Design Patents Ruling Holds That Proper Test for Infringement Is Ordinary Observer Test, But Points of Novelty over Prior Art Are Still a Relevant Consideration

On September 22, the Federal Circuit issued its en banc decision in the case of Egyptian Goddess, Inc. v. Swisa, Inc., Case No. 2006-1652 (Egyptian Goddess). We previously addressed this case in our newsletter Intellectual Property Insights. Please click here for a link to the original discussion of Egyptian Goddess. This decision was being watched to see whether the Federal Circuit would restate the standards for proof of design patent infringement. Prior to this decision, there were two separate tests for infringement, the "ordinary observer" test and the "point of novelty" test. The Federal Circuit's decision opted for a single "ordinary observer" test as initially set forth by the Supreme Court in Gorham Co. v. White, 81 U.S. 511 (1871). The "point of novelty" test was abandoned because (1) it has been "difficult to apply" and (2) as a second, free-standing requirement for proof of infringement it is inconsistent with Gorham. While this appears to be a significant change to the recent law of design patents, it is yet to be seen whether in application this will have any practical effect on the resolution of design patent infringement disputes.

Specifically, 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. . . Instead . . . we hold that the 'ordinary observer' test should be the sole test for determining whether a design patent has been infringed." However, the Federal Circuit noted that the "ordinary observer" test often "will benefit from a comparison of the claimed and accused designs with the prior art . . . ." Thus, while the decision included strong language explicitly overruling the "points of novelty" test, the heart of that test likely remains beating within the "ordinary observer" test. Procedurally, the court further held that the burden of production of prior art designs falls on the accused infringer.

Lastly, the court addressed the question of whether trial courts should conduct claim construction in design patent cases. The court left this issue within the sound discretion of the trial courts, but noted that detailed verbal description of the claimed designs was generally not advisable.

In the future, the only thing that appears certain from the decision is that it will be more difficult to achieve prompt resolution of design patent disputes, whether it be through summary judgment or otherwise. It has yet to be seen whether this "change" in precedent will have any substantive effect on the resolution of cases.

As a bellwether, perhaps the result of Egyptian Goddess itself is instructive. After all the time and effort spent on this case, the original panel decision (based on the now overruled point of novelty/non-trivial advance test) was upheld, i.e., affirming the finding of no-infringement based primarily on the closeness of the prior art designs to the patented design.