IP Topics
By
Michelle Mancino Marsh and Joyce E. Kung
- November 10, 2008
This article first appeared in the International Law Office
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On Monday, September 22, 2008, the Federal Circuit issued a unanimous en banc opinion in Egyptian Goddess, Inc. v. Swisa, Inc., __ F.3d __ (Fed. Cir. 2008), reworking the test for design patent infringement. The Court affirmed the District Court for the Northern District of Texas's decision granting summary judgment to the accused infringer. The Court rejected the "point of novelty" and "non-trivial advance" tests, instead holding that the "ordinary observer" test be the "sole test for determining whether a design patent has been infringed."
The "ordinary observer" test, originally set forth in 1871 in Gorham Co. v. White, 81 U.S. 511, requires that substantial similarity between the patented design and accused design be adjudged from the perspective of an ordinary observer familiar with the art. Prior art will be helpful in highlighting differences between the patented and accused designs, but the accused infringer will have the burden of producing such prior art designs.
In rejecting the point of novelty and non-trivial advance tests, the Court pointed to their difficulty of application, particularly where designs involved several novel features or multiple prior art references, and where the outcome depended on the points of novelty enumerated during litigation. Where applicable, the Court will still look to smaller points of similarity, thereby incorporating the point of novelty test into the ordinary observer test.
In this case, which involved nail buffers, the patented design holder could not meet its burden of showing by a preponderance of evidence that an ordinary observer, in view of the prior art, would find the accused and patented designs to be the same. The Court elaborated that, under the ordinary observer test, infringement would not be found unless the accused design embodied the patented design "or any colorable imitation thereof." The Court also noted that when prior art exists that is similar to the patented design, and where the patented and accused designs are also similar, as was the case in Egyptian Goddess, the ordinary observer may focus on differences "which might not be noticeable in the abstract."
Therefore, owners of design patents should be mindful that similar prior art designs may be used to narrow the ordinary observer's focus; however, the Court's decision should help provide clarity in design patent law jurisprudence.