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High Point Design LLC v. Buyer's Direct Inc.

United States District Court, S.D. New York

March 26, 2014

BUYER'S DIRECT INC., Defendant. BUYER'S DIRECT INC., Counterclaim Plaintiff Third-Party Plaintiff,



Defendant Buyer's Direct Inc. ("defendant" or "BDI") owns a design patent for a fuzzy slipper. The patent is entitled "Slipper" and consists of a single claim: "the ornamental design for a slipper, as shown and described." (Patent No. U.S. D598, 183 S (the 183 Patent), Declaration of Robert M. Isackson ("Isackson Decl."), Ex. 1, dated November 25, 2013, ECF No. 86-1.) Defendant also makes a slipper it contends (and to the Court's surprise, no party disputes) is a commercial embodiment of the 183 Patent, "Snoozies."

Plaintiff High Point Design LLC ("plaintiff" or "High Point"), and third-party defendants Meijer, Inc., Sears Holdings Corporation, and Wal-Mart Stores, Inc. (collectively "third-party defendants"), sell a fuzzy slipper known as the "Fuzzy Babba." On July 1, 2011, High Point commenced the underlying lawsuit seeking a declaratory judgment of patent invalidity and non-infringement. (See Compl. ¶¶ 20-33, July 1, 2011, ECF No. 1.) Defendant BDI counterclaimed for infringement of the 183 Patent and of protectable trade dress. (BDI Ans., Dec. 29, 2011, ECF No. 13.)

On May 15, 2012, this Court granted summary judgment to plaintiff on the basis that the 183 Patent was obvious - and therefore invalid. (5/15/12 Mem. & Order, May 15, 2012, ECF No. 27.) The Court also dismissed BDI's trade dress claim on the basis that BDI failed to specify characteristics and the scope of the trade dress at issue. (Id.) Plaintiff appealed. (ECF No. 50.) On September 11, 2013, the Federal Circuit reversed and remanded the Court's decision on the basis that the Court applied the "ordinary observer" test to the question of obviousness in the context of a design patent, whereas it should have applied the "ordinary designer" test. High Point Design LLC v. Buyer's Direct, Inc. , 730 F.3d 1301, 1313 (Fed. Cir. 2013). (See also ECF No. 53.) As to the trade dress claim, the Federal Circuit instructed that the Court should consider the motion for leave to amend pursuant to Rules 15 and 16 of the Federal Rules of Civil Procedure and to set forth its rationale as to why "good cause did not exist under the circumstances here." High Point Design LLC , 730 F.3d at 1318. The case came back before the Court and the parties embarked on another round of motion practice.

Now pending before this Court are six motions: plaintiff and third-party defendants have moved for summary judgment or dismissal of BDI's claims on the grounds that the 183 Patent: (1) is invalid due to obviousness, when using the ordinary designer standard; (2) is invalid due to its anticipation by prior art, using the ordinary observer test; and (3) is not infringed upon by the Fuzzy Babba slipper, using the ordinary observer test. They also allege that the trade dress claim is facially defective and should be dismissed pursuant to Rule 12(c) of the Federal Rules of Civil Procedure. Defendant BDI has moved for leave to amend its trade dress claim and also for discovery pursuant to Rule 56(d) of the Federal Rules of Civil Procedure before this Court renders a decision on the pending motions for summary judgment.

For the reasons set forth below, the Court GRANTS summary judgment to plaintiff and third-party defendants as to anticipation and thus renders the patent invalid. For that reason, and based on the ordinary observer standard, the Court finds that there is no triable issue of fact as to infringement. The Court need not and declines to rule on the question of obviousness - the first two rulings are sufficient to dispose of the patent claims in this case. There is no discovery necessary to resolution of the invalidity or infringement motions; the Court therefore DENIES defendant's motion for discovery pursuant to Rule 56(d).

The Court DENIES defendant's motion to amend its trade dress claim on the basis that such motion is untimely: the parties agreed to a case management schedule that provided for all pleading amendments to occur by a date certain. That date came and went; only after it had passed, and after plaintiff made a dispositive motion against those pleadings, did defendant seek leave to amend. On these particular facts, the motion comes too late. Finally, the trade dress claim as pled is deficient as a matter of law and must be dismissed; plaintiff and third-party defendants' motion in that regard is therefore GRANTED.


The following facts and background are undisputed or indisputable. Any competing inferences are drawn in favor of the non-movant. See Geneva Pharm. Tech. Corp. v. Barr Labs. Inc. , 386 F.3d 485, 495 (2d Cir. 2004) (citing Anderson v. Liberty Lobby, Inc. , 477 U.S. 242, 255 (1986)).

On January 22, 2009, Marshal P. Bank, BDI's President, filed an application for a design patent entitled "Slipper." (Pl.'s R. 56.1 Stmt. No. 1; Def.'s R. 56.1 Stmt. No. 1; Isackson Decl., Ex. 1.) On August 18, 2009, for reasons the Court frankly cannot fathom, the Patent and Trademark Office ("PTO") granted the application and issued the 183 Patent for said slipper. (See Isackson Decl., Ex. 1.) The slipper design appears to be like that of many slippers which have been commercially available for years - the Court focuses here on the two examples submitted by plaintiff: the Woolrich Penta and the Laurel Hill slippers.

Patent 183 consists of the single claim (as set forth above) and the following eight figures:

On June 11, 2011, defendant BDI (owner of the 183 Patent by assignment) sent a letter to plaintiff High Point alleging that it was infringing the 183 Patent. (Pl.'s R. 56.1 Stmt. No. 4; Def.'s R. 56.1 Stmt. No. 4.) Plaintiff High Point quickly brought this lawsuit for declarations of invalidity and non-infringement. (See Compl. ¶¶ 20-33.) BDI - positioned as a defendant - then counterclaimed for a finding of infringement of both the 183 Patent and what it asserted was protectable trade dress. (See BDI Ans.) On February 6, 2012, in its Answer to the counterclaims, plaintiff and now counterclaim-defendant, High Point, asserted, inter alia, that the "look and feel of [counterclaim] plaintiff's SNOOZIES slippers does not constitute protectable trade dress" and that BDI had failed to state a claim. (Reply of Plaintiff/Counterclaim Defendant High Point Design LLC ("Pl.'s Reply") ¶¶ 17, 21, Feb. 6, 2012, ECF No. 20.) At a pre-trial conference held on February 16, 2012, High Point requested leave to file one or more motions it asserted would be dispositive of the entire case on the basis of the pleadings. The Court set March 20, 2012 as the deadline to file such motion(s). (See 2/16 Scheduling Order, Feb. 16, 2012, ECF No. 28.)

On February 28, 2012, the parties agreed to and jointly submitted a proposed case management and scheduling order ("CMO"). (Stipulation & Schedule, Feb. 28, 2012, ECF No. 29.) The CMO established March 16, 2012 as the last date upon which the parties could amend their pleadings. (See id. at 2.) Thus, not later than February 28, 2012, BDI knew (1) High Point believed its trade dress pleadings were deficient; (2) High Point intended to move against the pleadings as to all claims by March 20, 2012; and (3) March 16, 2012 was the last date upon which BDI could file any amended pleadings.

High Point and the third-party defendants have pointed to two slippers sold by Woolrich in 2006 and 2007 as prior art references relevant to this Court's consideration of invalidity. One of the Woolrich slippers, the Penta, appeared in a catalogue (and was thus commercially available) in 2006. (Isackson Decl., Ex. 2.) The second Woolrich slipper, the Laurel Hill, appeared in a catalogue in 2007. (Id.) Both show remarkable resemblance to the 183 Patent figures.

Side-by-side comparisons of each of these two slippers against the slipper shown in the 183 Patent are included as Exhibit 3 of the Isackson Declaration. (See Isackson Decl., Ex. 3.)

A side by side comparison of the slipper shown in the 183 Patent and the Fuzzy Babba slipper is contained in Exhibit 4 of the Isackson Declaration. (See Isackson Decl., Ex. 4.)


A. Summary Judgment Standard

Summary judgment may be granted where there are no triable issues of fact and the moving party is entitled to judgment as a matter of law. Fed.R.Civ.P. 56(c). A triable issue of fact must be an issue of material fact - it must be more than a scintilla of evidence or evidence that is merely colorable. See Anderson , 477 U.S. at 249-50. In determining whether there is an issue of material fact, a court must view the evidence in the light most favorable ...

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