Lawman Armor Corp. v. Winner Int’l, LLC (Fed. Cir. 2006)

According to the Court of Appeals for the Federal Circuit, a unique combination of non-novel, alleged points of novelty is not, by itself, suffi cient to satisfy the point of novelty test in a design patent infringement litigation.

In a design patent dispute, the court applies two tests to determine infringement: the ordinary observer test and the point of novelty test. During application of the ordinary observer test, the two designs are compared from the perspective of an ordinary observer to “determine whether the patented design as a whole is substantially the same as the accused design.” The point of novelty test requires the court to decide whether the accused design or device incorporates one or more of the patented design’s points of novelty, i.e., that portion of the design that distinguishes it from the prior art.

On a motion for summary judgment of noninfringement, the district court held that, while factual issues prevented judgment under the ordinary observer test, each of the patentee’s alleged points of novelty were found in the prior art. Without a distinguishing point of novelty, and thus no material issue of fact regarding the point of novelty test, the court ruled in favor of the accused infringer and entered judgment of non-infringement.

On appeal before the Federal Circuit, the patentee argued, among other things, that the district court failed to consider a ninth point of novelty: the combination of the eight alleged points of novelty in a single design. Literally interpreting the requirements of the point of novelty test, the Federal Circuit reasoned that “[n]ew designs frequently involve only relatively small changes in the shape, size, placement, or color of elements of old designs. It is those changes in and departures from the old designs that constitute the ‘points of novelty’ in the patented new design.” The Court then swept aside the patentee’s theory of infringement, noting that the theory, if accepted, would “virtually…eliminate the signifi cance of the points of novelty test” and allow patent protection for designs that do not incorporate signifi cant changes from the prior art.

After the Court affi rmed judgment of noninfringement, the patentee fi led a petition for rehearing and rehearing en banc. While the Court denied the combined petition, Judge Newman wrote separately dissenting from the decision not to rehear the case en banc. Therein, Newman stated that the panel’s opinion was contrary to the weight of Federal Circuit precedent. Citing previous case law and amici briefs, Newman explained that many design patents are examined and granted on the basis that their overall appearance constitutes a point of novelty. In view of this alleged inconsistency and without reconciliation by the entire Court, Justice Newman warned that the panel’s decision would have “highly disruptive consequences” and would place design patent law in an “unpredictable limbo.” Because the Federal Circuit has an obligation to resolve direct confl icts when they arise, Newman concluded that the Court should have reheard the case en banc to ensure consistent and reliable patent law.