Plaintiff-Appellant International Seaway Trading Corporation (“Seaway”) filed suit against Walgreens Corporation (“Walgreens”) and Touchsport Footwear USA, Inc. (“Touchsport”) claiming infringement of Seaway’s patents, U.S. Design Patents Nos. D529,263 (“the ’263 patent”), D545,032 (“the ’032 patent”), and D545,033 (“the ’033 patent”). The district court granted summary judgment for defendants, finding that the claims of the asserted patents were invalid under 35 U.S.C. § 102 as anticipated by a patent assigned to Crocs, Inc. (“Crocs”), U.S. Design Patent No. D517,789 (“the Crocs ’789 patent”). Int’l Seaway Trading Corp. v. Walgreens Corp., 599 F. Supp. 2d 1307, 1319 (S.D. Fla. 2009).
On appeal, Seaway contends that the district court erred by basing its invalidity determination solely on the ordinary observer test and by failing to apply the point of novelty test. We agree with the district court that the point of novelty test should not be utilized for anticipation, and that only the ordinary observer test applies. However, while we conclude that the exterior appearance of the patented designs would be substantially similar to the prior art in the eyes of an ordinary observer, we conclude that the district court erred in failing to compare the insoles of the patents-in-suit with the prior art from the perspective of the ordinary observer. Accordingly, we affirm-in-part, vacate-in-part, and remand.
