The ordinary observer test, rather than the point of novelty test, is applied to test anticipation for design patents.

International Seaway Trading Corp. v. Walgreens Corp., No. 2009-1237 (Fed. Cir. Dec. 17, 2009).

The patentee sued for infringement of design patents on shoes. The district court granted the alleged infringers´ motion for summary judgment on anticipation applying the ordinary observer test, not the point of novelty test. Further, the district court only compared the exterior, not the insoles of the patents and the prior art because it viewed the exterior of the shoes as the only part visible during normal use. The patentee appealed, and the Federal Circuit affirmed–in–part, reversed–in–part, and remanded.

The court acknowledged that it was an open question as to whether the ordinary observer or point of novelty test applied to design patents. In its 2008 en banc decision in Egyptian Goddess, Inc. v. Swisa, Inc., the Federal Circuit held “that the ‘point of novelty’ test should no longer be used in the analysis of a claim of design patent infringement” and that “the ‘ordinary observer’ test should be the sole test for determining whether a design patent has been infringed.” After reviewing the history of the ordinary observer and point of novelty tests in the context of design patents, the court emphasized that the same test must be applied for both infringement and anticipation. Hence, the court adopted the ordinary observer test as the sole test for anticipation of a design patent.

In assessing invalidity, only those portions of the design visible during normal use are compared. The district court erred in limiting normal use to actual wearing of the shoes. Normal use includes the point of sale and when the shoes are not worn. Because the court could not say as a matter of law that the differences in the dimpling patterns in the insoles and the prior art would be viewed as substantially similar in the eyes of an ordinary observer, the court rejected the alleged infringer´s argument that the district court´s error in only considering the exterior of the shoes was harmless. Nonetheless, the court affirmed the district court´s decision that exterior differences between the patent and the prior art were substantially similar in the eyes of an ordinary observer. The court emphasized that minor differences cannot prevent a finding of anticipation.

A copy of the opinion can be found here.