Orrick Secures Federal Circuit Patent Win for Major Retailers

07.30.15

Orrick's IP and Appellate teams secured a win at the Federal Circuit for clients High Point, Wal-Mart, Sears and Meijer, who were accused of infringing the patented design and trade dress of Snoozies!®, a slipper sock product.

At the district court Orrick won on summary judgment where the court found that the patent was invalid, not infringed, there was no good cause to allow plaintiff to amend its pleadings so it could properly articulate its trade dress claim, and plaintiff was not entitled to additional discovery on infringement issues.

The plaintiff’s appeal was focused on how the slipper socks would appear throughout their normal lifespan (e.g., on a foot) and that when worn their shape became too close to that of the patented design such that summary judgment of no infringement was inappropriate.  The plaintiff also argued that the district court erred by failing to compare the accused slippers with the Snoozies!®, the commercial embodiment of the patented design, which is an analysis that the Federal Circuit has approved of in past cases.

Using barely two-thirds of his allotted time, Orrick appellate partner Mark Davies argued before the Federal Circuit that the case was clear cut.  He explained that, regardless of whether the accused slipper socks were worn or not worn, they could never take on a shape that was substantially similar to the patented design, and no evidence that plaintiff could have obtained would show otherwise.  He emphasized that the Court has never mandated a comparison of accused product with the commercial embodiment of the patented design.  He reemphasized the non-infringement argument and pointed out that there was simply no reason why the plaintiff, who had full knowledge of its purported trade dress, could not properly state a claim prior to the agreed upon deadline for amended pleadings.

The Federal Circuit affirmed on all issues except invalidity, where it found summary judgment inappropriate because a jury could reach a different result, effectively ending the parties’ dispute.

The Orrick team was led by Intellectual Property partner Rob Isackson and Supreme Court and Appellate partner Mark Davies, and included Supreme Court and Appellate associate Rachel Wainer Apter and Intellectual Property associate Nick Lam.  Further support was provided by Eric Shumsky, Ian Fein, Kelly Daley, Daniel Rubens, Robert Loeb, Naomi Mower, Katherine Kopp, Jim Cangialosi and Amy Gerrish.