High Point Design LLC v. Buyer’s Direct, Inc.

N OTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
HIGH POINT DESIGN LLC,
Plaintiff-Appellee
MEIJER, INC., SEARS HOLDINGS CORPORATION,
WAL-MART STORES, INC.,
Third Party Defendants-Appellees
v.
BUYER’S DIRECT, INC.,
Defendant/Third Party Plaintiff-Appellant
______________________
2014-1464
______________________
Appeal from the United States District Court for the
Southern District of New York in No. 1:11-cv-04530-KBF,
Judge Katherine B. Forrest.
______________________
Decided: July 30, 2015
______________________
MARK S. D AVIES , Orrick, Herrington & Sutcliffe LLP,
Washington, DC, argued for plaintiff-appellee and third
party defendants-appellees. Also represented by ROBERT
M. I SACKSON, RACHEL WAINER APTER, N ICHOLAS H. L AM ,
New York, NY; J EFFREY MARK K ADEN, D AVID S. K ASHMAN,

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HIGH POINT DESIGN LLC v. BUYER’ S DIRECT, INC. 2
MARIA A. SAVIO, ARIEL S. P EIKES , Gottlieb Rackman &
Reisman, P.C., New York, NY.
ANDREW M. O LLIS , Oblon, Spivak, McClelland, Maier
& Neustadt, LLP, Alexandria, VA, argued for defend-
ant/third party plaintiff-appellant. Also represented by
T IA D AE F ENTON, L ISA MANDRUSIAK , CHRISTOPHER
RICCIUTI.
_____________________
Before D YK, S CHALL , and CHEN, Circuit Judges.
CHEN, Circuit Judge.
This is the second time this case has been appealed to
our court. In High Point Design LLC v. Buyers Direct,
Inc., 730 F.3d 1301 (Fed. Cir. 2013) (“High Point I”), we
reversed the United States District Court for the South-
ern District of New York’s grant of summary judgment of
invalidity of the design patent belonging to Buyers Direct,
Inc. (BDI). We ruled that the district court made various
errors in finding the claimed design obvious, including
that it applied the wrong legal standard and failed to
adequately explain how it reached the conclusion that the
prior art created “basically the same” visual impression as
the patented design. Id. at 1313–14. We also vacated the
district court’s dismissal of BDI’s trade dress infringe-
ment claim because there was insufficient basis for this
court to review the district court’s decision to deny BDI
the opportunity to amend the complaint. Id. at 1319–20.
On remand, the district court again granted summary
judgment, finding that: (1) the asserted patent was antic-
ipated; (2) the accused products did not infringe; (3) BDI
was not entitled to additional discovery on infringement
issues; and (4) BDI failed to show “good cause” for allow-
ing its amendments to the complaint after the deadline in
the scheduling order. High Point Design LLC v. Buyer’s

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HIGH POINT DESIGN LLC v. BUYER’ S DIRECT, INC. 3
Direct Inc., No. 11 CIV. 4530 KBF, 2014 WL 1244558, at
*7–9 (S.D.N.Y. Mar. 26, 2014) (“Remand Order”).
BDI challenges each of these determinations on ap-
peal. For the reasons set forth below, we reverse sum-
mary judgment of invalidity, affirm summary judgment of
non-infringement, affirm the denial of BDI’s motion for
additional discovery, and affirm the denial of BDI’s mo-
tion to amend the complaint.
I. BACKGROUND
The background of the case is set forth in High Point I
and the Remand Order. We recount below only the facts
pertinent to the issues on appeal.
BDI owns a design patent for the ornamental appear-
ance of a fuzzy slipper, U.S. Patent No. D598,183 (the
D’183 patent). The D’183 patent is entitled “Slipper,” and
recites one claim for “the ornamental design for a slipper,
as shown and described” in eight figures. Exemplary
Figures 1 and 4 are reproduced below:
Fig. 1 Fig. 4
The claimed design discloses two embodiments for the
slipper soles. One embodiment has a sole with two groups
of raised dots (Figure 7 on the left), and the other has a
sole with a smooth bottom (Figure 8 on the right).

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HIGH POINT DESIGN LLC v. BUYER’ S DIRECT, INC. 4
A.
BDI manufactures a slipper called the SNOOZIE®
(Snoozie), which it contends is an embodiment of the
design disclosed in the D’183 patent. An exemplary
Snoozie slipper is shown below:
High Point Design LLC (High Point) manufactures
and distributes the accused FUZZY BABBA® slipper
(Fuzzy Babba). Fuzzy Babba slippers are sold through
various retailers, including Meijer, Sears, and Wal-mart
(collectively Retailers) and are alleged to compete with
Snoozie. An exemplary Fuzzy Babba slipper is shown
below:
After learning about the Fuzzy Babba slippers, BDI
sent a cease and desist letter to High Point asserting
design patent infringement. In response, High Point filed
a complaint in district court seeking declaratory judgment
that the design of the accused slipper does not infringe
the D’183 patent, and that the patent is invalid and/or
unenforceable. BDI then counterclaimed for patent
infringement and infringement of its trade dress for

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HIGH POINT DESIGN LLC v. BUYER’ S DIRECT, INC. 5
Snoozie. BDI also filed a third-party complaint which
alleged that the Retailers infringe the D’183 patent and
BDI’s trade dress by selling Fuzzy Babba slippers.1
B.
On February 28, 2012, the district court issued a
scheduling order which set March 16, 2012, as the dead-
line for parties to amend their pleadings. BDI did not
move to amend its counterclaims by that date. Four days
after the deadline, on March 20, 2012, High Point filed
motions seeking summary judgment of invalidity and
non-infringement of the D’183 patent, and judgment on
the pleadings with respect to BDI’s trade dress claim.
BDI opposed the motion, including with its briefing an
amended complaint that provided added detail describing
the particular trade dress at issue in its trade dress claim.
The district court granted High Point’s motion for
summary judgment of invalidity, finding the patented
design obvious over the prior art. High Point Design LLC
v. Buyer’s Direct, Inc., No. 11 CIV. 4530 KBF, 2012 WL
1820565, at *5 (S.D.N.Y. May 15, 2012) (“2012 Order”).
The district court based its determination on two primary
references: the Laurel Hill and the Penta slippers, both of
which were sold at one point in time by Woolrich (collec-
tively the Woolrich Prior Art).
Laurel Hill Penta
1 High Point and the Retailers are collectively re-
ferred to as High Point for the remainder of this opinion.

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HIGH POINT DESIGN LLC v. BUYER’ S DIRECT, INC. 6
The district court also dismissed BDI’s trade dress
claim as inadequate under the pleading requirements of
Rule 12(b)(6) of the Federal Rules of Civil Procedure
(Federal Rules). Id. at *6. In particular, the district court
found BDI failed to set forth the specific characteristics
and scope of the trade dress at issue as required by Sec-
ond Circuit law. Id. (citing Sherwood 48 Assoc. v. Sony
Corp. of Am., 76 F.App’x. 389, 391 (2d Cir. 2003)). Accord-
ingly, the district court entered final judgment in favor of
High Point. 2012 Order, 2012 WL 1820565, at *6.
BDI appealed the district court’s grant of summary
judgment and the dismissal of its trade dress infringe-
ment claim.
C.
In High Point I, we held that the district court’s obvi-
ousness analysis was flawed for a number of reasons. We
determined that the district court wrongly used an “ordi-
nary observer” standard, instead of the appropriate
“ordinary designer” test for obviousness. High Point I,
730 F.3d at 1313. We also found that the district court’s
verbal description of the D’183 patent translated the
scope of the patented design at “too high a level of ab-
straction” and failed to focus on the distinctive visual
appearance of the design. Id. at 1314 (quoting Apple, Inc.
v. Samsung Elecs. Co., 678 F.3d 1314, 1331–32 (Fed. Cir.
2012)). We also found that the district court failed to
sufficiently explain its determination that the Woolrich
Prior Art created “basically the same” visual impression
as the claimed design. High Point I, 730 F.3d at 1314.
We instructed the district court on remand to (i) apply
the “ordinary designer” test for obviousness, id. at 1313;
(ii) add sufficient detail to its verbal description of the
claimed design “to evoke a visual image consonant with
that design[,]” id. at 1314; and (iii) perform a side-by-side
comparison of the D’183 patent design and the Woolrich

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HIGH POINT DESIGN LLC v. BUYER’ S DIRECT, INC. 7
Prior Art to determine if they create the same visual
impression, id.
As to BDI’s trade dress claim, we concluded that the
appropriate standard in the Second Circuit for addressing
BDI’s request to amend the pleadings was Rule 16(b)’s
good cause standard. Id. at 1318–19 (citing Parker v.
Columbia Pictures Indus., 204 F.3d 326, 340 (2d Cir.
2000)). In doing so, we found the analysis turned on the
fact that BDI was seeking to amend the pleading after the
deadline set forth in the scheduling order. High Point I,
730 F.3d at 1319. But because the district court did not
explain why good cause did not exist under the circum-
stances, we vacated the dismissal and remanded for
reconsideration under that standard. Id. at 1319–20.
D.
On remand, the district court again granted summary
judgment of invalidity. This time the district court found
that the D’183 patent was anticipated by the Woolrich
Prior Art. The district court offered the following descrip-
tion of the claimed design in support of its decision:
To an ordinary observer, the ’183 Patent is the de-
sign of a slipper with a formed body, a protrusion
of fuzz or fluff, and a sole with some solidity. The
outside of the slipper appears durable and looks to
be made of a relatively tough material; the inside
looks soft, plush, and made of a warm material.
The sole appears to be fairly thick and looks stur-
dy.
Remand Order, 2014 WL 1244558, at *6.
Addressing each of the prior art designs in turn, the
district court first determined that the Laurel Hill antici-
pated because it also had “a structured body, a soft-
looking fluff surrounding the opening of the slipper, and a
sole that appears durable and fairly thick.” Id. The
district court then found that the Penta also anticipated,

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HIGH POINT DESIGN LLC v. BUYER’ S DIRECT, INC. 8
concluding that the Penta was even more similar to the
D’183 patent than the Laurel Hill. The court found that
the Penta “conveys the visual effect of a slipper, the body
and sole of which have some defined shape and solidity
but which has a protrusion of fluff or fuzz emanating from
the foot opening.” Id. at *7. Although the district court
noted that a close study of the patented and prior art
designs revealed differences, those differences were
“minor” and insufficient to defeat anticipation. Id.
The district court also ruled in favor of High Point on
grounds that the Fuzzy Babba slipper did not infringe the
patented design. In particular, the district court found:
The Fuzzy Babba conveys the visual effect of an
entirely soft and malleable body with an indistin-
guishable sole; it is soft and malleable all around.
In contrast, the visual effect of the ’183 Patent is
of a formed body and sole with some solidity; and
a body distinct from the sole.
Id.
As to the trade dress claim, the district court found
that BDI failed to demonstrate sufficient diligence to meet
the “good cause” standard. Id. at *8–9. The district court
relied primarily on its conclusion that BDI was on notice,
prior to the deadline, that its trade dress claim was
deficiently pled. Id. The district court found it would be
“plainly inequitable to allow BDI to commit to dates in
[the scheduling order], thereafter ignore them, and then
be given another chance.” Id. at *9. The district court
also denied BDI’s motion for additional discovery on
infringement issues. Id.
Having found the D’183 patent invalid, not infringed,
and the trade dress claim properly dismissed, the district
court entered final judgment in favor of High Point. BDI
timely appealed. We have jurisdiction under 28 U.S.C.
§ 1295(a).

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HIGH POINT DESIGN LLC v. BUYER’ S DIRECT, INC. 9
II. D ISCUSSION
We apply regional circuit law in reviewing a district
court’s grant of summary judgment. Broadcast Innova-
tion 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. Kuebel v. Black
& Decker Inc., 643 F.3d 352, 358 (2d Cir. 2011). All
evidence is construed in the light most favorable to the
non-movant and all reasonable inferences are drawn in
that party’s favor. Id. Summary judgment is appropriate
when no “reasonable jury could return a verdict for the
nonmoving party.” Anderson v. Liberty Lobby, Inc., 477
U.S. 242, 248 (1986).
A. Invalidity
We turn first to the district court’s grant of summary
judgment on anticipation.
Design patents are presumed to be valid. 35 U.S.C.
§ 282(a). A party seeking to invalidate a patent on the
basis of anticipation must do so by clear and convincing
evidence. See Catalina Lighting, Inc. v. Lamps Plus, Inc.,
295 F.3d 1277, 1288 (Fed. Cir. 2002). Design patent
anticipation requires a showing that a single prior art
reference is “identical in all material respects” to the
claimed invention. Door-Master Corp. v. Yorktowne, Inc.,
256 F.3d 1308, 1312 (Fed. Cir. 2001) (quoting Hupp v.
Siroflex of Am., Inc., 122 F.3d 1456, 1461 (Fed. Cir.
1997)). In other words, the two designs must be substan-
tially the same. See Door-Master, 256 F.3d at 1312, 1313
(applying design patent infringement test from Gorham
Mfg. Co. v. White, 81 U.S. 511, 528 (1871), as the test for
anticipation). Two designs are substantially the same “if
the resemblance is such as to deceive [an ordinary observ-
er], inducing him to purchase one supposing it to be the
other[.]” Gorham, 81 U.S. at 528. Anticipation is a ques-
tion of fact. Int’l Seaway Trading Corp. v. Walgreens
Corp., 589 F.3d 1233, 1237 (Fed. Cir. 2009). Summary

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HIGH POINT DESIGN LLC v. BUYER’ S DIRECT, INC. 10
judgment is proper only when the evidence underlying
anticipation is clear and convincing such that no reasona-
ble fact-finder could find otherwise. See SRAM Corp. v.
AD-II Eng’g, Inc., 465 F.3d 1351, 1357 (Fed. Cir. 2006).
Viewing all evidence in the light most favorable to the
non-moving party—BDI—we conclude that a reasonable
jury could have found there was not clear and convincing
evidence of anticipation.
In High Point I, we instructed that on remand, the
district court should “add sufficient detail to its verbal
description of the claimed design to evoke a visual image
consonant with [the] claimed design.” 730 F.3d at 1314.
We also instructed that the district court should perform
a side-by-side comparison of the claimed and prior art
designs as part of the proper obviousness determination.
Id. Notably, we cautioned that there appeared to be
“genuine issues of material fact as to whether the Wool-
rich Prior Art are, in fact, proper primary references” for
obviousness purposes under 35 U.S.C. § 103. Id.
On remand, the district court did not perform a side-
by-side comparison, but concluded that the claimed and
prior art designs share the “same characteristics” because
they share “a structured body, a soft-looking fluff sur-
rounding the opening of the slipper, and a sole that ap-
pears durable and fairly thick.” Remand Order, 2014 WL
1244558, at *6; see also id. at *7.
We find again that the district court fundamentally
erred in its analysis by analyzing the designs from “too
high a level of abstraction” and failing to focus “on the
distinctive visual appearances of the reference and the
claimed design.” High Point I, 730 F.3d at 1314 (quoting
Apple, 678 F.3d at 1331–32). Specifically, the court’s
description does little more than point out the main
concepts of the claimed design: a structured slipper
having fuzzy material at the foot opening. See Durling v.
Spectrum Furniture Co., 101 F.3d 100, 104 (Fed. Cir.

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HIGH POINT DESIGN LLC v. BUYER’ S DIRECT, INC. 12
There are also clear differences between the protrud-
ing fuzz of the claimed and prior art designs. In particu-
lar, the Woolrich Prior Art appears to differ from the
claims in that both prior art slippers have a pronounced
fleece overlap oriented outward and which obscures the
top edge of the foot opening.2 By contrast, no such over-
lap is visible in the patented design.
We also find that the district court failed to take into
consideration the substantial differences between the
ornamental aspects of the soles of the claimed design and
the prior art designs. As we stated in Contessa Food
Prods., Inc. v. Conagra, Inc., “[o]ur precedent makes clear
that all of the ornamental features illustrated in the
figures must be considered in evaluating design patent
infringement.” 282 F.3d 1370, 1378 (Fed. Cir. 2002),
abrogated on other grounds by Egyptian Goddess, Inc. v.
Swisa, Inc., 543 F.3d 665, 672–79 (Fed. Cir. 2008).
The district court did not address the ornamental as-
pects of the soles in the Remand Order, but stated in the
2012 Order that “[t]he only difference between the slip-
pers relates to the sole of the slippers, which is quite
2 We take note that the PTO also found substantial
differences between the claimed and prior art fuzz designs
in determining that the claims are patentable over the
Woolrich Prior Art in reexamination proceedings. See
Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807
F.2d 955, 961 (Fed. Cir. 1986). The PTO’s Notice of Intent
to Issue an Ex Parte Reexamination Certificate was
issued during pendency of this appeal, on August 19,
2014, and was not part of the record on appeal. Pursuant
to Rule 201(b)(2) of the Federal Rules of Evidence, we
take judicial notice of the PTO’s decision. See also Relia-
ble Wholesale, Inc. v. Cornell Corp., 635 F.3d 539, 549
(Fed. Cir. 2011). The Ex Parte Reexamination Certificate
confirming patentability issued on September 25, 2014.

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HIGH POINT DESIGN LLC v. BUYER’ S DIRECT, INC. 13
minor in the context of the overall slipper.” 2012 WL
1820565, at *4. We disagree. There are unmistakable
differences between the sole design of the D’183 patent
and the Woolrich Prior Art. The patent claims one em-
bodiment, shown in Figure 7, where the sole has dots.
Those dots are arranged in a uniformly spaced pattern of
rows and columns in two separate groups. One group is
positioned closer to the front of the slipper, and narrows
slightly toward the toe area. The other group is placed
closer to the rear, and has a corresponding taper toward
the rear area. The other embodiment, shown in Figure 8,
has a smooth sole. Neither of the Woolrich Prior Art
designs has either of these design components.
The prior art designs instead each have their own dis-
tinct ornamental designs. The Laurel Hill sole has em-
bedded within it images of four trees and two moose. The
Laurel Hill also has a grooved border not present in the
claimed design. The Penta sole has a large “WOOLRICH”
image imprinted thereon and is also decorated with a
distinct pattern. Like the Laurel Hill—but unlike the
claimed design—the Penta also has a grooved border.
As we cautioned in High Point I, there appeared to be
genuine issues of material fact regarding whether the
Woolrich Prior Art properly served as base references
under this court’s obviousness law. 730 F.3d at 1314. We
now similarly hold that the evidence is not so clear and
convincing such that a reasonable fact-finder could not
find for BDI on anticipation. For these reasons, we re-
verse summary judgment of invalidity.
B. Infringement
We turn next to the district court’s grant of summary
judgment of non-infringement.
Infringement is a question of fact, Lockheed Martin
Corp. v. Space Sys./Loral, Inc., 324 F.3d 1308, 1318 (Fed.
Cir. 2003), and must be proved by a preponderance of the

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HIGH POINT DESIGN LLC v. BUYER’ S DIRECT, INC. 14
evidence, Egyptian Goddess, 543 F.3d at 678. Summary
judgment of non-infringement is appropriate when no
reasonable fact-finder could find the accused design
substantially similar to the claimed design. See Elmer v.
ICC Fabricating, Inc., 67 F.3d 1571, 1578 (Fed. Cir. 1995).
Infringement of design patents is judged by the same
test as anticipation—whether two designs are “substan-
tially the same.” See Egyptian Goddess, 543 F.3d at 678
(adopting test set forth in Gorham, 81 U.S. at 528 as sole
test for design patent infringement). Under Egyptian
Goddess, where the claimed and accused designs are
“sufficiently distinct” and “plainly dissimilar,” the patent-
ee does not meet its burden of proving infringement. Id.
Only if the claimed and accused designs are not plainly
dissimilar does the inquiry potentially benefit from com-
parison of the claimed and the accused designs in with the
prior art. Id. We agree with the district court that it is
not necessary to resort to a comparison with the prior art
in ruling on infringement here.
The district court conducted a side-by-side comparison
between the claimed design and the accused Fuzzy Babba
slippers, and concluded that “the Fuzzy Babba’s appear-
ance evokes a soft, gentle image, while the D’183 patent
appears robust and durable.” Remand Order, 2014 WL
1244558, at *7. Finding that a consumer would not
confuse the two designs, the court then granted summary
judgment of non-infringement. Id. at *7–8. We agree.
Accused
Fuzzy Babba
design
D’183 patent,
Figure 5

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HIGH POINT DESIGN LLC v. BUYER’ S DIRECT, INC. 15
We conclude that the patented and accused designs
bring to mind different impressions. The Fuzzy Babba
design appears soft and formless, whereas the claimed
design appears structured and formed. These differences
are reflected in the ornamental aspects of each of the
designs. For example, the side profile of the Fuzzy Babba
shows a relatively smooth, downward slope from the rear
toward the front area of the slipper. By contrast, the
D’183 patent design has a relatively defined, curved
opening that is lower in the middle and higher at the
edges. Further, the Fuzzy Babba has a relatively straight
rear line, whereas the rear of claimed design bulges
outward. The front areas of the two designs are also
substantially dissimilar. The Fuzzy Babba has a relative-
ly flatly sloping side profile, whereas the patented design
has a curved profile, roughly following in an ‘S’ curve
shape.
As we did with respect to invalidity, we also find that
there are meaningful differences in the soles which affect
the overall visual effect of the two designs. See Source
Search Tech’s, LLC v. LendingTree, LLC, 588 F.3d 1063,
1075 (Fed. Cir. 2009) (“It is axiomatic that claims are
construed the same way for both invalidity and infringe-
ment.” (citing Amgen Inc. v. Hoechst Marion Roussel, Inc.,
314 F.3d 1313, 1330 (Fed. Cir. 2003)). Unlike the D’183
patent design, the Fuzzy has a continuous distribution of
dots throughout almost the entire length of the sole.
These dots are of a constant width and in one group, in
contrast to the varying width of dot columns displayed in
Figure 7, and in further contrast to the embodiment in
Figure 8 that has a smooth sole and no dots.
We recognize that both designs essentially consist of a
slipper with a fuzzy portion extending upward out of the
foot opening. Such high-level similarities, however, are
not sufficient to demonstrate infringement. See, e.g.,
Apple, 678 F.3d at 1332 (finding error where district court
looked to “general concept” of a tablet, as opposed to the

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HIGH POINT DESIGN LLC v. BUYER’ S DIRECT, INC. 16
distinctive “visual appearance” of the claimed design);
Durling, 101 F.3d at 104.
BDI also argues that the district court erred by not
performing a comparison of the accused Fuzzy Babba
slipper to BDI’s alleged commercial embodiment, the
Snoozie. We have long-cautioned that it is generally
improper to determine infringement by comparing an
accused product with the patentee’s purported commercial
embodiment. See, e.g., Sun Hill Indus., Inc. v. Easter
Unlimited, Inc., 48 F.3d 1193, 1196 (Fed. Cir. 1995)
abrogated on other grounds by Egyptian Goddess, 543
F.3d at 672–79.
If a patentee is able to show that there is no substan-
tial difference between the claimed design and the pur-
ported commercial embodiment, a comparison between
that embodiment and the accused design is permissible.
See L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d
1117, 1125–26 (Fed. Cir. 1993) (“When the patented
design and the design of the article sold by the patentee
are substantially the same, it is not error to compare the
patentee’s and the accused articles directly[.]”); Lee v.
Dayton-Hudson Corp., 838 F.2d 1186, 1189 (Fed. Cir.
1988). Contrary to BDI’s suggestion, however, we have
never mandated such comparisons and decline to do so
here. The proper test for infringement is performed by
measuring the accused products against the claimed
design. Payless Shoesource, Inc. v. Reebok Int’l Ltd., 998
F.2d 985, 990 (Fed. Cir. 1993).
BDI also argues that the district court erred by failing
to take into account how the accused products appeared
as worn. We disagree. Even as worn, there are meaning-
ful differences in the visual impression between the two
designs. The Fuzzy Babba lacks the distinctive ‘S’ curve
of the front area visible in Figure 4 of the claimed design.
Moreover, the protrusion of fuzz in the Fuzzy Babba
remains thicker toward the back then toward the front of

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HIGH POINT DESIGN LLC v. BUYER’ S DIRECT, INC. 17
the foot opening. And critically, there remain the afore-
mentioned differences in the soles of the two designs.
For all these reasons, we affirm the district court’s
grant of summary judgment of non-infringement.
C. Motion for additional discovery
As a related matter, BDI argues that the district court
should have allowed it to take additional discovery “relat-
ed to product presentation and advertising to determine
how the accused slippers are presented to customers”
under Rule 56 of the Federal Rules. Appellant’s Br. at 55.
We apply the law of the regional circuit when review-
ing the district court’s decision under Rule 56. Exigent
Tech., Inc. v. Atrana Solutions, Inc., 442 F.3d 1301, 1310
(Fed. Cir. 2006). In the Second Circuit, denial of leave for
additional discovery under Rule 56 is reviewed for abuse
of discretion. See Miller v. Wolpoff & Abramson, L.L.P.,
321 F.3d 292, 300 (2d Cir. 2003).
We find the district court did not abuse its discretion.
As an initial matter, we agree with High Point’s conten-
tion that the information BDI seeks is generally available
to the public. It is undisputed that the Retailers offer and
sell the accused slippers through brick and mortar stores
and on the Internet. Notably, BDI’s motion for discovery
was filed nearly two years after its counterclaims for
infringement were filed. BDI has presented no reason
why such discovery could not have been previously ob-
tained. See Burlington Coat Factory Warehouse Corp. v.
Esprit De Corp., 769 F.2d 919, 928 (2d Cir. 1985) (“A
party who both fails to use the time available and takes
no steps to seek more time until after a summary judg-
ment motion has been filed need not be allowed more time
for discovery absent a strong showing of need.”).
We further find that there is already sufficient evi-
dence in the record showing how the accused Fuzzy Babba
are sold and presented to customers. See, e.g., A1358,

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HIGH POINT DESIGN LLC v. BUYER’ S DIRECT, INC. 18
A1394–1435, A1440. The discovery sought by BDI is thus
likely duplicative and, in light of our findings above
regarding non-infringement, would not have prevented
summary judgment. See Hudson River Sloop Clearwater,
Inc. v. Dep’t of Navy, 891 F.2d 414, 422 (2d Cir. 1989)
(movant must make a showing that additional discovery
would reasonably expect to create a genuine issue of
material fact).
Accordingly, we find that the district court’s denial of
BDI’s motion for additional discovery was not an abuse of
discretion.
D. Motion to amend the pleadings
We also apply regional circuit law to our review of the
district court’s denial of BDI’s motion to amend the plead-
ings. 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 an abuse of discretion. See Holmes
v. Grubman, 568 F.3d 329, 334 (2d Cir. 2009).
In High Point I, we instructed the district court to
consider whether there was “good cause” under Rule 16(b)
of the Federal Rules for allowing BDI to amend its plead-
ings after the scheduling order deadline. 730 F.3d at
1319–20; see also Fed. R. Civ. P. 16(b)(4) (“A schedule may
be modified only for good cause and with the judge’s
consent”). On remand, the district court denied the
motion on grounds that BDI failed to show sufficient
diligence to meet that standard. Remand Order, 2014 WL
1244558, at *8–9.
The district court’s decision was based on its finding
that High Point had notified BDI before the deadline that
the trade dress claim was insufficiently pled. The district
court found High Point had done so on two separate
occasions before the March 16, 2012, deadline. On Febru-
ary 6, 2012, High Point submitted a reply to BDI’s coun-

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HIGH POINT DESIGN LLC v. BUYER’ S DIRECT, INC. 19
terclaims and alleged that the “look and feel of [BDI’s
Snoozies slippers] does not constitute protectable trade
dress” and that BDI failed to state a claim. Id. at *8
(quoting A142 ¶¶ 17, 21). And on February 16, 2012,
during the initial conference, High Point requested leave
to file to file one or more motions dispositive of all claims
on the face of the pleadings. Id. Given this notice, the
district court found that BDI’s failure to amend by the
March 16, 2012 deadline evidenced a lack of sufficient
diligence to demonstrate good cause.
We conclude that the district court did not abuse its
discretion in denying BDI’s motion to amend. In as-
sessing whether good cause exists “the primary considera-
tion is whether the moving party can demonstrate
diligence.” See id. at *4 (citing Kassner v. 2nd Ave. Deli-
catessen, Inc., 496 F.3d 229, 244 (2d Cir. 2007)).
We first disagree with BDI’s proposition that High
Point was responsible for notifying it, prior to the dead-
line, that the trade dress claim was deficiently pled. We
are aware of no such requirement in the Second Circuit,
and BDI has not presented any compelling reason we
should so hold here.
As to “good cause,” BDI presents no persuasive expla-
nation for why it could not have reasonably met the
agreed-upon deadline. It is undisputed that BDI, as the
manufacturer of the Snoozie slipper, at all times had in
its possession the information necessary to properly plead
the scope of its alleged trade dress protection. See Perfect
Pearl Co. v. Majestic Pearl & Stone, Inc., 889 F. Supp. 2d
453, 457 (S.D.N.Y. 2012) (no good cause shown where “the
proposed amendment rests on information that the party
knew, or should have known, in advance of the deadline.”
(internal quotation marks and citation omitted)). Like-
wise, BDI has no explanation for why it was unaware of
the applicable Second Circuit pleading requirements for
trade dress infringement, which were at all relevant times

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HIGH POINT DESIGN LLC v. BUYER’ S DIRECT, INC. 20
readily available. See Landscape Forms, Inc. v. Columbia
Cascade Co., 113 F.3d 373, 381 (2d Cir. 1997).
Accordingly, we find that the district court did not
abuse its discretion in denying the motion to amend the
complaint.
* * *
We have considered the parties’ remaining arguments
and, in light of the above, find them unpersuasive or
unnecessary to the disposition of this case.
III. CONCLUSION
Because a reasonable fact-finder could conclude that
there was not clear and convincing evidence that the
D’183 patent is anticipated by the Woolrich Prior Art, we
reverse summary judgment of invalidity. And because
there can be no genuine dispute that the claimed and
accused Fuzzy Babba designs are plainly dissimilar, we
affirm summary judgment of non-infringement. We also
affirm the district court’s denial of BDI’s motion for
additional discovery and the denial of BDI’s motion to
amend the complaint.
AFFIRMED IN PART, REVERSED IN PART
COSTS
No costs.

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