In a decision addressing the point of novelty test for design patent infringement, the U. S. Court of Appeals for the Federal Circuit held that the patentee’s asserted point of novelty "constituted a non-trivial advance over the prior art" and that the district court did not err in rejecting the patentee’s asserted point of novelty as a matter of law. Egyptian Goddess, Inc. et al. v. Swisa, Inc. et al., Case No. 06-1562 (Fed. Cir., Feb. 21, 2007) (Moore, J.; Dyk, J., dissenting).
After the district court issued a claim construction order, construing a design patent directed to a nail buffer, Swisa moved for summary judgment on the grounds that the accused designs did not infringe the patent under either the point of novelty test or ordinary observer test. Egyptian Goddess (EGI) asserted that point of novelty is a combination of four of the claimed design elements, i.e., the four sides of the illustrated square tubular cross section nail buffer. However, the district court found that all elements were found in the prior art Nailco patent, except that in the prior art the nail buffer body was triangular rather than square. The district court granted summary judgment on the ground that the accused Swisa nail buffers did not contain the point of novelty of the patent design; stating "[t]he only point of novelty in the [EGI design patent] over the Nailco [triangular design] patent is the addition of the fourth side without a pad." The district court had found that no reasonable juror could conclude the EGI’s asserted point of novelty constituted "a non-trivial advance over the prior art," which already disclosed nail buffers with square cross-sections. EGI appealed.
The Federal Circuit affirmed, concluding that the district court did not err in rejecting EGI’s asserted point of novelty as a matter of law. The Federal Circuit held that the initial burden is on the patentee to "to present its contentions as to the points of novelty," which can be either a single novel design element or a combination of elements that are known in the prior art. If the combination of known design elements constitute a point of novelty, the combination must be "a non-trivial advance over the prior art."
In a strongly worded dissent, Judge Dyk stated that the majority opinion departs from the Court’s precedent in fashioning a new rule that a combination of elements cannot constitute a point of novelty unless the combination constitutes a "non-trivial advance" over the prior art. Judge Dyk continued: "The majority equates its newly-fashioned non-trivial advance test with the requirement that a design patent be non-obvious over the prior art" and limits that test "to cases in which the point of novelty involves a combination of prior art elements." According to Judge Dyk, the majority approach has multiple flaws, including conflating the criteria for infringement and non-obviousness, as well as eviscerating the statutory presumption of validity.
Practice Note: While the "non-trivial advance" test appears to be limited to where the point of novelty constitutes a combination of prior art design elements, it has nonetheless raised the bar to find design patent infringement under the point of novelty test.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.