Design Patent Owners Will Worship CAFC's Egyptian Goddess Decision

In an eagerly-awaited en banc ruling, the U.S. Court of Appeals for the Federal Circuit has banished the "point of novelty" test as a "second and free-standing requirement for design patent infringement," finding it inconsistent with the Supreme Court's Gorham v. White ordinary observer test. In addition, the CAFC ruled that, rather than describe a patented design in words, "the preferable course ordinarily will be for a district court not to attempt to 'construe' a design patent claim by providing a detailed verbal description of the claimed design." Egyptian Goddess, Inc. v. Swisa, Inc., 88 USPQ2d 1658 (TTAB 2008). [precedential].


Revisiting the Litton Systems case, often cited as the genesis of a separate "point-of-novelty" test, the CAFC gave it a different reading:

"We think, however, that Litton and the predecessor cases on which it relied are more properly read as applying a version of the ordinary observer test in which the ordinary observer is deemed to view the differences between the patented design and the accused product in the context of the prior art."

Thus, instead of a being analyzed in a separate test, the prior art designs are to be taken into account as part of the Gorham v. White ordinary observer analysis:

"When the differences between the claimed and accused design(s) are viewed in light of the prior art, the attention of the hypothetical ordinary observer will be drawn to those aspects of the claimed design that differ from the prior art. And when the claimed design is close to the prior art designs, small differences between the accused design and the claimed design are likely to be important to the eye of the hypothetical ordinary observer."

The court noted that this approach avoids "some of the problems created by the separate point of novelty test." For example, under the point of novelty approach, "the more novel the design, the more points of novelty that are identified, the more opportunities there are for a defendant to argue that its design does not infringe because it does not copy all of the points of novelty, even though it may copy most of them and even though it may give the overall appearance of being identical to the claimed design." In other words:

"unlike the point of novelty test, the ordinary observer test does not present the risk of assigning exaggerated importance to small differences between the claimed design and accused designs relating to an insignificant feature simply because that feature can be characterized as a point of novelty."

Moreover, the court ruled that the "burden of production" of relevant prior art is on the accused infringer, rather than on the patentee, as the point of novelty test required.

Turning to the question of whether trial courts should conduct claim construction in design patent cases, the court pointed out that although it has held that trial courts "have a duty to conduct claim construction in design patent cases," it has not prescribed any particular form for that claim construction. It here emphasized that the trial court's decision "regarding the level of detail to be used in describing the claim design" is within the court's discretion. The trial court should, however, "recognize the risks entailed" in a verbal description of the claimed design, "such as the risk of placing undue emphasis on particular features." Finally, the court noted, that courts should not read the claim construction requirement as necessitating "a detailed verbal description of the claim, as would typically be true in the case of utility patents."

As to the facts of the case at hand, the Board affirmed the district court's summary judgment ruling of noninfringement, concluding that "no reasonable fact-finder could find that EGI met its burden of showing, by a preponderance of the evidence, that an ordinary observer, taking into account the prior art, would believe the accused design to be the same as the patented design."


TTABlog comment: Design patent owners will applaud this ruling because it moves away from a troublesome verbal approach to design patents to a more patentee-friendly visual approach. When a court details a claimed design in words, a defendant can always describe its accused design with different words, positing differences in the designs where no real differences exist.

Likewise, requiring a patentee to prove up the prior art and list the points of novelty gives a defendant an opportunity to focus on what listed items are missing in the accused design, rather than looking at the design as a whole.

Prior TTABlog postings on the subject of design patents are here, here, and here.

Text Copyright John L. Welch 2008.