On June 2, 2008 the US Court of Appeals for the Federal Circuit (CAFC) heard oral arguments in the much anticipated design patent case, Egyptian Goddess, Inc. (EGI) v. Swisa Inc.  Arguments were presented before the entire panel of thirteen CAFC judges (en banc), a first ever for the CAFC in rehearing a design patent case. The CAFC had agreed to review one of the more complex issues surrounding design patent infringement, the point of novelty test.

The case centered on Swisa’s alleged infringement of EGI’s design patent for a nail buffer.  EGI’s nail buffer claimed four sides, three of which were padded. Swisa, on the other hand, created and sold a nail buffer having four sides, all four of which were padded.

Prior case law had established that two tests needed to be met to establish design patent infringement. The first test, the “ordinary observer test,” was established in the landmark Supreme Court design patent case Gorham Co. v. White, 81 U.S. 511 (1871). The test is whether in the eyes of an ordinary observer an accused design appears substantially similar to the patented design. The second test, the “point of novelty test,” requires that the accused design also incorporates the novel aspects of the substantially similar patented design.

A lower court had ruled that Swisa’s nail buffer did not contain the point of novelty of the EGI patented design and therefore, did not infringe the EGI design patent. On appeal, the question before the court was whether the point of novelty test was an adequate method for establishing infringement. If not, how should it be changed?

During oral arguments, the judges focused on whether there was any reason for overturning a test that had been established by previous case law. Chief Judge Paul R. Michel asked why the law should be changed in the absence of a Supreme Court decision, congressional legislation, or evidence that the application of the point of novelty test was not working. Without such evidence, Chief Judge Michel verbalized the court’s reluctance to disregard the point of novelty test completely.

As an alternative, the court considered the question of whether the point of novelty test should remain part of the patent holder’s burden on infringement or should the burden be placed on the defendant as an available defense. However, the court questioned whether this option would really remedy the concern of gamesmanship seen when each party selects self-serving prior art references for determining points of novelty.

The judges also directed discussion toward the merits of using a “three way test”. Under this test, infringement would be decided by comparing the infringing design to both prior art and the patented design. The “three way test,” however, raises similar issues, including which prior art to use in making the comparison.

The court’s final opinion in Egyptian Goddess, Inc. v. Swisa, Inc. may represent another landmark decision in the history of design patents. The Court of Appeals for the Federal Circuit may not completely walk away from the “point of novelty” test, but some change is probably in store for the future of infringement in the design patent world.