Egyptian Goddess Inc. v. Swisa Inc. 543 F.3d 665 (Fed. Cir. 2008)
In a unanimous en banc decision, the Federal Circuit ruled that the test that views design patent infringement from the perspective of the “ordinary observer” is the sole test for determining whether the patent has been infringed. The “ordinary observer” test was originally set forth by the Supreme Court in 1871 in Gorham Co. v. White, but was later modified by the more recent “point of novelty” test. Returning to the former standard, the “ordinary observer” test determines whether an ordinary person, familiar with the prior art, would be deceived into thinking that the accused design is the same as the patented one. In this case, Egyptian Goddess holds a design patent for an ornamental nail buffer. The asserted point of novelty was a four sided design with pads on three of the four sides. Prior art included three-sided designs, and the defendant’s product was a four-sided design with pads on all four sides. Affirming the district court’s decision granting the defendant’s motion for summary judgment of non-infringement, the Federal Circuit said that “when the claimed design is close to the prior art designs, small differences between the accused design and the claimed design are likely to be important to the eye of the hypothetical ordinary observer.” Under this test, said the Court, infringement will not be found unless the accused article “embod[ies] the patented design or any colorable imitation thereof.” The Court found that the defendant’s buffer, although it was the same shape as the patented design, did not infringe because it had pads on all four sides.