A recent decision from the U.S. Court of Appeals for the Federal Circuit sitting en banc has significantly altered the methodology courts will use to determine whether a U.S. design patent has been infringed. 

Most patents obtained and asserted in litigation continue to be utility patents; however, design patents are the subject of substantial recent activity and have been found to be a very attractive tool for thwarting copying in certain fields, such as athletic shoes, flashlights, lighting fixtures, furniture and personal electronics. Unlike utility patents, design patents protect the appearance of products, specifically the ornamental aspects of their appearance. Because design patents only protect these aspects of the appearance of an item, they are relatively narrow in scope when compared to utility patents. Design patents, however, can be an important part of intellectual property portfolios, as they are in general easier and less expensive to obtain and enforce than utility patents. Design patents are also attractive as they allow for recovery of the infringer’s profits, which is not an available remedy for infringement of a utility patent.

Prior to the Federal Circuit’s September 22, 2008 decision in Egyptian Goddess, Inc. v Swisa, Inc., Case No. 2006-1562, there had been a two-part test for design patent infringement. The first part of the test was stated by the U.S. Supreme Court in Gorham Co. v. White and is typically referred to as the “ordinary observer” test:

[I]f, 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. 81 U.S. 511, 528 (1871).

The second part of the test required the patentee to also prove that the accused design “appropriated the novelty in the patented device which distinguishes it from the prior art.” Litton Systems, Inc. v. Whirlpool Corp., 728 F.2d 1423, 1444 (Fed. Cir. 1984). Determining what the “points of novelty” were and considering whether the accused devices appropriated those points of novelty was a relatively confusing and complex process for patent owners, lawyers, and even the courts.

Egyptian Goddess rejects the need for a separate “point of novelty test” to determine infringement. Rather, the Federal Circuit now requires a modified version of the “ordinary observer” test in which substantial similarity is the ultimate question for infringement. Egyptian Goddess does not completely exclude prior art from the analysis as it requires the ordinary observer to also “tak[e] into account the prior art” in considering the similarity of accused design and the patented design. For instance, under the Egyptian Goddess methodology, the hypothetical “ordinary observer” may be less likely to find the claimed and accused designs to be subsprtantially the same if the patent is in a relatively crowded area of art, where slight differences between the various designs are arguably more significant.

It remains to be seen if the new infringement methodology established by Egyptian Goddess will make it easier for design patent holders to prove infringement, but it appears that it will. Click here to download a copy of the Federal Circuit’s opinion.