AVIA GROUP INTERNATIONAL, INC. v. L.A. GEAR CALIFORNIA, INC.,

853 F.2d 1557 (Fed. Cir. 1988)

[*1559] NIES, Circuit Judge.

L.A. Gear California, Inc. (LAG) appeals the decision of the United States District Court for the Central District of California, Pensa, Inc. v. L.A. Gear of California, Inc., 4 USPQ2d 1016 (C.D.Cal. 1987), granting the motion of Avia Group International, Inc. (formerly Pensa, Inc.) for summary judgment holding United States Design Patent Nos. 284,420 ('420) and 287,301 ('301) valid as between the parties and willfully infringed, and the case exceptional under 35 U.S.C. @ 285 (1982). We affirm.

Avia owns the '420 patent, claiming an ornamental design for an athletic shoe outer sole, and the '301 patent, claiming an ornamental design for an athletic shoe upper, by assignment from the inventor, James Tong. LAG ordered and sold shoes, Model No. 584 "Boy's Thrasher" ("Thrasher") and Model No. [**2] 588 "Boy's Thrasher Hi-Top" ("Hi-Top"), designed and manufactured for it by Sheng Chun Chemical Ind. Corp. in Taiwan. Avia filed suit against LAG alleging, inter alia, that both of LAG's models infringed its '420 design patent and that LAG's Hi-Top model also infringed the '301 design. LAG counterclaimed for a declaratory judgment that the two patents were not infringed and were invalid because the designs were both obvious and functional. Avia moved for partial summary judgment on the patent validity and infringement issues and for attorney fees.

Finding no bona fide dispute as to any material fact and that Avia had shown entitlement to judgment as a matter of law, the court granted Avia's motion after a hearing. It determined that the infringement was willful and that the case was exceptional within the meaning of 35 U.S.C. @ 285 (1982), thus providing the basis for an award of attorney fees. The court also issued a permanent injunction enjoining further infringement by LAG. Because the court reserved decision on the amounts to be awarded as damages and as attorney [*1560] fees, these matters are not involved in this appeal. n1

A patent is presumed valid. 35 U.S.C. @ 282 (1982). In an infringement action, it is not part of a patent owner's initial burden of going forward with proof of its case to submit evidence supporting validity. Rather, the burden is first on a challenger to introduce evidence which raises the issue of invalidity. Further, a challenger must establish facts, by clear and convincing evidence, which persuasively lead to the conclusion of invalidity. See, e.g., Perkin-Elmer Corp. v. Computervision Corp., 732 F.2d 888, 894, 221 USPQ 669, [**11] 674 (Fed.Cir.), cert. denied, 469 U.S. 857, 83 L. Ed. 2d 120, 105 S. Ct. 187 (1984). Thus, "[a challenger's] silence leaves untouched at this stage what the statute presumes, namely, that [the] patent is valid." Roper Corp. v. Litton Sys., Inc., 757 F.2d 1266, 1270, 225 USPQ 345, 347 (Fed.Cir. 1985) (footnote omitted).

With this understanding of the parties' obligations, LAG's argument that Avia unfairly waited for rebuttal to present its evidence regarding validity clearly fails. Avia had no obligation to introduce any evidence initially on validity. Such evidence was required only in response to LAG's evidence. See Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1534, 218 USPQ 871, 875 (Fed. Cir. 1983).

Where a challenger does put in evidence disputing validity, the presumption of validity is neither eliminated nor undermined by the challenger's evidence, as LAG argues. This is so because the presumption is a procedural device, which assigns the burden of going forward as well as the burden of proof of facts to the challenger. See ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d 1572, 1574-75, 221 USPQ 929, 930-31 (Fed. Cir. 1984); Stratoflex, 713 F.2d at 1534, 218 USPQ at 875-76. [**12] Moreover, the presumption is one of law, not fact, and does not constitute "evidence" to be weighed against a challenger's evidence. Nevertheless, a patent having issued, the challenger bears the burden of persuasion that the established facts lead to a conclusion of invalidity.

The patents in suit are design patents. Under 35 U.S.C. @ 171 (1982), a patent may be obtained on the design of an article of manufacture which is "new, original and ornamental" and "nonobvious" within the meaning of section 103, which is incorporated by reference into section 171. LAG attacks the validity of the patents for the subject designs covering parts of shoes on the grounds (1) that the designs are primarily functional rather than ornamental and (2) that the designs would have been obvious from the prior art.

A. Ornamental versus Functional Designs

We dispose first of LAG's argument that the record shows genuine issues of material fact with respect to whether the subject designs are ornamental within the meaning of section 171. LAG points only to conclusory, conflicting statements in affidavits, which create no genuine issue for trial, and

LAG correctly asserts that if a patented design is "primarily functional," rather than primarily ornamental, the patent is invalid. See Power Controls Corp. v. Hybrinetics, Inc., 806 F.2d 234, 238, 231 USPQ 774, 777 (Fed. Cir. 1986). When function dictates a design, protection would not promote the decorative arts, a purpose of the design patent statute. See 1 D. Chisum, Patents @ 1.04[2] at 1-194.1 to 1.195 (1986). There is no dispute that shoes are functional and that certain features of the shoe designs in issue perform functions. However, a distinction exists between the functionality of an article or features thereof and the functionality of the particular design of such article or features 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, see, e.g., Pacific Furniture Mfg. Co. v. Preview Furniture Corp., 800 F.2d 1111, 231 [**14] USPQ 67 (Fed.Cir. 1986) (design patent for chairs), or to obtain both design and utility patents on the same article, see, e.g., Carman Indus., Inc. v. Wahl, 724 F.2d 932, 938-39, 220 USPQ 481, 486-87 (Fed.Cir. 1983); In re Dubois & Will, 46 C.C.P.A. 744, 262 F.2d 88, 90, 120 USPQ 198, 200 (1958).

With respect to functionality of the design of the '301 patent, the court stated:

On the design of the '420 patent, the court made a similar analysis of various features and concluded:

"But every function which [LAG] says is achieved by one of the component aspects of the sole in this case could be and has been achieved by different components. And that is a very persuasive rationale for the holding that the design overall is not primarily functional. Moreover, there is no function which even defendant assigns to the swirl effect around the pivot point, which swirl effect is a very important aspect of the design.
. . . .
. . . This is a unique and pleasing design and it's [sic] patentability in my view is not offset or destroyed by the fact that the utility patent is utilized and incorporated in this aesthetically pleasing design.
Plaintiff has given us evidence of other shoes that incorporate the utility patent and its concavity -- others of its own shoes -- but with a totally different design, and has thus established that the utility patent does not make the design patent invalid in this case."

Pensa, Inc., 4 USPQ2d at 1019-20. We agree that the designs in suit have not persuasively been [**16] shown to be functional and that no genuine issue of material fact is present with respect to this issue.

B. Obviousness

Design patents must meet a nonobvious requirement identical to that applicable to utility patents. Accordingly, 35 U.S.C. @ 103 (1982) applies to determine whether the designs of the '420 and '301 patents would have been obvious to one of ordinary skill in the art. See, e.g., Litton Sys., Inc. [*1564] v. Whirlpool Corp., 728 F.2d 1423, 1440-41, 221 USPQ 97, 108 (Fed. Cir. 1984); In re Nalbandian, 661 F.2d 1214, 1215, 211 USPQ 782, 783 (CCPA 1981); 1 D. Chisum, @ 1.04[2] at 1-198. The court found no genuine issue of material fact was raised with respect to the four factors to be considered in determining obviousness: the scope and content of the prior art, the differences between the prior art and claims at issue, the level of ordinary skill in the art when the invention was made, and secondary indicia, such as commercial success and copying. See Graham, 383 U.S. at 17; Litton Sys., 728 F.2d at 1441, 221 USPQ at 108.

LAG attempts to create a dispute as to the content of the prior art through the court's statement that "all of the shoes referred [**17] to as prior art in the record below had come out after the Model 750 [commercial embodiment of the '420 patent] was on the market." LAG mischaracterizes the court's statement. The court restricted that statement to shoes mentioned by inventor Tong in deposition answers. Pensa, Inc., 4 USPQ2d at 1020. The court also noted that LAG's deposition questions were "so generally worded as to be almost meaningless." Id. at 1024. Neither LAG's failure to ask specific questions during discovery nor its mischaracterization of the court's decision can create a genuine issue of fact.

With respect to a design, obviousness is determined from the vantage of "the designer of ordinary capability who designs articles of the type presented in the application." In re Nalbandian, 661 F.2d at 1216, 211 USPQ at 784. LAG acknowledges that standard, but asserts that the court is required to defer to its expert testimony. As we have stated, however, an expert's opinion on the legal conclusion of obviousness is neither necessary nor controlling. See, e.g., Petersen, 740 F.2d at 1547-48, 222 USPQ at 567.

Further, a conflict in the legal opinions of experts creates no dispute of fact. See [**18] Union Carbide Corp. v. American Can Co., 724 F.2d 1567, 1572, 220 USPQ 584, 589 (Fed.Cir. 1984). LAG argues that the designs would have been obvious because they are "traditional ones consisting of features old in the art." That some components of Avia's designs exist in prior art references is not determinative. "If the combined teachings suggest only components of the claimed design but not its overall appearance, a rejection under section 103 is inappropriate." In re Cho, 813 F.2d 378, 382, 1 USPQ2d 1662, 1663 (Fed.Cir. 1987). There is no evidence that the overall appearances of the '420 and '301 designs would have been suggested to ordinary shoe designers by the references.

LAG does not contest the commercial success of Avia's shoes manufactured according to the patented designs, but argues the success is attributable to factors other than the designs themselves, such as advertising. Although commercial success is relevant only if a nexus is proven between the success of the patented product and the merits of the claimed invention, see, e.g., Simmons Fastener Corp. v. Illinois Tool Works, Inc., 739 F.2d 1573, 1575, 222 USPQ 744, 746 (Fed.Cir. 1984), [**19] cert. denied, 471 U.S. 1065, 85 L. Ed. 2d 496, 105 S. Ct. 2138 (1985), Avia did present evidence tending to prove nexus and LAG's conclusory statements to the contrary fail to create a genuine factual dispute. In addition, the trial court referred to the accused products as "copies" of the patented designs. Pensa, Inc., 4 USPQ2d at 1021. Copying is additional evidence of nonobviousness. See, e.g., Windsurfing Int'l, Inc. v. AMF, Inc., 782 F.2d 995, 1000, 228 USPQ 562, 565 (Fed.Cir.), cert. denied, 477 U.S. 905, 91 L. Ed. 2d 565, 106 S. Ct. 3275 (1986). LAG's conclusory characterization of the evidence as "speculative" is insufficient to create a genuine factual dispute.

On the basis of its evaluation of the four factors outlined above, the court held that the ordinary designer would not have found the '420 or '301 designs, considered as whole designs, obvious in light of the differences between the prior art and the claimed designs. We agree. No genuine issue of material fact or error of law has been shown in the district court's ruling.[*1565]

The Supreme Court established the test for determining infringement of a design patent in Gorham Co. v. White, 81 U.S. (14 Wall.) 511, 20 L. Ed. 731 (1871):

"if, in the eye [**20] 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 one patented is infringed by the other."

Id. at 528. In addition to overall similarity of designs, "the accused device must appropriate the novelty in the patented device which distinguishes it from the prior art." Shelcore, Inc. v. Durham Indus., Inc., 745 F.2d 621, 628 n. 16, 223 USPQ 584, 590 n. 17 (Fed.Cir. 1984); Litton Sys., 728 F.2d at 1444, 221 USPQ at 109. Absent the presence of the novel features in the accused products, a patented design has not been appropriated.

The district court correctly applied the above test for infringement of the subject patented designs, stating:

"I find them as to the ['420] sole virtually identical. In each instance [LAG has] appropriated the novelty of the patented article. One needs only to look at the two soles to see that the infringement exists. But if it is necessary to particularize it we have in the incriminated or accused sole copying of the swirl effect, copying of the separate [**21] coloration and configuration of the pivot point, though without the red dot. And we have in the accused sole the whole general appearance, which is almost a direct copy of the patented sole.

As to the ['301] upper, in my view the same language could be used. It is almost a direct copy. It is much more than the substantially-the-same standard."

Pensa, Inc., 4 USPQ2d at 1021. Thus, the court found that LAG's shoes had overall similarity to the patented designs and incorporated the novel features thereof as well. For the '420 patent, those features included the swirl effect and the pivot point; for the '301 patent, the novelty consists, in light of the court's analysis of validity, of the combination of saddle, eyestay, and perforations.

LAG asserts that a patent owner has the burden to prove infringement by preponderant evidence, Lee v. Dayton-Hudson Corp., 838 F.2d 1186, 1187, 5 USPQ2d 1625, 1625 (Fed.Cir. 1988), and that Avia failed to meet that burden. On a motion for summary judgment, however, the question is not the "weight" of the evidence, but the presence of a genuine issue of material fact. A patent owner must, of course, present sufficient evidence to make a [**22] prima facie case. Here, besides its patents and the accused shoes, Avia presented evidence in the form of an expert's declaration analyzing infringement and deposition testimony of LAG's president, in which he confused LAG's Thrasher and Avia's Model 750. In addition, the court performed its own comparison of LAG's shoes to the patented designs. LAG merely challenges the "weight" accorded the expert's declaration and the ultimate finding of infringement. Neither argument raises a genuine issue of material fact which requires a trial.

Finally, LAG points to undisputed evidence that Avia's Model 750 shoe, made in accordance with the patent, and LAG's accused Models 584 and 588, are intended for different customers. The former are for tennis players; the latter are for children. That fact, per LAG, renders the products not "substantially the same," as necessary under Gorham. LAG's understanding of Gorham is grossly in error. To find infringement, the accused shoes need only appropriate a patentee's protected design, not a patentee's market as well. See Unette Corp. v. Unit Pack Co., 785 F.2d 1026, 1028, 228 USPQ 933, 934 (Fed.Cir. 1986). The products of the parties [**23] need not be directly competitive; indeed, an infringer is liable even when the patent owner puts out no product. A fortiori, infringement is not avoided by selling to a different class of purchasers than the patentee.

Having considered the above and all other arguments of appellant, LAG, we are [*1566] unpersuaded of error in the district court's judgment of infringement.

For the foregoing reasons, we affirm the grant of summary judgment to Avia in all respects.

AFFIRMED.