On September 22, 2008, the US Court of Appeals for the Federal Circuit (CAFC) released its highly anticipated en banc ruling in the landmark design patent case Egyptian Goddess, Inc. (EGI) v. Swisa Inc. The court tossed aside its own precedent in holding that the “point of novelty test, as a second and free-standing requirement for proof of design patent infringement” is inconsistent with the benchmark “ordinary observer test” laid down in the seminal US Supreme Court case Gorham Co. v. White and “should no longer be used in the analysis of a claim of design patent infringement.”

Judge William C. Bryson wrote the court’s opinion that provided an in-depth review of the development of the point of novelty test as a separate and distinct test from the ordinary observer test for proving design patent infringement. In rebuffing Swisa’s contention that the point of novelty test was adopted as early as 1893 by the US Supreme Court in Smith v. Whitman Saddle Co., the court traced the origins of the test to one of its own cases “of quite recent vintage.” In Litton Systems, Inc. v. Whirlpool Corp., decided in 1984, the CAFC held that proof of similarity under the ordinary observer test was not enough to establish design patent infringement.  The accused design had to also “appropriate the novelty in the patented device which distinguishes it from the prior art.”

As noted by the court, application of the point of novelty test after Litton has proven easy in simple cases “in which the claimed design is based on a single prior art reference and departs from that reference in a single respect.” But where multiple features and multiple prior art references come into play, the point of novelty test can lead to disagreements over which prior art applies to define the novelty of a design and whether a combination of features, or the overall appearance of a design, constitute the point of novelty of a claimed design.

By rejecting the point of novelty test as the second part of a design patent infringement analysis, the court agreed with the position of EGI and several amici who argued that the “ordinary observer test can fulfill the purposes for which the point of novelty test was designed, but with less risk of confusion.” The focus of the ordinary observer test simply needs to be performed from the “perspective of an ordinary observer who is familiar with the prior art.” In this regard, when the designs are sufficiently distinct, it will be clear that the patentee has not proven that the two designs would appear “substantially the same” to an ordinary observer, as required by the ordinary observer test. But when the claimed and accused designs are not “plainly dissimilar,” what is substantially the same to an ordinary observer “conversant in the prior art” will now rely on a comparison of the claimed and accused designs in the framework of the prior art. 

The court emphasized that, although the ordinary observer test in this form will still often resort to a comparison of the claimed and accused designs against prior art, the test “is not a test for determining validity, but is designed solely as a test of infringement.” And by switching the burden of production of the prior art considered pertinent to the comparison from the patentee to the accused infringer, the court hopes to minimize the litigation gamesmanship that plagued the point of novelty test. The burden of production now rests on an accused infringer, who is using the prior art as a defense, as the party with the “motivation to point out close prior art, and in particular to call to the court’s attention to the prior art that an ordinary observer is most likely to regard as highlighting the differences between the claimed and accused designs.”

To provide further guidance to trial courts wrestling with the scope of a design patent claim, the CAFC recognized the difficulty in trying to describe a design in words.  The court recommended that district courts rely on the illustrations and, rather than attempt to describe a design patent claim in detail, provide guidance to the fact finder on issues that do bear on the scope of the claim. These issues may include the role of broken lines in design patent drafting, for example, assessing the prosecution history, or distinguishing between features that are purely functional and those that are ornamental.

As applied to the facts of the case, the court affirmed the entry of summary judgment by the US District Court for the Northern District of Texas that Swisa’s nail buffer did not did infringe the EGI design patent. Swisa’s nail buffers “have raised, abrasive pads on all four sides.” EGI’s patented design claimed a nail buffer having four sides, but only three of which were padded.  In applying the ordinary observer test as indicated above, the court held that when considering the prior art in the nail buffer field, “a fourth side without a pad is not substantially the same as a fourth side with a pad.” Therefore, the “accused design could not reasonably be viewed as so similar to the claimed design that a purchaser familiar with the prior art would be deceived by the similarity between the claimed and accused designs, “inducing him to purchase one supposing it to be the other.”” 

George E. Oram
oram.george@arentfox.com
202.828.3455

William D. Doyle
doyle.william@arentfox.com
202.715.8527