CAFC Refuses Rehearing Requests in Lawman Armor Design Patent Appeal

Donning my patent attorney hat, I have reported on the CAFC's troublesome decision in Lawman Armor Corp. v. Winner Int'l, LLC. See the TTABlog postings here and here. In a nutshell, the CAFC ruled that, for purposes of determining infringement of a design patent, the overall appearance of a design cannot itself be a "point of novelty."


On May 31, 2006, the CAFC denied Lawman's request for rehearing (here) and for rehearing en banc (here). In denying the rehearing request, the original panel issued a "Supplemental Opinion," attempting to explain its earlier decision:

"In our decision, we did not intend to cast any doubt upon our prior decisions indicating that in appropriate circumstances a combination of design elements itself may constitute a "point of novelty." Such a combination is a different concept than the overall appearance of a design which, as indicated, our cases have recognized cannot be a point of novelty."

The CAFC then considered the petition for rehearing en banc. "A poll was requested, taken, and failed." Judge Newman, joined by Judges Rader and Gajarsa, dissented from the denial of an en banc hearing, asserting that the panel's view of design patent law "is contrary to the weight of Federal Circuit precedent and, as the several amici curiae point out, will have a seriously adverse effect on design patent law."

"The amicus curiae point out that many, if not most, design patents are novel combinations of known design elements, and that recognition of a design's overall appearance can constitute a point of novelty, in the usage that has evolved in design patent law. The Patent and Trademark Office grants design patents on this basis."

Judge Newman urged that the case be considered en banc so that the court might issue a "consistent statement of law, overruling whatever body of precedent is negated." Otherwise, design patent law will exist in an "unpredictable limbo."

TTABlog comment: If a combination of elements can be a point of novelty, according to the panel, why can't a combination of all the elements (i.e., the overall appearance of the design) constitute a point of novelty?

Additional commentary on Lawman, including links to the various briefs regarding rehearing, may be found at the Shape Blog.

Text Copyright John L. Welch 2006.