November 2008Published Article

Has the Federal Circuit Strengthened Design Patent Protection?

The Intellectual Property Strategist

On Sept. 22, 2008, the Federal Circuit issued its first en banc decision in a design patent case. In Egyptian Goddess v. Swisa, __ F.3d __ (Fed. Cir. 2008), the court held that the "ordinary observer" test first set forth by the Supreme Court more than 100 years ago is the sole test for design patent infringement. See Gorham v. White, 81 U.S. 511 (1871). In doing so, the Federal Circuit rejected the "point of novelty" and "non-trivial advance" tests first articulated in Litton Systems, Inc. v. Whirlpool Corp., 728 F.2d 1423 (Fed. Cir. 1984) and the original panel decision in Egyptian Goddess, 498 F.3d 1354 (Fed. Cir. 2007), respectively. At first glance, the court’s decision appears to strengthen design patents by reducing the number of tests that a patent holder must satisfy to prove infringement. On closer inspection, however, the court also expanded the ordinary observer test, allowing continued reliance on prior art as a defense to infringement without the burden of invalidating the patent-in-suit. In fact, the Federal Circuit’s decision seems to make "practicing the prior art" a viable defense against design patent infringement claims.


Design patents protect "any new, original and ornamental design for an article of manufacture." 35 U.S.C. §171 (2008). In Gorham, the Supreme Court set forth the design patent infringement test: "[I]f in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other." This venerable interpretation became known as the "ordinary observer" test.

In Litton Systems, the Federal Circuit expanded the ordinary observer test, ruling that a patent holder must also show that the accused design appropriates the points of novelty that distinguish the claimed design from the prior art. This became known as the "point of novelty" test, distinct from the "ordinary observer" test. Lawman Armor Corp. v. Winner Int’l, LLC, 437 F.3d 1383, 1384-85 (Fed. Cir. 2006). Then, in the panel decision in Egyptian Goddess, the Federal Circuit added a third test to the mix — that the design’s points of novelty are "non-trivial advances" over the prior art. Egyptian Goddess, 498 F.3d 1354, 1357 (Fed. Cir. 2007).

The History of Egyptian Goddess

The patent holder, Egyptian Goddess ("EGI"), charged Swisa with infringing EGI’s U.S. Design Patent No. 467,389. The ’389 patent claims a design for a fingernail buffer, consisting of a rectangular, hollow tube with a generally square cross-section, featuring buffer surfaces on three of its four sides. Swisa’s accused products also comprise a rectangular, hollow tube having a square cross-section, but Swisa’s products have buffer surfaces on all four sides. The U.S. District Court for the Northern District of Texas granted summary judgment for Swisa because EGI could not satisfy both the ordinary observer and point of novelty tests, where the point of novelty was the bare fourth side of the buffer.

EGI appealed, and a panel of the Federal Circuit affirmed the district court’s decision. Egyptian Goddess, 498 F.3d 1354 (Fed. Cir. 2007). The panel agreed that the accused Swisa buffer failed to appropriate the point of novelty, the bare fourth side. Although noting that a point of novelty can be a novel design element or a combination of elements already known in the art, the panel added that, for a combination of elements to constitute a point of novelty, "the combination must be a non-trivial advance over the prior art."

The Federal Circuit granted en banc rehearing to consider:

1. Should "point of novelty" be a test for infringement of design patents?

2. If so, should: a) the court adopt the "non-trivial advance" test of the panel majority; b) the point of novelty test be part of the patentee’s burden of proving infringement or a defense; c) a design patentee, in defining a point of novelty, be permitted to divide closely related or ornamentally integrated features of the patent design to match features contained in an accused design; d) there be more than one point of novelty in a patented design; and e) the overall appearance of a design be permitted to be a point of novelty?

3. Should claim construction apply to design patents, and, if so, what role should it play in the infringement analysis?

The Federal Circuit’s En Banc Ruling

The full court, although affirming the panel’s ruling of noninfringement, answered the first question by rejecting the point of novelty test, finding that "it should no longer be used in the analysis of a claim of design patent infringement." Swisa argued that the test had roots as long as the ordinary observer test. Smith v. Whitman Saddle Co., 148 U.S. 674 (1893). The Federal Circuit, however, disagreed, tracing the cases discussing novelty from Whitman Saddle to Litton Systems, and concluding that imposing a separate point of novelty test "is of quite recent vintage." Moreover, the court concluded that doing away with the point of novelty test will avoid common errors such as improperly focusing the trier of fact on a single feature instead of the "claimed design as a whole."

The court also declined to adopt the non-trivial advance test, as it is merely a refinement of the point of novelty test. Instead, the court stated that the ordinary observer test is the "sole test for determining whether a design patent has been infringed." The court, however, did not stop there, but also stated that the original purpose of considering the claimed design’s novelty can be "equally well served" by applying the ordinary observer test through the eyes of an observer familiar with the prior art.

In some cases, the claimed design and the accused design will be sufficiently distinct, making it clear that the patent holder cannot prove infringement under the ordinary observer test. However, in cases where the claimed design and the accused design are not "plainly dissimilar," resolving the "ordinary observer" test may require the court and the parties to refer to the prior art. In such close cases, "resolution of the question whether the ordinary observer would consider the two designs to be substantially the same will benefit from a comparison of the claimed and accused designs with the prior art." The court emphasized that referencing the prior art in the context of the ordinary observer test is not the same as using prior art to determine if the patent claims are invalid as anticipated or obvious.

Finally, the court reaffirmed that district courts have a duty to conduct claim construction in design patent cases. The court cautioned district courts against attempting to describe the claimed design in words as such a description could improperly limit the claimed design. Nevertheless, the district court’s claim construction can guide the trier of fact by pointing out various features of the claimed design as they relate to the accused design or the prior art. Similarly, the court’s claim construction can address matters such as design patent drafting conventions, prosecution history, and functionality.

The Implications of Egyptian Goddess

Prior art is still relevant to design patent infringement analysis despite the Federal Circuit’s rejection of the point of novelty test. At first glance, the court appears to have strengthened design patents by reducing the test for infringement down to a single question of substantial similarity. The court, however, complicated that question by transforming the ordinary observer test into a three-way comparison among the claimed design, the accused design, and the prior art.

Before this decision, accused infringers would focus their defense on making the patent holder specify its claimed points of novelty. The accused party would then either identify prior art that revealed those points of novelty, or show how the accused product did not have them. For example, if the patent holder identified points of novelty A, B, and C, and the accused infringer found prior art showing A, B, and C, the accused infringer could obtain summary judgment by proving that the patent holder could not satisfy the point of novelty test as a matter of law because the claimed design had no point of novelty. In essence, this was a backdoor attack on the validity of the patent-in-suit without assuming the heavy burden of proof to invalidate the patent. See e.g., Lawman Armor Corp. v. Winner Int’l, LLC, 437 F.3d 1383 (Fed. Cir. 2006).

The Federal Circuit’s Egyptian Goddess decision reframes this defense. An accused infringer should still search for prior art — this time, for use in the "ordinary observer" analysis. The accused infringer should ask the patent holder to identify all the ways in which the accused design is substantially the same as the claimed design. Then, the accused infringer should search for and present prior art revealing each of those alleged similarities, to show what an observer informed by the prior art would see.

Obtaining summary judgment based on this strategy may be more difficult than in the past because of the inherently factual nature of the ordinary observer comparison. Nevertheless, the accused infringer can still make use of prior art in the infringement analysis on summary judgment or at trial, attacking the patent-in-suit without taking on the burden of invalidating the patent. In effect, the accused infringer should attempt to prove that it is practicing the prior art, because that now appears to be a defense to design patent infringement.

Reprinted with permission from the November 2008 edition of the The Intellectual Property Strategist © 2008 ALM Properties, Inc. All rights reserved. Further duplication without permission is prohibited.

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