The Federal Circuit issued a unanimous en banc decision recently that is good news for design patent holders. First, it loosened the standard for infringement by rejecting one of the tests that needed to be met for a patent holder to demonstrate infringement, and second, it placed the burden of unearthing prior art on the accused infringer.  

The old infringement test required that a plaintiff in a design patent case prove both (1) that the accused device is “substantially similar” to the claimed design under what is referred to as the “ordinary observer” test, and (2) that the accused device contains “substantially the same points of novelty that distinguished the patented design from the prior art.” Goodyear Tire & Rubber Co. v. Hercules Tire & Rubber Co., 162 F.3d 1113 (Fed. Cir. 1998).  

In Egyptian Goddess, the Court held that the ordinary observer test should be the sole test for proving whether a design patent has been infringed and that the “point of novelty” test no longer needed to be used. The Federal Circuit articulated that the current test is “a test that asks how an ordinary observer with knowledge of the prior art designs would view the differences between the claimed and accused designs.” In other words, the test is now “the ordinary observer test through the eyes of an observer familiar with the prior art.” The Court explained that “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 and accused designs relating to an insignificant feature simply because that feature can be characterized as a point of novelty.” The Court clarified that whether there are novel features is still part of the consideration, because “examining the novel features of the claimed design can be an important component of the comparison of the claimed design with the accused design and the prior art. But the comparison of the designs, including the examination of any novel features, must be conducted as part of the ordinary observer test, not as part of a separate test focusing on particular points of novelty that are designated only in the course of litigation.”  

The design patent at issue in this case related to a four-sided nail buffer. Unfortunately for the plaintiff patent holder, the Federal Circuit applied the new standard – “whether an ordinary observer, familiar with the prior art designs, would be deceived into believing the accused buffer is the same as the patented buffer” – and affirmed the district court’s entry of summary judgment in favor of the defendant, stating “in light of the similarity of the prior art buffers to the accused buffer, we conclude that no reasonable fact-finder could find that [plaintiff] 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.” (see diagrams)

While Egyptian Goddess does not dispose of the novelty consideration entirely, it does decrease the emphasis that was previously placed on particular points of novelty. The Federal Circuit further held that the burden of producing prior art designs would be placed on the accused infringer. Previously, courts have stated that the burden to introduce prior art under the point of novelty test falls on the patentee.  

Finally, the Federal Circuit raised the issue of whether trial courts should conduct claim construction in design patent cases. The Court reasoned that since the drawing is typically a better description than words, a court is “not obligated to issue a detailed verbal description of the design if it does not regard verbal elaboration as necessary or helpful,” but on the other hand, “a district court’s decision regarding the level of detail to be used in describing the claimed design is a matter within the court’s discretion, and absent a showing of prejudice, the court’s decision to issue a relatively detailed claim construction will not be reversible error.”