and infringement under the doctrine of equivalents. Literal infringement is when every limitation recited in a claim is found in the accused device. See Strattec Security Corp. v. General Automotive Specialty Co., 126 F.3d 1411, 1418 (Fed. Cir. 1997); see also Digital Biometrics, Inc. v. Identix, Inc., 149 F.3d 1335, 1349 (Fed. Circ. 1998) (“An accused device cannot infringe, as a matter of law, if even a single limitation is not satisfied.”). However, a dependent claim cannot be found to infringe if the independent claim from which it depends is not found to infringe. See Becton Dickinson & Co. v. C.R. Bard Inc., 922 F.2d 792 (Fed. Cir. 1990) (“The holding of noninfringement of claim 1 applies as well to all claims dependent on claim 1.”). One may infringe an independent claim and not infringe a claim dependent on that claim. The reverse is not true. One who does not infringe an independent claim cannot infringe a claim dependent on (and thus containing all the limitations of) that claim. Wahpeton Canvas Co., Inc. v. Frontier, Inc., 870 F.2d 1546, 1552 (Fed. Cir. 1989). As for the scope of protection provided, it is a “bedrock principle” of patent law that “the claims of a patent define the invention to which the patentee is entitled the right to exclude.” Innova/Pure Water, Inc. v. Safari Water Filtration Systems, Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004); Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996) (“[W]e look to the words of the claims themselves…to define the scope of the patented invention.”). Furthermore, the Federal Circuit has made clear that claim terms are given their ordinary and customary meaning, which refers specifically to the ordinary and customary meaning that the claim term would have to a person of ordinary skill in the art at the time of the invention. See Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). The inquiry into how a person of ordinary skill in the art understands a claim term provides an objective baseline from which to begin claim interpretation. See Innova 381 F.3d at 1116. That starting point is based on the well-settled understanding that inventors are typically persons skilled in the field of the invention and that patents are addressed to and intended to be read by others of skill in the pertinent art. See Verve, LLC v. Crane Cams, Inc., 311 F.3d 1116, 1119 (Fed. Cir. 2002). The person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification. See Phillips, 415 F.3d at 1313. Often, this requires an examination of terms that have a particular meaning in a field of art. Id. Since the meaning of a claim term, as understood by persons of skill in the art, is often not immediately apparent, and since patentees frequently act as their own lexicographers, a court or administrative body responsible for making patent infringement determinations should look to sources available to the public that show what a person of skill in the art would have understood a disputed claim term to mean. Id. These sources include, for example, the words of the claims themselves, the remainder of the specification and the prosecution history, along with certain extrinsic evidence in appropriate circumstances. Id. Importantly, as stated by the Federal Circuit in Vitronics and reaffirmed in Phillips, claims must be read in light of the specification, of which they are a part, since the specification “is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.” Phillips, 415 F.3d at 1315 (citing Vitronics, 90 F.3d at 1582); see also Standard Oil Co. v. Am. Cyanamid Co., 774 F.2d 448, 452 (Fed. Cir. 1985) (“The specification is, thus, the primary basis for construing the claims.”). Accordingly, the Federal Circuit has provided the framework above for interpreting patent claims and reading those claims, as properly construed in light of the relevant evidence, onto an accused device. As a general matter, the ITC directs its exclusion orders to articles “covered by” the infringed claims of the relevant patents. See Certain Hardware Logic Emulation Systems and Components Thereof, Inv. No. 337-TA-383, Commission Opinion at 16 (Publication 3089, dated March 1998) (“[T]he Commission’s long-standing practice is to direct its remedial orders to all products covered by the patent claims as to which a violation has been found, rather than limiting its orders to only those specific models selected for the infringement analysis.”). Shoe Corporation of Birmingham, Inc.’s Footwear Shoe Corporation has submitted five alternative styles of foam footwear: Style A, Style B, Style C, Style D, and Style E for review. Photographs of each style are provided below. Style A  Side view, inside 
 Side view, outside 
 Bottom 
 Top 
  Style B  Outside 
 Inside 
 Top 
 Bottom 
  Style C  Top 
 Outside 
 Bottom 
 Inside 
  Style D  Inside 
 Outside 
 Top 
 Bottom 
  Style E  Top 
 Outside 
 Inside 
 Bottom 
  CLAIM 1 and 2 OF U.S. PATENT NO. 6,993,858 The `858 patent is entitled “Breathable Footwear Pieces.” The `858 patent discloses a firm foam strap on footwear that acts as a passive restraint to the Achilles portion of the foot and can be set in various fixed positions because of the friction created by the direct contact between the upper portion of the base of the footwear and strap. See Initial Determination at 62. Two claims from the `858 patent were asserted in the investigation: independent claims 1 and 2. Id. at 40. Claim 1 and 2 of the `858 patent, the asserted independent claims, read as follows: A footwear piece comprising: A base section including an upper and a sole formed as a single part manufactured from a moldable foam material; and A strap section formed of moldable material that is attached at opposite ends thereof to the upper of the base section with plastic connectors such that the moldable foam material of the strap section is in direct contact with the moldable material of the base section and pivots relative to the base section at the connectors; Wherein the upper includes an open rear region defined by an upper opening parameter, and wherein frictional forces developed by the contact between the strap section and the base section at the plastic connectors are sufficient to maintain the strap section in place in an intermediary position after pivoting, whereby the strap section lends support to the Achilles portion of the human foot inserted into the open rear region; and Wherein the upper includes a substantially horizontal portion and a substantially vertical portion forming a toe region that generally follows the contour of a human foot, wherein the toe region tapers from an inner area of the base section where the larger toes exist to an outer area of the base section where the smaller toes exist; and Wherein the sole includes a bottom surface having front and rear tread patterns longitudinally connected by a flat section. A footwear piece comprising: A base section including an upper and a sole formed as a single part manufactured from a moldable foam material; and A strap section formed of molded foam material attached at opposite ends thereof to the base section such that the strap section is in direct contact with the base section and pivots relative to the base section; and Wherein the upper includes an open rear region defined by an upper opening perimeter; and wherein the sole includes a rear perimeter; and wherein the strap section pivots between a first contact point on the upper opening perimeter and a second contact point on the rear perimeter, and wherein frictional forces developed by the contact between the strap section and the base section at the points of attachment are sufficient to maintain the strap section in place in an intermediary position after pivoting whereby the strap section lends support to the Achilles portion of a human foot inserted into the open rear region; and Wherein the upper includes a substantially horizontal portion and a substantially vertical portion forming a toe region that generally follows the contour of a human foot, wherein the toe region tapers from the inner area of the base section where the larger toes exist to the outer area of the base section where the smaller toes exist; and Wherein a decorative pattern of raised bumps is molded or otherwise created in the upper near to and extending the length of the upper opening perimeter; and Wherein a plurality of ventilators are formed in both the substantially vertical portion and the substantially horizontal portion, and wherein the ventilators extend up a majority of the height of the vertical portion; Wherein the vertical portion of the upper includes an upper strip, wherein the ventilators, wherein the ventilators are formed in the upper strip, and wherein the upper strip extends from the toe region to the points of attachment for the strap section, and wherein the sole includes a lower strip that parallels the upper strip and is separated by a line the extends from the toe region to a heel of the footwear piece, and wherein the lower strip vertically rises in a direction toward the heel; and Wherein the sole includes a bottom surface having front and rear tread patterns longitudinally connected by a flat section without tread patterns bounded by raised side portions; and Wherein the sole further includes a top surface having a support base including a raised pattern where a foot contacts the support base. The Commission’s Claim Construction The Commission construed the terms “moldable foam material”/”moldable material”/ “molded foam material”, “strap section lends support to the Achilles portion of the human foot”, “second contact point on the rear perimeter”, “wherein the upper strip extends from the toe region to the point of attachment for the strap execution”, “at the connectors” / “at the plastic connectors” /”at the points of attachment”, “direct contact”, “a decorative pattern of raised bumps is molded or otherwise created in the upper near to and extending length of the upper opening perimeter”, “substantially horizontal portion and a substantially vertical portion”, “taper”, “ends”, “open near region”, “flat section”, and “plastic connectors”. “moldable foam material” / “moldable material” / “molded foam material” The Commission construed these terms to mean a “foam material capable of being manufactured, using a mold, into a three dimensional shape.” “strap section lends support to the Achilles portion of the human foot” The Commission construed this phrase to mean “the strap may simply be present in an intermediary position ready to ‘lend support’ to the Achilles portion of the foot should there be any contact with the Achilles portion of the foot.” “second contact point on the rear perimeter” The Commission construed this term to mean any point on the rear perimeter. “wherein the upper strip extends from the toe region to the point of attachment for the strap region” The Commission construed this term to mean that the strip may extend to and beyond the points of attachment for the strap section. “at the connectors” / “at the plastic connectors” / “at the points of attachment,” and “direct contact” The Commission construed these terms to mean that there must be some contact directly between the strap section and base section that occurs somewhere in the area where the base and strap sections are connected. “a decorative pattern of raised bumps is molded or otherwise created in the upper near to and extending the length of the upper opening perimeter” The Commission construed this term to cover shoes, subject to the other claims of this term, which have decorative patterns of raised bumps on either the inside or outside surface of the shoes. “substantially horizontal portion and a substantially vertical portion” The Commission construed this clause to not require precise “horizontal” or “vertical” surfaces but instead allow for some measure of variance from strictly “horizontal” or “vertical.” “taper” The Commission construed this term to mean following the general outline of the human foot. “ends” The Commission construed the term “ends” not to require the strap to be attached to the base at its “extreme distal terminus” or “extreme edge.” “open rear region” The Commission construed this term to mean “the cavity into which the foot is inserted.” “flat section” . The Commission construed the term “flat section” to not require the entire middle section of the bottom surface of the sole to be flat, but rather that the middle section of the surface of the sole contains a flat surface. The submission does not contain any legal arguments why the product does not infringe or put any limitations in issue. Therefore, the claim chart below is provided comparing the limitations of claim 1 from the `858 patent with depictions of style A: Claim 1 Element Photo  A base section including an upper and a sole formed as a single part manufactured from a moldable foam material; 
 A strap section formed of moldable material that is attached at opposite ends thereof to the upper of the base section with plastic connectors such that the moldable foam material of the strap section is in direct contact with the moldable material of the base section and pivots relative to the base section at the connectors; As can be seen in the photo above, there is no strap section in Style A. As such, and because this limitation is common to both claims 1 and 2, Style A does not infringe the `858 utility patent.   A similar comparison is below for Style B. Claim 1 Element Photograph  A base section including an upper and a sole formed as a single part manufactured from a moldable foam material; 
 A strap section formed of moldable material that is attached at opposite ends thereof to the upper of the base section with plastic connectors such that the moldable foam material of the strap section is in direct contact with the moldable material of the base section and pivots relative to the base section at the connectors; 
 Wherein the upper includes an open rear region defined by an upper opening parameter, and wherein frictional forces developed by the contact between the strap section and the base section at the plastic connectors are sufficient to maintain the strap section in place in an intermediary position after pivoting, whereby the strap section lends support to the Achilles portion of the human foot inserted into the open rear region; and 
 Wherein the upper includes a substantially horizontal portion and a substantially vertical portion forming a toe region that generally follows the contour of a human foot, 
 wherein the toe region tapers from an inner area of the base section where the larger toes exist to an outer area of the base section where the smaller toes exist; and 
 Wherein the sole includes a bottom surface having front and rear tread patterns longitudinally connected by a flat section. 
There appears to be no flat section longitudinally connecting the front and rear tread patterns as treads cover the entire bottom surface. Instead of a flat section, the tread pattern continues unbroken from the front to the rear of the footwear’s sole. Accordingly, and because this limitation is common to both claims 1 and 2, Style B does not infringe the `858 utility patent.   A similar comparison is below for Style C. Claim 1 Element Photo  A base section including an upper and a sole formed as a single part manufactured from a moldable foam material; 
 A strap section formed of moldable material that is attached at opposite ends thereof to the upper of the base section with plastic connectors such that the moldable foam material of the strap section is in direct contact with the moldable material of the base section and pivots relative to the base section at the connectors; 
 Wherein the upper includes an open rear region defined by an upper opening parameter, and wherein frictional forces developed by the contact between the strap section and the base section at the plastic connectors are sufficient to maintain the strap section in place in an intermediary position after pivoting, whereby the strap section lends support to the Achilles portion of the human foot inserted into the open rear region; and 
 Wherein the upper includes a substantially horizontal portion and a substantially vertical portion forming a toe region that generally follows the contour of a human foot, 
 wherein the toe region tapers from an inner area of the base section where the larger toes exist to an outer area of the base section where the smaller toes exist; and 
 Wherein the sole includes a bottom surface having front and rear tread patterns longitudinally connected by a flat section. 
Style C has all elements and infringes.   A similar comparison is below for Style D. Claim 1 Element Photo  A base section including an upper and a sole formed as a single part manufactured from a moldable foam material; 
 A strap section formed of moldable material that is attached at opposite ends thereof to the upper of the base section with plastic connectors such that the moldable foam material of the strap section is in direct contact with the moldable material of the base section and pivots relative to the base section at the connectors; 
 Wherein the upper includes an open rear region defined by an upper opening parameter, and wherein frictional forces developed by the contact between the strap section and the base section at the plastic connectors are sufficient to maintain the strap section in place in an intermediary position after pivoting, whereby the strap section lends support to the Achilles portion of the human foot inserted into the open rear region; and 
 Wherein the upper includes a substantially horizontal portion and a substantially vertical portion forming a toe region that generally follows the contour of a human foot, 
 wherein the toe region tapers from an inner area of the base section where the larger toes exist to an outer area of the base section where the smaller toes exist; and 
 Wherein the sole includes a bottom surface having front and rear tread patterns longitudinally connected by a flat section. 
Style D has all elements and infringes.   A similar comparison is below for Style E. Claim 1 Element Photo  A base section including an upper and a sole formed as a single part manufactured from a moldable foam material; 
 A strap section formed of moldable material that is attached at opposite ends thereof to the upper of the base section with plastic connectors such that the moldable foam material of the strap section is in direct contact with the moldable material of the base section and pivots relative to the base section at the connectors; 
 Wherein the upper includes an open rear region defined by an upper opening parameter, and wherein frictional forces developed by the contact between the strap section and the base section at the plastic connectors are sufficient to maintain the strap section in place in an intermediary position after pivoting, whereby the strap section lends support to the Achilles portion of the human foot inserted into the open rear region; and 
 Wherein the upper includes a substantially horizontal portion and a substantially vertical portion forming a toe region that generally follows the contour of a human foot, 
 wherein the toe region tapers from an inner area of the base section where the larger toes exist to an outer area of the base section where the smaller toes exist; and 
 Wherein the sole includes a bottom surface having front and rear tread patterns longitudinally connected by a flat section. 
Style E has all elements and infringes.   Therefore, based on the claim charts above, the determination here is that Styles A and B do not infringe the `858 utility patent, while Styles C, D, and E infringe because they satisfy all elements of claim 1. Accordingly, Styles C, D, and E are subject to the exclusion order and cannot be entered for consumption. Styles A and B must be further analyzed with respect to the design patent at issue in the exclusion order. DESIGN PATENT ANALYSIS FOR STYLES A and B The starting point for any proper examination of design patent law, as made clear by the CAFC, is the Supreme Court’s decision in Gorham Co. v. White, 81 U.S. 511 (1871). See Egyptian Goddess, Inc. v. Swisa, 543 F.3d 665, 670 (Fed. Cir. 2008) (en banc). The Gorham Court, in reviewing the infringement allegation before it, stated that the test of identity of design “must be sameness of appearance, and mere difference of lines in the drawing or sketch…or slight variances in configuration…will not destroy the substantial identity.” Gorham, 81 U.S. at 526-27. The USITC has stated that “Even if the claimed design simply combines old features in the prior art, it may still create an overall appearance deceptively similar to the accused design. In that case, this court will uphold a finding of infringement.” Crocs v. USITC, slip op. at 11 (citing Egyptian Goddess v. Swisa, 543 F.3d at 677-678). The Supreme Court then established the test for infringement that would be used in future design patent cases: “[I]f, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first patented is infringed by the other.” Id. at 528. The Supreme Court concluded, while addressing the merits of the specific case before it, that “whatever differences there may be between the plaintiff’s design and those of the defendant in details of ornament, they are still the same in general appearance and effect, so much alike that in the market and with purchasers they would pass for the same thing—so much alike that even persons in the trade would be in danger of being deceived.” Id. at 531. Since that time, the test provided by the Supreme Court has generally been referred to as the “ordinary observer” test and has been recognized by lower courts, including the CAFC and its predecessors, as the proper standard for making determinations involving design patent infringement. See Egyptian Goddess, 543 F.3d at 670. Moreover, the CAFC recently reaffirmed the continuing vitality of this approach to design patent determinations by rehearing Egyptian Goddess en banc and producing an opinion addressing the proper legal standard to be used in such cases. In the unanimous opinion before the en banc court, the CAFC provided an overview of design patent decisions that followed the standard articulated in Gorham and commented that these intervening cases are properly read as applying a version of the ordinary observer test in which the ordinary observer is deemed to view the differences between the patented design and the accused product in the context of the prior art. Id. at 676. Additionally, Egyptian Goddess repudiated the “point of novelty” test as the appropriate standard for design patent infringement determinations. This test, which required a trial court to examine the prior art and the claimed design to identify one or more points of novelty that distinguish the claimed design from the prior art, and thereby determine whether these points of novelty were included in the accused design, occasionally resulted in a contentious analysis. See Titan Tire Corp. v. Case New Holland, Inc., 566 F.3d 1372, 1383 (Fed. Cir. 2009).    For example, one problem with the analysis under the “point of novelty” test was that it “proved difficult to apply in cases in which there are several different features that can be argued to be points of novelty in the claimed design. In such cases, the outcome of the case can turn on which of the several candidate points of novelty the court or fact-finder focuses on. The attention of the court may therefore be focused on whether the accused design has appropriated a single specified feature of the claimed design, rather than on the proper inquiry, i.e., whether the accused design has appropriated the claimed design as a whole.” Egyptian Goddess, 543 F.3d at 677 (emphasis added). Furthermore, the “point of novelty” test was found to be problematic since “the more novel the design, and the more points of novelty that are identified, the more opportunities there are for a defendant to argue that its design does not infringe because it does not copy all of the points of novelty, even though it may copy most of them and even though it may give the overall appearance of being identical to the claimed design. In such cases, a test that asks how an ordinary observer with knowledge of the prior art designs would view the differences between the claimed and accused designs is likely to produce results more in line with the purposes of design patent protection.” Id. Accordingly, Egyptian Goddess held “that the ‘point of novelty’ test should no longer be used in the analysis of a claim of design patent infringement….Instead, in accordance with Gorham and subsequent decisions, we hold that the ‘ordinary observer’ test should be the sole test for determining whether a design patent has been infringed. Under that test, as this court has sometimes described it, infringement will not be found unless the accused article ‘embod[ies] the patented design or any colorable imitation thereof’.” Id. at 678 (internal citations omitted). Significantly, the CAFC continued that "[i]n some instances, the claimed design and the accused design will be sufficiently distinct that it will be clear without more that the patentee has not met its burden of proving the two designs would appear ‘substantially the same’ to the ordinary observer, as required by Gorham. In other instances, when the claimed and accused designs are not plainly dissimilar, resolution of the question whether the ordinary observer would consider the two designs to be substantially the same will benefit from a comparison of the claimed and accused designs with the prior art….Where there are many examples of similar prior art designs,…differences between the claimed and accused designs that might not be noticeable in the abstract can become significant to the hypothetical ordinary observer who is conversant with the prior art.” Id. Egyptian Goddess also stressed that “although the approach [adopted] will frequently involve comparisons between the claimed design and the prior art, it is not a test for determining validity, but is designed solely as a test of infringement. Thus, as is always the case, the burden of proof as to infringement remains on the patentee. However, if the accused infringer elects to rely on the comparison prior art as part of its defense against the claim of infringement, the burden of production of that prior art is on the accused infringer….Under the ordinary observer test,…it makes sense to impose the burden of production as to any comparison prior art on the accused infringer. The accused infringer is the party with the motivation to point out close prior art, and in particular to call to the court’s attention the prior art that an ordinary observer is most likely to regard as highlighting the differences between the claimed and accused design. Regardless of whether the accused infringer elects to present prior art that it considers pertinent to the comparison between the claimed and accused design, however, the patentee bears the ultimate burden of proof to demonstrate infringement by a preponderance of the evidence.” Id. at 678-79. However, in this context, the importer bears both the burden of proof and the burden of production as it has already been established above that the issuance of a general exclusion order by the ITC shifts the burden of establishing non-infringement to the would-be importer. See Hyundai Electronics Industries Co., 899 F.2d at 1210. The design patent at issue in the Exclusion Order, D517,789, had a single claim to the ornamental design for footwear as shown and described. Figures 1 and 7 of the design patent are reproduced below.

Style A, as shown in below, lacks the strap shown in Figure 1 of the design patent and is otherwise very different from the claimed drawing as a whole. Accordingly, style A does not infringe the design patent and is not covered by the exclusion order.

Style B lacks the flat region on the bottom of the shoe, as shown in Figure 6 below.

However, the overall appearance of style B is substantially the same as the claimed design, as seen below. Both contain a strap, open rear region, the circular holes in the top, a toe region that tapers, a substantially horizontal and substantially vertical portion, and treads along the bottom.

As stated above, the CAFC has clarified that the “ordinary observer” test should be the “sole test for determining whether a design patent has been infringed and that, under this test, infringement will not be found unless the accused article ‘embod[ies] the patented design or any colorable imitation thereof’.” Egyptian Goddess, 543 F.3d at 678 (internal citations omitted). Furthermore, the CAFC has also confirmed that the appropriate standard for design patent infringement determinations is whether, from the perspective of an ordinary observer who is conversant with the prior art, the patented design and the design of the accused article are substantially the same. However, before moving further, it warrants mentioning that it is not entirely clear whether (and if so, to what extent) the analysis pertaining to the identification of the appropriate ordinary observer, as developed in cases such as Arminak (i.e., involving the question whether the proper ordinary observer is a commercial or industrial buyer of component parts that will be assembled into a retail product or a retail purchaser of the retail product incorporating the component parts), survived the Egyptian Goddess pronouncement that the proper standard is from the perspective of an ordinary observer who is familiar with the prior art. See Arminak & Assocs. v. Saint-Gobain Calmar, Inc., 501 F.3d 1314, 1321-25 (Fed. Cir. 2007). Regardless, to the extent that determining the identification of the ordinary observer (other than one familiar with the prior art) survived Egyptian Goddess, the determination here finds that the appropriate ordinary observer is not an end-user consumer, but a commercial purchaser of foam footwear who works in the footwear industry and has, therefore, some familiarity with foam footwear and the relevant prior art, but is not an expert that would be expressly excluded by Gorham from the category of persons who are eligible ordinary observers. The next step is to consider the claim construction for the `789 patent. The ITC did not provide a precise claim construction for the design of the `789 patent. However, as the CAFC has noted, there is no prescribed form that a design patent claim construction must take. See Egyptian Goddess, 543 F.3d at 679. Instead, the CAFC has recognized that design patents are typically claimed as shown in their drawings and, therefore, a court or administrative body tasked with making an infringement determination is not required to provide a detailed verbal description of the claimed design. Id. (citing Contessa Food Products v. Conagra, Inc., 282 F.3d 1370, 1377 (Fed. Cir. 2002) for the proposition that the trial court did not err in construing the asserted design claim as “a tray of a certain design as shown in Figures 1-3”). In fact, the Supreme Court has recognized that a design is better represented by an illustration “than it could be by any description and a description would probably not be intelligible without the illustration.” Dobson v. Dornan, 118 U.S. 10, 14 (1886). Taking the above into consideration, the design claim is construed as a foam footwear of a certain design as shown in the Figures above. Upon visual inspection and as shown in the images below, it is clear that the patented design and the excluded foam footwear are not plainly dissimilar. The only difference between the two is the lack of treads on the bottom of the excluded round foam footwear which are present in the patented design. See Figure 7 of the `789 patent. Accordingly, this is a case where “resolution of the question whether the ordinary observer would consider the two designs to be substantially the same will benefit from a comparison of the claimed and accused designs with the prior art” while taking into account that in such cases “differences between the claimed and accused designs that might not be noticeable in the abstract can become significant to the hypothetical ordinary observer who is conversant with the prior art.” Egyptian Goddess, 543 F.3d at 678. Additionally, this examination of the prior art can also serve to highlight certain similarities between the claimed and accused designs that may not be noticeable in the abstract, but that become significant during the comparative analysis. As stated above, in such a context as this where the accused infringer has provided no evidence of its defense against the alleged infringement, both the burden of proof (which is shifted to the would-be importer with the issuance of the ITC’s general exclusion order) and the burden of production rest with the importer in this case. Shoe Corporation has not provided any prior art references for its non-infringement defense. The side-by-side comparisons of the `789 patent design and style B suggests that an ordinary observer, familiar with the prior art designs, would be deceived into believing the accused products are the same as the patented design. In one comparison after another, the shoes appear nearly identical. If the claimed design and the accused designs were arrayed in matching colors and mixed up randomly, the record does not support a finding that an ordinary observer could properly restore them to their original order without very careful and prolonged effort. One of the overall effects of the design is the interaction between the strap assembly portion and the base portion of the shoes where the strap is attached to the base. Multiple major design lines and curves converge at that point creating a focal point attracting the eye of the ordinary observer when viewing the overall effect of the design. Another overall effect of the design is the visual theme of rounded curves and ellipses throughout the design, including the strap forming a sort of continuation of the sidewall of the base to create a visually continuous ring encircling the entire shoe. Other examples of rounded curves or ellipses in the design are the ellipses formed by the strap and the foot opening in the base. Both the claimed design and the accused designs have these overall effects. In light of the analysis above and addressing all of the figures in the `789 patent and comparing them with the foam footwear styles presented, it is our position that the accused design of the foam footwear has appropriated the claimed design of the `789 patent as a whole and is infringing for that reason. HOLDING: The importer has not meet its burden, as a condition of entry, to establish non-infringement of the foam footwear because an ordinary observer conversant with the prior art would consider the patented design and the design of the foam footwear presented to be substantially the same. Accordingly, foam footwear styles A, B, C, and D, and E are covered by the claims of the patents at issue such that they are subject to exclusion from entry into the U.S. for consumption, entry for consumption from a foreign trade zone, or withdrawal from a warehouse for consumption. This decision is limited to the specific facts set forth herein. As with any prospective administrative ruling, if the devices in question differ from those described above, or if future importations vary from the facts stipulated to herein, this decision shall not be binding on CBP as provided for in 19 C.F.R. Parts 177.2(b). Sincerely, Charles R. Steuart Chief, Intellectual Property Rights Branch