In an en banc decision addressing the ordinary-observer test and following point-of-novelty test for design patent infringement, the U. S. Court of Appeals for the Federal Circuit held that in accordance with the Supreme Court's Gorham decision that the ordinary observer test should be the sole test for determining whether a design patent is infringed. Egyptian Goddess, Inc. et al. v. Swisa, Inc. et al., Case No. 2006-1562 (Fed. Cir., September 22, 200) (Bryson, J.) (en banc).
The Federal Circuit granted an en banc rehearing in this case to address the appropriate legal standard to assess design patent infringement. The Federal Circuit asked the parties to address whether the point of novelty test should continue to be a test for infringement, whether the" non-trivial advance" test should be used to determine what design feature is a point of novelty and whether the district courts should perform claim construction (in design patent cases). In rendering its decision, the court had the benefit of 15 amicus curiae briefs.
Previously, at the district court, Egyptian Goddess (EGI) asserted that its point of novelty was a combination of four of the claimed design elements, i.e., the four sides of a claimed illustrated nail buffer with a square tubular cross section. 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 grounds that the accused Swisa nail buffers did not contain the point of novelty of Egyptian Goddess's 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.
A panel of 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. Over a strong dissent, 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." (See IP Update, Vol. 10, No. 9, published September 2007.)
Based largely on the dissent in the panel opinion, EGI sought en banc review, arguing that the point-of-novelty test should no longer be used as the second part of the test for design patent infringement. Rather, EGI argued that the Gorham test, which focused on an ordinary observer familiar with the prior art, would fulfill the point-of-novelty test. Swisa, on the other hand, argued that the point-of-novelty test was adopted by the Supreme Court in Whitman Saddle.
In considering the issue en banc, the Federal Circuit held that the point-of-novelty test should no longer be used in the analysis of a design patent infringement and rejected the non-trivial advance test. The Court then held that the Supreme Court's Gorham ordinary observer test should be the sole test for determining whether a design patent is infringed—stating that the "ordinary observer" would benefit from a comparison of the claimed design and accused design. The Court stated, "Our rejection of the point of novelty test does not mean ... that the differences between the claimed design and prior art designs are irrelevant. To the contrary, examining the novel features of the claimed design can be an important component of the comparison of the claimed design with the accused design and the prior art. But the comparison of the designs . . . must be conducted as part of the ordinary observer test." The Court emphasized that such comparisons is not a test of validity, but is designed solely for purposes of infringement. According to the Court, the burden of proof of infringement is on the patentee, but the burden of the production of the prior art is on the accused infringer.
As to design patent claim construction under Markman, the Court stated that given the difficulty of describing a design in words, the preferable course ordinarily will be for a district court not to attempt to "construe" as design claim by providing a detailed verbal description. However, absent a showing of prejudice, a district court's decision to issue a detailed claim construction will not be reversible error.
Practice Note: Will examination of design patent applications become more stringent as a result of Egyptian Goddess? Perhaps so. The Federal Circuit went out of its way to quote a long passage from the 1893 Supreme Court Whitman Saddle case as to the patentability of a design: "Mere mechanical skill is insufficient. ... The exercise of the inventive and originative skill is required."
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