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Feb. 23—The maker of popular Crocs foam clogs is planning to fight a recent decision by a patent examiner knocking out the sole claim in its design patent covering the configuration of the soft, casual footwear.
Meanwhile, the Crocs competitor that initiated the re-examination proceeding said it would continue to fight Crocs in pending federal district court proceedings, in which it is arguing not only that the design patent is invalid and unenforceable, but also that Crocs has violated antitrust law in taking action against other footwear companies.
The sole claim design patent covering the configuration of the Crocs clog was rejected because Crocs had made the shoes available for sale more than a year before seeking patent protection, a patent examiner at the Patent and Trademark Office ruled Feb. 11.
The PTO's ruling rejected the sole claim of U.S. Design Patent No. D517,789, which covers the overall shape and design of the clogs based on Section 102(b) of the Patent Act, 35 U.S.C. §102(b).
This provision of the pre-America Invents Act federal patent statute is known as the “on-sale bar,” and it does not allow a patent to be issued if “the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.”
Dave Kaplan, corporate counsel at U.S.A. Dawgs Inc. of Las Vegas, told Bloomberg BNA that the company intends to continue fighting patent and other claims by Crocs.
Dan Hart, the chief legal and administrative officer at Crocs Inc. of Niwot, Colo., told Bloomberg BNA that the company is prepared to appeal to the U.S. Court of Appeals for the Federal Circuit. He noted that the design patent at issue in this proceeding was only “one of its many design patents.”
Applying the ordinary observer test, the examiner found that images posted on the Crocs website, dated from December 2002, anticipated the May 2004 design patent application.
The legal dispute goes back at least to 2006, when Crocs filed a federal district court action against about a dozen shoe makers, including U.S.A. Dawgs. It alleged infringement not only of its design patent but also of a utility patent covering “breathable footwear pieces”. Crocs, Inc. v. Cheng's Enter., Inc., No. 06-00605 (D. Colo. complaint filed April 3, 2006).
U.S.A. Dawgs brought an antitrust claim against Crocs in September. U.S.A. Dawgs, Inc. v. Crocs, Inc., No. 14-01461 (D. Nev. complaint filed Sept. 10, 2014); U.S.A. Dawgs, Inc. v. Crocs, Inc., No. 15-02185 (D. Colo. transferred Oct. 2, 2015).
Crocs also petitioned the International Trade Commission for an exclusion order. That proceeding went up to the Federal Circuit, which reversed the ITC finding that the utility patent was invalid for obviousness and also finding non-infringement of the design patent. Crocs, Inc. v. Int'l Trade Comm'n, 598 F.3d 1294, 93 U.S.P.Q.2d 1777 (Fed. Cir. 2010).
The PTO's ruling was issued by patent examiner Deanna L. Pratt.
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Text of the patent examiner's rejection of the design patent claim is available at: http://src.bna.com/cOM.
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