Court Simplifies Standard for Proving Design Patent Infringement
Sep 29, 2008
In a decision that potentially bolsters the value of design patents by easing the burden on patentees in design patent infringement cases, the Court of Appeals for the Federal Circuit simplified the standard of infringement for design patents. In Egyptian Goddess v. Swisa1, the unanimous Court rejected the previous “point of novelty test” as a requirement for infringement of design patents, and ruled that the “ordinary observer” test “should be the sole test for determining” design patent infringement.
- Federal Circuit overturns its own precedent in design patent infringement cases by eliminating the “point of novelty” test as part of the patentee’s burden of proof.
- Design patent infringement solely determined by the ordinary observer test, but the Court focuses on applying the test “through the eyes of an observer familiar with the prior art.”
- Courts are not required to verbally construe design patent claims.
- Application of new test yields the same result on appeal.
Elimination of Point of Novelty Test
The ordinary observer test was originally set forth by the Supreme Court in Gorman to determine design patent infringement:
If, 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.
In a number of precedential decisions prior to Egyptian Goddess, the Federal Circuit complicated the design patent infringement determination by requiring that “the accused design must also appropriate the novelty of the claimed design” to be considered infringing. However, the Court did not consistently use this “point of novelty” test and the test was often confusing and difficult to apply. While indicating that the novel features of the claimed design can be important for comparing the claimed design with the accused design and the prior art, the Court in Egyptian Goddess seized the opportunity to square its precedent with the law in Gorman and clarify the law of design patent infringement by rejecting the point of novelty test.
Ordinary Observer Test Applied Through the Eyes of an Observer Familiar with the Prior Art
The Court explained that the ordinary observer test could serve the purpose of the point of novelty test, i.e., to focus on design aspects that render the claimed design different from prior art. In particular, the Court reasoned that an ordinary observer viewing the “differences between the patented design and the accused product in the context of the prior art” would serve this purpose and that such a test would be “likely to produce results more in line with the purposes of design patent protection.” The Court also ruled that, under the ordinary observer test, the alleged infringer should bear the burden of producing prior art designs for comparison in the infringement analysis, while the patentee retains the burden of proof on infringement.
No Need to Construe Design Patent Claims
The Court also ruled that lower courts are not required to construe design patent claims by providing a detailed verbal description of the claimed design. While the Court even suggested that presenting a full description of the claimed design could be “unwise” given the associated difficulty, it may be helpful for lower courts to identify various features of the design as they relate to the accused design and prior art.
Moreover, lower courts can address other issues impacting claim scope, such as describing the role of design drafting conventions (e.g., the use of broken lines), assessing the effect of the prosecution history, and distinguishing between ornamental and purely functional features.
New Test, Same Result
Notwithstanding the new standard of infringement, the Court ultimately affirmed the lower court decision of non-infringement. The difference between the accused nail buffer (i.e., the Swisa Buffer depicted below) and the patented nail buffer (identified below as the ’389 patent) was found by the Court to be an important one, “when viewed in the context” of the prior art (i.e., the Falley Buffer and Nailco Buffer).
The Court held that the accused nail buffer “could not be reasonably 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.” While the Court’s ruling upheld the conclusion of non-infringement in this instance, the ruling may prove to be a boon to design patent holders.
Please call us for more information or to schedule an appointment so we can help you determine how your design patent rights are affected by the new law.
1 No. 2006-1562 (Fed. Cir. Sept. 22, 2008).
Randall W. Schwartz is an associate at Hovey Williams. You can contact Randall at .(JavaScript must be enabled to view this email address).