CAFC Ruling Deals Another Blow to Enforcement of Design Patents
Trade dress protection for product shapes became a bit more important last week, after the CAFC issued its ruling in a design patent case called Lawman Armor Corp. v. Winner Int'l LLC, 77 USPQ2d 2017 (TTAB 2006). The court made life much more difficult for the design patent plaintiff by holding that, in applying the "point of novelty" test for design patent infringement, a patentee cannot combine a series of points of novelty into a further point of novelty.
There are two distinct tests for design patent infringement, both of which must be satisfied by the patentee: the "ordinary observer" test and the "point of novelty" test.
"The 'ordinary observer' test requires comparison of the two designs from the viewpoint of the ordinary observer to 'determine whether the patented design as a whole is substantially the same as the accused design.' [citations omitted] Under the 'point of novelty' test, a court must determine whether 'the accused device ... appropriate[s] the novelty in the patented device which distinguishes it from the prior art.'"
The Lawman decision concerned the second test. Plaintiff-patentee Lawman listed eight points of novelty for its steering wheel lock design, but it did not challenge the district court's ruling that these eight points were shown in prior art patents. Instead, Lawman argued that the combination of these eight non-novel points in a single design was itself a ninth point of novelty. The Board rejected that approach:
"This argument is inconsistent with, and would seriously undermine, the rationale of the 'points of novelty' test. *** If the combination of old elements shown in the prior art is itself sufficient to constitute a 'point of novelty' of a new design, it would be a rare design that would not have a point of novelty. The practical effect of Lawman's theory would be virtually to eliminate the signficance of the 'points of novelty' test in determining infringement of design patents, and to provide patent protection for designs that in fact involve no significant changes from the prior art."
The CAFC therefore affirmed the district court's summary judgment of non-infringement.
The decision is very puzzling, since there is no inherent reason why the overall design of a product could not itself be novel and nonobvious, even though each element of the design might be found in some piece of prior art. For example, suppose one built a car with pieces from eight different vehicles. Couldn't the overall design be inventive, even though the individual parts were not?
Moreover, if there is no novelty in the Lawman design, shouldn't the patent have been declared invalid? Why even get to the infringement issue?
Late in December 2004, the TTABlog commented here on an article by Perry J. Saidman and Allison Singh in which the authors lamented the demise of the Supreme Court's "ordinary observer" test (Gorham Co. v. White, 81 U.S. (14 Wall.) 511 (1871)) in design patent infringement cases. The requirement of a Markman hearing in design patent cases, they argued, was a fundamental error that has "mortally wounded" the Gorham test.
The Lawman decision is another body blow to the design patent plaintiff. As stated above, to prove infringement, the patentee must pass both the "ordinary observer" test and the "point of novelty" test. The Markman hearing requirement made the first test much more difficult. The Lawman decision has done the same to the "points of novelty" test.
TTABlog postscript: The Lawman decision also directly contradicts the CAFC's rulings in Avia Group Int'l, Inc. v. L.A. Gear California, Inc., 7 USPQ2d 1548 (Fed. Cir. 1988) and L.A. Gear Inc. v. Thom McAn Shoe Co., 25 USPQ2d 1913 (Fed. Cir. 1993).
Text Copyright John L. Welch 2006.