  United States Court of Appeals
      for the Federal Circuit
                ______________________

            HIGH POINT DESIGN LLC,
      Plaintiff/Counterclaim Defendant-Appellee,

                         AND

MEIJER, INC., SEARS HOLDINGS CORPORATION,
         AND WAL-MART STORES, INC.,
         Third Party Defendants-Appellees,

                          v.

              BUYERS DIRECT, INC.,
        Defendant/Counterclaimant-Appellant.
               ______________________

                      2012-1455
                ______________________

   Appeal from the United States District Court for the
Southern District of New York in No. 11-CV-4530, Judge
Katherine B. Forrest.
             _____________________________

             Decided: September 11, 2013
            _____________________________

     JEFFREY M. KADEN, Gottlieb Rackman & Reisman,
P.C., of New York, New York, argued for plain-
tiff/counterclaim defendant-appellee and third-party
defendants-appellees. With him on the brief were DAVID
S. KASHMAN and STEVEN STERN.
2              HIGH POINT DESIGN LLC   v. BUYER'S DIRECT, INC.

    ANDREW M. OLLIS, Oblon, Spivak, McClelland, Maier
& Neustdt L.L.P, of Alexadria, Virginia, argued for de-
fendant/counterclaimant-appellant. With him on the brief
were FRANK J. WEST and PHILIPPE J.C. SIGNORE.
                 ______________________

Before O’MALLEY, SCHALL, and WALLACH, Circuit Judges.
SCHALL, Circuit Judge.
    Buyer’s Direct, Inc. (“BDI”) appeals from a final
judgment of the United States District Court for the
Southern District of New York holding BDI’s asserted
design patent invalid on summary judgment and also
dismissing BDI’s trade dress claims with prejudice. See
High Point Design LLC v. Buyer’s Direct, Inc., No. 11-CV-
4530, 2012 WL 1820565 (S.D.N.Y. May 15, 2012) (“Final
Decision”). For the reasons set forth below, we reverse the
grant of summary judgment of invalidity, vacate the
dismissal of BDI’s trade dress claims, and remand for
further proceedings consistent with this opinion.
                      BACKGROUND
               I. BDI AND THE ’183 PATENT
    BDI is the owner of U.S. Design Patent No. D598,183
(the “’183 patent”) and the manufacturer of slippers
known as SNOOZIES®.            An exemplary pair of
SNOOZIES® slippers is shown below:
HIGH POINT DESIGN LLC   v. BUYER'S DIRECT, INC.         3




    The ’183 patent recites one claim, for “the ornamental
design for a slipper, as shown and described.” Two of the
drawings included in the ’183 patent are shown below:
4              HIGH POINT DESIGN LLC   v. BUYER'S DIRECT, INC.




    As additional design features, the ’183 patent disclos-
es two different soles: a smooth bottom (as shown in
Figure 8) and a sole with two groups of raised dots (as
shown in Figure 7):




BDI alleges that SNOOZIES® are an embodiment of the
design disclosed in the ’183 patent.
HIGH POINT DESIGN LLC   v. BUYER'S DIRECT, INC.          5

       II. THE RELATIONSHIP BETWEEN THE PARTIES
    High Point Design LLC (“High Point”) manufactures
and distributes the accused FUZZY BABBA® slippers,
which are sold through various retailers, including appel-
lees Meijer, Inc., Sears Holdings Corporation, and Wal-
Mart Stores, Inc. (collectively, the “Retail Entities”). An
exemplary pair of FUZZY BABBA® slippers is shown
below:




     On June 22, 2011, after becoming aware of the manu-
facturing and sale of FUZZY BABBA® slippers, BDI sent
High Point a cease and desist letter, in which BDI assert-
ed infringement of the ’183 patent. With a responsive
letter sent on July 6, 2011, High Point included a copy of
a complaint for declaratory judgment that it had filed five
days earlier in federal district court.1 In the complaint,
High Point alleged (1) that the manufacturing and sale of
FUZZY BABBA® slippers did not infringe the ’183 patent
and (2) that the ’183 patent is invalid and/or unenforcea-
ble.
    In its answer to High Point’s declaratory judgment
complaint, filed on December 29, 2011, BDI lodged coun-
terclaims for infringement of the ’183 patent and for



   1    High Point did not immediately serve the com-
plaint on BDI.
6              HIGH POINT DESIGN LLC   v. BUYER'S DIRECT, INC.

infringement of the trade dress found in BDI’s
SNOOZIES® slippers. That same day, BDI filed a third-
party complaint alleging that the Retail Entities infringed
the ’183 patent and infringed BDI’s trade dress based on
sales of High Point’s FUZZY BABBA® slippers.
          III. THE DISTRICT COURT PROCEEDINGS
     In a scheduling order that issued on February 28,
2012, the district court set March 16, 2012, as the dead-
line for the parties to amend their pleadings. BDI did not
seek to amend its pleadings by that date. Four days after
that deadline, High Point and the Retail Entities filed a
combined motion seeking (1) summary judgment of inva-
lidity and noninfringement of the ’183 patent and (2)
judgment on the pleadings with respect to BDI’s trade
dress claims. With its opposition to the motion, BDI
included the declaration of an expert named Lance Rake,
who opined that the ’183 patent was not invalid because
the “tests for anticipation, functionality and obviousness
have not been met.” See J.A. 455. BDI also included
amended pleadings with proposed amendments adding
additional assertions as to the trade dress at issue in
BDI’s trade dress claims.
     On May 15, 2012, the district court granted the mo-
tion for summary judgment, holding the ’183 patent
invalid on the ground that the design claimed in it was
both (1) obvious in light of the prior art and (2) primarily
functional rather than primarily ornamental. See Final
Decision, 2012 WL 1820565, at *3–5. As to the obvious-
ness ruling, the district court made various findings. The
court characterized the ’183 patent as disclosing “slippers
with an opening for a foot that contain a fuzzy (fleece)
lining and have a smooth outer surface.” Id. at *1. As to
the prior art, the court found that a consumer apparel
company, known as Woolrich, had, prior to the effective
filing date of the ’183 patent, sold two different models of
footwear: the “Penta” and the “Laurel Hill” (collectively,
the “Woolrich Prior Art”). Id. at *2. The Penta and the
Laurel Hill models are shown in photographs below:
HIGH POINT DESIGN LLC   v. BUYER'S DIRECT, INC.   7




J.A. 486–87 (Penta).
8              HIGH POINT DESIGN LLC   v. BUYER'S DIRECT, INC.




J.A. 490–91 (Laurel Hill). The court found that the Penta
“looks indistinguishable from the drawing shown in the
’183 Patent,” and that the Laurel Hill, “while having
certain differences with the Penta slipper that are insub-
stantial and might be referred to as streamlining, none-
theless has the precise look that an ordinary observer
would think of as a physical embodiment of the drawings
shown on the ’183 Patent.” Final Decision, 2012 WL
1820565, at *2.
     The district court also identified two secondary refer-
ences—U.S. Design Patent Nos. D566,934 and D540,517
(collectively, the “Secondary References”)—that disclose
“slippers with a pattern of small dots on the bottom
HIGH POINT DESIGN LLC   v. BUYER'S DIRECT, INC.            9

surface.” Final Decision, 2012 WL 1820565, at *2. Rep-
resentative drawings from the Secondary References are
shown below:




U.S. Design Patent No. D566,934 fig. 1.




U.S. Design Patent No. D540,517 fig. 1. Based on these
findings, the court concluded that the design in the ’183
patent was invalid as obvious:
       The overall visual effect created by the Wool-
   rich prior art is the same overall visual effect cre-
   ated by the ’183 patent. To an ordinary observer,
   they are the same slippers. The only difference
   between the slippers relates to the sole of the slip-
   pers, which is quite minor in the context of the
   overall slipper. Even if, however, this Court were
10              HIGH POINT DESIGN LLC   v. BUYER'S DIRECT, INC.

     to find that the differences in the sole design were
     of any note, the design of the dots on the ’183 pa-
     tent are anticipated by the dots on the [Secondary
     References].
         Since both of those design patents were noted
     on the face of the ’183 patent, and since both re-
     late to slippers, they would have been available to
     a slipper designer skilled in the art—and would
     have easily suggested the addition of “dots” to the
     sole of a slipper. Combining the dots shown on
     those two design patents with the prior art in the
     Woolrich slipper would have been obvious to any
     designer. That combination would have created a
     slipper with a virtually identical visual impres-
     sion as [the] ’183 patent.
Final Decision, 2012 WL 1820565, at *4–5.
    As to the second, and alternative, basis for invalidi-
ty—based on the alleged functionality of the design in the
’183 patent—the district court concluded that “all major
characteristics of th[e] slipper [in the ’183 patent] are
functional.” Id. at *5. Specifically, the court identified
various design features and the functions those features
allegedly perform:
     It is a slipper that completely covers the foot; that
     is a functional design to provide complete foot
     warmth and protection. That’s the primary func-
     tion of innumerable slippers. The slipper at issue
     has a fuzzy interior for comfort—again, a func-
     tional characteristic that many slippers share.
     The fuzz overflows can be characterized as “orna-
     mental,” but can also be characterized as func-
     tional—i.e., as providing an extra element of
     comfort. It certainly cannot be said that the slip-
     per shown in the ’183 patent drawings is “primari-
     ly ornamental.”
Id. With that, the court held the claims invalid as pri-
marily functional.
HIGH POINT DESIGN LLC   v. BUYER'S DIRECT, INC.           11

    In the Final Decision, the district court also dismissed
BDI’s trade dress claims with prejudice. Id. at *6. The
court found that the original trade dress claims (i.e., prior
to the proposed amendments) were inadequate as a
matter of law for failure to sufficiently identify the trade
dress at issue. Id. As to the proposed amendments, the
court stated: “At this stage of the litigation, the Court is
unwilling to entertain an amendment to the pleadings
and therefore dismisses this claim with prejudice.” Id.
    Having held the ’183 patent invalid, the district court
dismissed BDI’s claims for infringement and entered
judgment in favor of High Point and the Retail Entities.
Id. BDI timely appealed from the district court’s rulings.
We have jurisdiction under 28 U.S.C. § 1295(a)(1).
                         DISCUSSION
                 I. STANDARDS OF REVIEW
    On appeal, BDI challenges both the grant of summary
judgment of invalidity and the dismissal with prejudice of
its trade dress claims. This court reviews a district
court’s grant of summary judgment under the law of the
regional circuit. Broadcast Innovation, L.L.C. v. Charter
Commc’ns, Inc., 420 F.3d 1364, 1366 (Fed. Cir. 2005). The
Second Circuit reviews a grant of summary judgment
without deference, construing the evidence in the light
most favorable to the non-movant and drawing all rea-
sonable inferences in that party’s favor. Kuebel v. Black
& Decker Inc., 643 F.3d 352, 358 (2d Cir. 2011). Sum-
mary judgment may only be granted when no “reasonable
jury could return a verdict for the nonmoving party.”
Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986).
    When reviewing procedural issues not unique to this
court’s jurisdiction, such as a motion to amend the plead-
ings, we apply the law of the regional circuit. See Ultimax
Cement Mfg. Corp. v. CTS Cement Mfg. Corp., 587 F.3d
1339, 1354 (Fed. Cir. 2009). The Second Circuit reviews
the denial of an untimely request to amend a pleading for
12             HIGH POINT DESIGN LLC   v. BUYER'S DIRECT, INC.

an abuse of discretion. See Holmes v. Grubman, 568 F.3d
329, 334 (2d Cir. 2009).
    We first consider the grant of summary judgment of
invalidity on the design patent claims.
          II. INVALIDITY BASED ON OBVIOUSNESS
                            A.
    When assessing the potential obviousness of a design
patent, a finder of fact employs two distinct steps: first,
“one must find a single reference, a something in exist-
ence, the design characteristics of which are basically the
same as the claimed design”; second, “[o]nce this primary
reference is found, other references may be used to modify
it to create a design that has the same overall visual
appearance as the claimed design.” Durling v. Spectrum
Furniture Co., 101 F.3d 100, 103 (Fed. Cir. 1996) (internal
quotations omitted); see also Apple, Inc. v. Samsung Elecs.
Co., 678 F.3d 1314, 1329 (Fed. Cir. 2012).
    Under the first step, a court must both “(1) discern the
correct visual impression created by the patented design
as a whole; and (2) determine whether there is a single
reference that creates ‘basically the same’ visual impres-
sion.” Durling, 101 F.3d at 103. The ultimate inquiry in
an obviousness analysis is “whether the claimed design
would have been obvious to a designer of ordinary skill
who designs articles of the type involved.” Id., quoted in
Apple, 678 F.3d at 1329.
                            B.
    BDI asserts that the district court erred by using the
Woolrich Prior Art as primary references because their
design characteristics are not “basically the same as the
claimed design,” as required under the first step set forth
in Durling. Specifically, BDI relies on the Rake Declara-
tion to argue that various design features distinguish the
’183 patent from the Woolrich Prior Art, including differ-
ences in (1) the fleece collars, (2) the height of the side-
walls, and (3) the thickness of the soles. According to
HIGH POINT DESIGN LLC   v. BUYER'S DIRECT, INC.          13

BDI, these alleged differences create genuine issues of
material facts as to whether the Woolrich Prior Art can
properly serve as primary references.
    Next, BDI asserts that the district court identified no
motivation to modify the Woolrich Prior Art to achieve the
“same overall visual appearance as the claimed design,”
as required under the second step set forth in Durling.
According to BDI, the court erred by ignoring the design
features that distinguish the ’183 patent from the Wool-
rich Prior Art, and finding that the only differences relate
to the soles.
    BDI also argues that the district court failed to per-
form a proper obviousness analysis. First, BDI asserts
that the court erred by applying an “ordinary observer”
standard, because this court’s case law requires applica-
tion of an “ordinary designer” standard in an obviousness
analysis relating to a design patent. See Final Decision,
2012 WL 1820565, at *4 (“To an ordinary observer, they
are the same slippers.”); see also id. at *5 (rejecting the
Rake Declaration because it “does not get [BDI] over the
hurdle of the ordinary observer test”). Second, BDI ar-
gues that the district court failed to properly communi-
cate its reasoning in either step of the obviousness
analysis. Finally, BDI asserts that the court erred by not
addressing secondary considerations, including copying
and commercial sales.
    In response, High Point and the Retail Entities (col-
lectively, the “Appellees”) assert that either the Penta or
the Laurel Hill could act as the primary reference for the
obviousness analysis because they are both “basically the
same as the claimed design,” which, according to the
Appellees, is all that is required under the first step. The
Appellees assert that BDI seeks to apply a “virtual identi-
ty” standard in the first step, rather than the proper
standard, which allows for minor differences. According
to the Appellees, under this court’s case law, a district
court can assess the “overall visual appearance,” as re-
14              HIGH POINT DESIGN LLC   v. BUYER'S DIRECT, INC.

quired by the second step under Durling, without expert
testimony and “almost instinctively.”
    The Appellees also argue that the district court
properly discounted the Rake Declaration because obvi-
ousness should be assessed from the vantage point of the
ordinary observer, not an ordinary designer such as Mr.
Rake. According to the Appellees, the district court
properly applied the ordinary observer standard to find
obviousness based on the combination of either the Penta
or the Laurel Hill with the Secondary References.
    As to secondary considerations, the Appellees argue
that BDI failed to show the nexus necessary to demon-
strate that either the alleged copying or the commercial
sale of SNOOZIES® support the nonobviousness of the
’183 patent. Specifically, the Appellees assert that BDI
has not established that SNOOZIES® actually embody
the ’183 patent, as is necessary to support BDI’s nonobvi-
ousness arguments.
                             C.
    We first address the standard applied by the district
court here. The use of an “ordinary observer” standard to
assess the potential obviousness of a design patent runs
contrary to the precedent of this court and our predeces-
sor court, under which the obviousness of a design patent
must, instead, be assessed from the viewpoint of an
ordinary designer. See Apple, 678 F.3d at 1329 (“In
addressing a claim of obviousness in a design patent, ‘the
ultimate inquiry . . . is whether the claimed design would
have been obvious to a designer of ordinary skill who
designs articles of the type involved.’”) (quoting Durling,
101 F.3d at 103); Titan Tire Corp. v. Case New Holland,
Inc., 566 F.3d 1372, 1380–81 (Fed. Cir. 2009) (same); In re
Borden, 90 F.3d 1570, 1574 (Fed. Cir. 1996) (“The central
inquiry in analyzing an ornamental design for obvious-
ness is whether the design would have been obvious to ‘a
designer of ordinary skill who designs articles of the type
involved.’”) (quoting Avia Grp. Int’l, Inc. v. L.A. Gear Cal.,
HIGH POINT DESIGN LLC   v. BUYER'S DIRECT, INC.           15

Inc., 853 F.2d 1557, 1564 (Fed. Cir. 1988), abrogated on
other grounds by Egyptian Goddess, Inc. v. Swisa, Inc.,
543 F.3d 665 (Fed. Cir. 2008) (en banc)); In re Nalbandi-
an, 661 F.2d 1214, 1216 (CCPA 1981) (explicitly rejecting
the “ordinary observer” standard for assessing the obvi-
ousness of design patents, as set forth in In re Laverne,
356 F.2d 1003 (CCPA 1966), and holding: “In design
[patent] cases we will consider the fictitious person identi-
fied in § 103 as ‘one of ordinary skill in the art’ to be the
designer of ordinary capability who designs articles of the
type presented in the application.”); see also L.A. Gear,
Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 1124 (Fed.
Cir. 1993) (“In applying the law of § 103 to the particular
facts pertinent to the patented design, obviousness vel
non is reviewed from the viewpoint of a designer of ordi-
nary skill or capability in the field to which the design
pertains.”) (citing Nalbandian, 661 F.2d at 1216). Given
this precedent, the district court erred in applying the
ordinary observer standard to assess the obviousness of
the design patent at issue.2
    Although obviousness is assessed from the vantage
point of an ordinary designer in the art, “an expert’s
opinion on the legal conclusion of obviousness is neither
necessary nor controlling.” Avia Grp., 853 F.2d at 1564.
That said, an expert’s opinion may be relevant to the



    2   We do not believe our decision in International
Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233,
1240 (Fed. Cir. 2009), cited by the district court, compels
a contrary conclusion. The International Seaway court
may in fact have had the “designer of ordinary skill”
standard in mind when it used the term “ordinary observ-
er.” In any event, the court could not rewrite precedent
setting forth the designer of ordinary skill standard. See
Vas Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed.
Cir. 1991); Newell Cos., Inc. v. Kenney Mfg. Co., 864 F.3d
757, 765 (Fed. Cir. 1998).
16             HIGH POINT DESIGN LLC   v. BUYER'S DIRECT, INC.

factual aspects of the analysis leading to that legal con-
clusion. See Peterson Mfg. Co. v. Cent. Publ’g, Inc., 740
F.2d 1541, 1547 (Fed. Cir. 1984), abrogated on other
grounds by Beatrice Foods Co. v. New England Printing
and Lithographing Co., 899 F.2d 1171, 1177–78 (Fed. Cir.
1990) (“In civil litigation involving a design [patent], an
expert’s testimony is most helpful, as in the determina-
tion of obviousness with respect to any other type of
invention, to explain the technology, the scope and con-
tent of the prior art, the differences between the prior art
and the invention, and the level of skill in the art.”). For
that reason, the district court erred by categorically
disregarding the Rake Declaration. See Final Decision,
2012 WL 1820565, at *5.
     We now turn to what we conclude were additional er-
rors in the district court’s application of the two-step
analysis set forth in Durling. As to the first part of the
first step—“discern[ing] the correct visual impression
created by the patented design as a whole”—the district
court erred by failing to translate the design of the ’183
patent into a verbal description. See Durling, 101 F.3d at
103 (“From this translation, the parties and appellate
courts can discern the internal reasoning employed by the
trial court to reach its decision as to whether or not a
prior art design is basically the same as the claimed
design.”). The closest to the necessary description was the
court’s comment characterizing the design in the ’183
patent as “slippers with an opening for a foot that can
contain a fuzzy (fleece) lining and have a smooth outer
surface.” Final Decision, 2012 WL 1820565, at *1; see also
id. at *2 (“The slipper shown has a smooth exterior and a
fuzzy interior.”). This, however, represents “too high a
level of abstraction” by failing to focus “on the distinctive
visual appearances of the reference and the claimed
design.” Apple, 678 F.3d at 1331–32; see also Durling, 101
F.3d at 104 (“The error in the district court’s approach is
that it construed [the] claimed design too broadly. The
district court’s verbal description of [the] claimed design
does not evoke a visual image consonant with the claimed
HIGH POINT DESIGN LLC   v. BUYER'S DIRECT, INC.           17

design. Instead, the district court’s description merely
represents the general concept of a sectional sofa with
integrated end tables.”). On remand, the district court
should add sufficient detail to its verbal description of the
claimed design to evoke a visual image consonant with
that design. See Durling, 101 F.3d at 103–04 (describing
the necessary process).
    As to the second part of the first step—“determin[ing]
whether there is a single reference that creates ‘basically
the same’ visual impression”—the court erred by failing to
provide its reasoning, as required under this court’s
precedent. See id. at 103 (“[T]he judge must communicate
the reasoning behind the decision. This explanation
affords the parties a basis upon which to challenge, and
also aids the appellate court in reviewing, the judge’s
ultimate decision.”). Absent such reasoning, we cannot
discern how the district court concluded that the Woolrich
Prior Art was “basically the same as the claimed design,”
so that either design could act as a primary reference. On
remand, the district court should do a side-by-side com-
parison of the two designs to determine if they create the
same visual impression. See, e.g., Apple, 678 F.3d at 1330
(comparing images of the claimed design to images of the
asserted primary references); Titan Tire, 566 F.3d at
1375, 1382–83 (same); Durling, 101 F.3d at 102 (same);
Borden, 90 F.3d at 1572–73 (same); In re Harvey, 12 F.3d
1061, 1067–68 (Fed. Cir. 1993) (same); In re Rosen, 673
F.2d 388, 389 (CCPA 1982) (same); Nalbanian, 661 F.2d
at 1215 (same). In addition, based on the record before
us, there appear to be genuine issues of material fact as to
whether the Woolrich Prior Art are, in fact, proper prima-
ry references. For this additional reason, summary
judgment must be reversed. See Durling, 101 F.3d at 105
(“Without . . . a primary reference, it is improper to inval-
idate a design patent on grounds of obviousness.”).
   To the extent that the obviousness of the ’183 patent
remains at issue on remand, the district court will, after
properly completing the first step under Durling, be in a
18             HIGH POINT DESIGN LLC   v. BUYER'S DIRECT, INC.

better position to assess whether or not the Woolrich Prior
Art, modified by the Secondary References, provide a
design with the “same overall visual appearance as the
claimed design,” as required under the second step of
Durling.3 See Durling, 101 F.3d at 103.
    Finally, we turn to secondary considerations, which
the district court did not address in the Final Decision.
This court has held that “evidence rising out of the so-
called ‘secondary considerations’ must always when
present be considered en route to a determination of
obviousness.” Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d
1530, 1538 (Fed. Cir. 1983); see also Hupp v. Siroflex of
Am., Inc., 122 F.3d 1456, 1462 (Fed. Cir. 1997) (“Invalidi-
ty based on obviousness of a patented design is deter-
mined on factual criteria similar to those that have been
developed as analytical tools for reviewing the validity of
a utility patent under § 103, that is, on application of the
Graham factors.”). Here, BDI alleged both commercial
success of the claimed design as well as copying. To the
extent that the obviousness of the ’183 patent remains at
issue on remand, the district court should address any
evidence of secondary considerations.
    For the foregoing reasons, we reverse the grant of
summary judgment of obviousness and remand the case
to the district court.
         III. INVALIDITY BASED ON FUNCTIONALITY
                            A.
   An inventor can, upon meeting all statutory require-
ments, obtain a design patent for “any new, original and
ornamental design for an article of manufacture . . . .” 35



     3   Having setting forth the proper framework for the
obviousness analysis, we take no position on whether the
district court could or should find obviousness under the
proper standard.
HIGH POINT DESIGN LLC   v. BUYER'S DIRECT, INC.              19

U.S.C. § 171 (emphasis added). Based on this require-
ment, a design patent can be declared invalid if the
claimed design is “primarily functional” rather than
“primarily ornamental,” i.e., if “the claimed design is
‘dictated by’ the utilitarian purpose of the article.” See
L.A. Gear, 988 F.2d at 1123; see also Rosco, Inc. v. Mirror
Lite Co., 304 F.3d 1373, 1378 (Fed. Cir. 2002) (character-
izing the “dictated by” standard as a “stringent” one);
Hupp, 122 F.3d at 1460 (“A design or shape that is entire-
ly functional, without ornamental or decorative aspect,
does not meet the statutory criteria of a design patent.”).
When performing this assessment, a court should view
the claimed design “in its entirety, for the ultimate ques-
tion is not the functional or decorative aspect of each
separate feature, but the overall appearance of the article
. . . .” L.A. Gear, 988 F.2d at 1123; see also Berry Sterling
Corp. v. Pescor Plastics, Inc., 122 F.3d 1452, 1456 (Fed.
Cir. 1997) (“While analyzing elements of the design may
be appropriate in some circumstances, the determination
of whether the patented design is dictated by the function
of the article of manufacture must ultimately rest on an
analysis of its overall appearance.”).
    Assessing various factors may help determine wheth-
er a claimed design, as a whole, is “dictated by” functional
considerations:
    [1] whether the protected design represents the
    best design; [2] whether alternative designs would
    adversely affect the utility of the specified article;
    [3] whether there are any concomitant utility pa-
    tents; [4] whether the advertising touts particular
    features of the design as having specific utility; [5]
    and whether there are any elements in the design
    or an overall appearance clearly not dictated by
    function.
PHG Techs., LLC v. St. John Cos., 469 F.3d 1361, 1366
(Fed. Cir. 2006) (quoting Berry Sterling, 122 F.3d at
1456).
20             HIGH POINT DESIGN LLC   v. BUYER'S DIRECT, INC.

                             B.
    On appeal, BDI argues that the district court erred by
finding the claimed design invalid merely because the
design contains elements that perform functions. BDI
asserts that consideration of the second, third, and fifth
factors from PHG Technologies compels the conclusion
that the claimed design is primarily ornamental. As to
the second factor, BDI asserts that various catalogs show
numerous alternative slipper and shoe designs that
adequately perform the goal of warming a foot. As to the
third factor, BDI argues that no utility patents cover
SNOOZIES®. Finally, as to the fifth factor, BDI contends
that the overall appearance of any footwear has ornamen-
tal aspects that, although necessary to perform a function,
can vary widely in both placement and design.
    In response, the Appellees argue that the district
court applied the correct standard to find the claimed
design invalid as primarily functional. According to the
Appellees, various aspects of the design are clearly “func-
tional elements:” (1) the seam connects two components;
(2) the curved front accommodates the foot; (3) the foot
opening facilitates ingress and egress; (4) the forward
lean of the heel keeps that part in place, and (5) the fleece
provides warmth. The Appellees assert that the fourth
point further supports the district court’s conclusion
because, in the Appellees’ view, BDI’s advertising touts
“functional characteristics” of the SNOOZIES®. Finally,
the Appellees argue that the presence of alternative
designs is not dispositive as to functionality.
                             C.
    Instead of assessing whether the claimed design was
“primarily functional” or “primarily ornamental,” see L.A.
Gear, 988 F.2d at 1123, the district court interpreted this
court’s case law to require it to determine whether the
design’s “primary features” can perform functions. See
Final Decision, 2012 WL 1820565, at *5 (stating that the
evidence “leaves little doubt that all major characteristics
HIGH POINT DESIGN LLC   v. BUYER'S DIRECT, INC.              21

of this slipper are functional”); see also id. (“It is a slipper
that completely covers the foot; that is a functional design
to provide complete foot warmth and protection. That’s
the primary function of innumerable slippers. The slipper
at issue has a fuzzy interior for comfort—again, a func-
tional characteristic that many slippers share.”). This
analysis contravenes this court’s precedent:
    [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 . . . .
Avia Grp., 853 F.2d at 1563; see also Hupp, 122 F.3d at
1460 (“[T]he fact that the article of manufacture serves a
function is a prerequisite of design patentability, not a
defeat thereof. The function of the article itself must not
be confused with ‘functionality’ of the design of the arti-
cle.”); L.A. Gear, 988 F.2d at 1123 (“[T]he utility of each of
the various elements that comprise the design is not the
relevant inquiry with respect to a design patent.”). Be-
cause the district court applied the incorrect standard and
because a reasonable jury could, under the correct stand-
ard, find the ’183 patent not invalid based on functionali-
ty, we reverse the court’s ruling that the ’183 patent is
invalid by reason of functionality. To the extent invalidity
based on functionality remains at issue between the
parties on remand, the district court should apply the
standard set forth above.
        IV. DISMISSAL OF THE TRADE DRESS CLAIMS
                              A.
    When considering trade dress claims, which are not
unique to the exclusive jurisdiction of this court, we defer
to the law of the regional circuit in which the district
court sits. See OddzOn Prods., Inc. v. Just Toys, Inc., 122
F.3d 1396, 1407 (Fed. Cir. 1997). Applying Supreme
Court precedent, the Second Circuit has stated that
22             HIGH POINT DESIGN LLC   v. BUYER'S DIRECT, INC.

although “[t]rade dress ‘originally included only the
packaging, or dressing, of a product,’ . . . it has been
expanded to encompass . . . the design and configuration
of the product itself.” Yurman Design, Inc. v. PAJ, Inc.,
262 F.3d 101, 114 (2d Cir. 2001) (citing Wal-Mart Stores,
Inc. v. Samara Bros., Inc., 529 U.S. 205, 209 (2000)). In a
claim for trade dress infringement, like those lodged by
BDI, a party essentially asserts that another party has
misappropriated trade dress and thereby caused confu-
sion as to the source of the product. See Wal-Mart, 529
U.S. at 209–10 (discussing 15 U.S.C. § 1125(a)(1)(A)4).
    To properly state a claim for trade dress infringement
in the Second Circuit, a party must set forth “‘a precise
expression of the characteristics and scope of the claimed
trade dress.’” Sherwood 48 Assocs. v. Sony Corp. of Am.,
76 F. App’x 389, 391 (2d Cir. 2003) (quoting Landscape
Forms, Inc. v. Columbia Cascade Co., 113 F.3d 373, 381
(2d Cir. 1997)); see also Yurman Design, 262 F.3d at 117–
18 (holding that “a plaintiff asserting that a trade dress
protects an entire line of different products must articu-
late the specific common elements sought to be protected,”
and that “the artistic combination of cable [jewelry] with




     4   This section recites: “Any person who, on or in
connection with any goods or services, or any container for
goods, uses in commerce any word, term, name, symbol,
or device, or any combination thereof, or any false desig-
nation of origin, false or misleading description of fact, or
false or misleading representation of fact, which is likely
to cause confusion, or to cause mistake, or to deceive as to
the affiliation, connection, or association of such person
with another person, or as to the origin, sponsorship, or
approval of his or her goods, services, or commercial
activities by another person . . . shall be liable in a civil
action by any person who believes that he or she is or is
likely to be damaged by such act.”
HIGH POINT DESIGN LLC   v. BUYER'S DIRECT, INC.            23

other elements” did not sufficiently set forth the trade
dress at issue).
     BDI’s original trade dress claims stated that
SNOOZIES® “have a distinctive, immediately recogniza-
ble overall look and feel that constitutes protectable trade
dress that distinguishes BDI’s SNOOZIES® slippers from
those of competitors.” BDI filed its proposed amend-
ments on April 20, 2012, in response to a motion for
judgment on the pleadings filed on March 20, 2012, four
days after the deadline for the parties to amend their
claims. In those proposed amendments, BDI added the
following description of the characteristics of its trade
dress that it contends may be protectable:
    The protectable trade dress of the SNOOZIES
    slipper comprises: (1) a smooth, generally unbro-
    ken surface that defines an upper body, and which
    also connects to the bottom surface to form a con-
    tiguous form; (2) a seam line set slightly above the
    base which runs around the circumference of the
    bottom of the slipper, resulting in a smooth tran-
    sition between upper and lower; (3) a distinctive
    curve that defines the front of the slipper, running
    from the bottom-front, upwards, and back across
    the front of the slipper before turning into an ac-
    celerated upward curve to the foot opening; (4) an
    oversized foot opening that is larger than func-
    tionally necessary; (5) a forward “lean” to the heel
    area; and (6) a protrusion of fleece material from
    the lining of the slipper over the sides.
J.A. 437 ¶ 25; J.A. 448 ¶ 44.
                                B.
    BDI asserts that the district court improperly dis-
missed its trade dress claims even though (1) substantial
discovery remained, (2) the Appellees would not be preju-
diced by the amendment of its pleadings, and (3) BDI
offered its proposed amendments within 30 days of the
motion for judgment on the pleadings. According to BDI,
24             HIGH POINT DESIGN LLC   v. BUYER'S DIRECT, INC.

the district court treated the proposed amendments as a
motion to amend, for which the court should “freely give
leave when justice so requires.” See Fed. R. Civ. P.
15(a)(2); see also Final Decision, 2012 WL 1820565, at *6
(“At this stage of the litigation, the Court is unwilling to
entertain an amendment to the pleadings and therefore
dismisses this claim with prejudice.”). The amendments
should have been permitted, argues BDI, because they
were neither futile nor prejudicial, and would not have
delayed the procedural schedule.
     According to the Appellees, the district court did not
view the proposed amendments as a motion to amend, but
rather as a motion to modify the scheduling order, under
which BDI had to show “good cause” for the requested
modification. Citing Holmes v. Grubman, 568 F.3d 329,
334–35 (2d Cir. 2009), the Appellees argue that “the
Second Circuit has routinely held that it is appropriate to
deny leave to amend a pleading when the deadline set
forth in the scheduling order has already passed, and the
requesting party cannot meet the requirement under
[Federal] Rule [of Civil Procedure] 16(b)(4) that a court’s
scheduling order shall not be modified except upon a
showing of good cause.” Appellee Br. 34. The Appellees
argue that BDI has not shown good cause to modify the
scheduling order to allow the proposed amendments after
the deadline to amend pleadings because BDI did not
diligently assess the legal requirements for pleading trade
dress claims in the Second Circuit.
                            C.
    On appeal, the parties focus on the standards that
they respectively believe the court should have applied
when addressing BDI’s request to amend its pleadings.
As set forth below, we agree with the Appellees that the
appropriate standard is Rule 16(b)’s good cause require-
ment. We therefore vacate and remand to the district
court to determine whether that standard can now be
satisfied given the now-ongoing nature of this litigation.
HIGH POINT DESIGN LLC   v. BUYER'S DIRECT, INC.          25

    In Parker v. Columbia Pictures Industries, 204 F.3d
326, 340 (2d Cir. 2000), Circuit Judge (now Justice)
Sotomayor brought the Second Circuit in line with other
circuits on the issue most pertinent to this case, holding
that “despite the lenient standard of Rule 15(a), a district
court does not abuse its discretion in denying leave to
amend the pleadings after the deadline set in the schedul-
ing order where the moving party has failed to establish
good cause.” See also Holmes, 568 F.3d at 334–355; 6A
Charles A. Wright et al., Federal Practice and Procedure §
1522.2 (3d ed. 1998) (“Indeed, to the extent that other
federal rules, such as Rule 15 governing pleading
amendments, contain a more lenient standard than good
cause, the Rule 16(b) standard controls any decisions to
alter a scheduling order for purposes of making pleading
amendments and it must be satisfied before determining
whether an amendment should be permitted under Rule
15.”) (citing Holmes). None of the cases cited by BDI
involve a party seeking to amend a pleading after the
deadline set forth in a court-issued scheduling order.6 It
is this fact that distinguishes the situation here, and



   5    Although the analysis in Holmes discusses the
need to “balance[]” Federal Rules 15(a) and 16(b), it is
clear that the court assessed whether good cause existed.
See Holmes, 568 F.3d at 335 (“The record is devoid of
evidence supporting plaintiffs’ contention that good cause
existed for the District Court to modify its scheduling
order. Accordingly, we affirm the District Court's denial
of Holmes’s motion to amend.”).
   6    For example, Hughes v. Anderson, 449 F. App’x 49
(2d Cir. 2011)—on which BDI relies for the proposition
that a district court cannot dismiss a claim with prejudice
without providing notice, an opportunity to be heard, and
an opportunity to file an amended pleading—dealt with a
sua sponte dismissal by the district court on grounds not
raised by the defendant. Id. at 51.
26              HIGH POINT DESIGN LLC   v. BUYER'S DIRECT, INC.

necessitates, under Parker and Holmes, the application of
the “good cause” standard.
     As previously mentioned, according to Second Circuit
law, we must determine whether the district court abused
its discretion in denying BDI’s motion to amend. See
Parker, 204 F.3d at 339. As also noted above, in denying
BDI’s motion to amend its pleadings, the district court
stated: “At this stage of the litigation, the Court is unwill-
ing to entertain an amendment to the pleadings and
therefore dismisses the claim with prejudice.” Final
Decision, 2012 WL 1820565, at *6. The district court’s
ruling did not explain whether it was refusing to allow
BDI to amend its complaint under Rule 15(a)’s more
lenient standard, or Rule 16(b)’s good cause standard.
Even if the district court was implicitly applying the good
cause standard under Rule 16(b), moreover, the court
failed to explain why good cause did not exist under the
circumstances here. Without some explanation of the
district court’s reasoning, we cannot properly assess
whether an abuse of discretion occurred. See Harriscom
Svenska AB v. Harris Corp., 947 F.2d 627, 630 (2d Cir.
1991) (reviewing a district court’s certification under
Federal Rule of Civil Procedure 54(b), and stating,
“[a]bsent an explanation by the district court, we have no
basis for conducting a meaningful review of the district
court’s exercise of its discretion”); see also S.C. Johnson &
Son, Inc. v. Carter-Wallace, Inc., 781 F.2d 198, 201 (Fed.
Cir. 1986) (vacating a denial of attorney fees and remand-
ing to provide sufficient reasoning to assess whether the
court abused its discretion).
    When assessing whether good cause has been shown,
“the primary consideration is whether the moving party
can demonstrate diligence.” See Kassner v. 2nd Ave.
Delicatessen, Inc., 496 F.3d 229, 244 (2d Cir. 2007) (citing
Parker, 204 F.3d at 339–40); see also Holmes, 568 F.3d at
335 (“Whether good cause exists turns on the ‘diligence of
the moving party.’”) (quoting Grochowski v. Phoenix
Constr., 318 F.3d 80, 86 (2d Cir. 2003)); Parker, 204 F.3d
HIGH POINT DESIGN LLC   v. BUYER'S DIRECT, INC.           27

at 340 (“[W]e agree with [other circuit] courts that a
finding of ‘good cause’ depends on the diligence of the
moving party.”). A district court can, however, “consider
other relevant factors including, in particular, whether
allowing the amendment of the pleading at this stage of
the litigation will prejudice defendants.” Kassner, 496
F.3d at 244. A review of the Second Circuit case law from
Parker forward reveals that notice of the asserted claim
and prejudice to the non-moving party remain factors to
consider in addition to the movant’s diligence. The only
explanation provided by the district court for its refusal to
allow BDI’s amendment was its timing vis-à-vis the “stage
of litigation.”
     Accordingly, we vacate the district court’s dismissal of
the trade dress claim and remand for reconsideration.
The court may now weigh High Point’s notice of BDI’s
trade dress claim and initial belief that its original com-
plaint encompassed such a claim and the absence of
apparent prejudice to High Point against the fact that
BDI had always been in possession of the information
added in the proposed amendments and could have asked
to clarify its pleading sooner. We also leave to the district
court in the first instance the question of whether, if
dismissal remains appropriate, that dismissal should be
without prejudice.
                         CONCLUSION
    For the foregoing reasons, we reverse the grant of
summary judgment of invalidity, vacate the dismissal of
BDI’s trade dress claims, and remand for further proceed-
ings consistent with this opinion.
  REVERSED-IN-PART, VACATED-IN-PART, AND
                REMANDED
                            COSTS
    Each party shall bear its own costs.
