Having previously determined that the ordinary observer test is the sole test for design patent infringement, the US Court of Appeals for the Federal Circuit, in International Seaway Trading Corporation v. Walgreens Corporation, has now extended that test to questions of design patent invalidity.

In the US, a design patent is used to protect the look or ornamental features of an article, while a utility patent is used to protect the function of an article or how it is made.

Before the Federal Circuit’s decision in Egyptian Goddess v. Swisa, the test for design patent infringement included two parts — the ordinary observer test and the point of novelty test. In applying the point of novelty test in the case of infringement, the court looked at whether the accused design appropriated the points of novelty of the patented design. The points of novelty for the patented design were determined by comparing the patented design to the prior art designs.

In Egyptian Goddess, the Federal Circuit abandoned the point of novelty test for infringement and ruled that the ordinary observer test was the sole test for design patent infringement. The ordinary observer test originated in 1871 when the US Supreme Court held "that if, 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 the other, the first one patented is infringed by the other" (Gorham Mfg. Co. v. White). The ordinary observer test requires consideration of the design as a whole in view of the prior art.

For questions of design patent invalidity, the US courts had also applied the point of novelty test in the past. In the case of anticipation, the courts had compared the patented design with the alleged anticipatory reference to determine whether the patented design appropriated the points of novelty of the anticipatory reference. The points of novelty for the anticipatory reference were determined by looking to earlier prior art.

In International Seaway Trading, however, the District Court rejected the point of novelty test and only applied the ordinary observer test for design patent invalidity. It granted summary judgment in favour of the defendants, finding that Seaway’s design patents for clog style shoes were invalid as being anticipated by a design patent assigned to Crocs, Inc. (the anticipatory reference).

Seaway appealed, arguing that the District Court had erred in solely relying on the ordinary observer test and in failing to apply the point of novelty test. In its decision, the Federal Circuit agreed with the District Court that the ordinary observer test was the sole test for anticipation. According to the Federal Circuit, this approach addresses several problems. Specifically, it avoids:

  • the need to canvass the entire prior art to identify points of novelty; and
  • the debate over the extent to which a combination of old design features can serve as a point of novelty under the point of novelty test.

The Federal Circuit, however, vacated the District Court’s decision in part and remanded the case back to the District Court, on the basis that the District Court had failed to make a proper overall comparison of the designs, i.e., it had erred in not comparing the insole patterns of the design patents in suit to that of the anticipatory reference.

McCarthy Tétrault Notes

The Federal Circuit’s ruling is consistent with Egyptian Goddess and with the US Supreme Court’s holding with respect to utility patents that "that which infringes, if later, would anticipate, if earlier" (Peters v. Active Mfg. Co.). The same rule applies for design patents, according to International Seaway Trading.

The Federal Circuit’s decision in International Seaway Trading has important implications. With International Seaway Trading, the Federal Circuit has clearly indicated that the point of novelty test no longer forms part of the test for design patent invalidity as a separate analysis.

This ruling reconciles the tests for design patent infringement and invalidity. As such, International Seaway Trading has given US design patent law a new, if not unexpected, consistency.