Egyptian Goddess, Inc. v. Swisa, Inc. (Fed. Cir. 2008 (en banc))

The “ordinary observer” test should be the test used when evaluating infringement of design patents, according to the Federal Circuit.

Egyptian Goddess, Inc. (“EGI”) appealed the decision of the district court and alleged that Swisa, Inc. (“Swisa”) had infringed EGI’s U.S. Design Patent No. 467,389 (“the ’389 patent”). The patent claimed a design for a nail buffer consisting of a rectangular hollow tube having a generally square crosssection and featuring buffer surfaces on three of its four sides. Swisa’s accused infringing product consisted of a rectangular, hollow tube having a square cross-section but featured buffer surfaces on all four of its sides.

The district court granted Swisa’s motion for summary judgment based on noninfringement and stated that the plaintiff in a design patent case must 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.” After comparing the claimed design and the accused product, the district court held that Swisa’s allegedly infringing product did not incorporate the “point of novelty” of the ’389 patent, which the court identified as “a fourth, bare side to the buffer.”

EGI appealed the district court’s decision, and a panel of the Federal Circuit agreed with the district court. The panel stated that the point of novelty in a patented design “can be either a single novel design element or a combination of elements that are individually known in the prior art.” In order for a combination of individually known design elements to constitute a point of novelty, however, the panel said “the combination must be a nontrivial advance over the prior art.” The panel noted that EGI’s asserted point of novelty was a combination of four of the claimed design’s elements, and the panel agreed with the district court’s determination that one prior art patent contained each of the four elements except that the body was triangular, rather than square, in cross-section. Thus, the panel concluded that “no reasonable juror could conclude that EGI’s asserted point of novelty constituted a non-trivial advance over the prior art.” Additionally, the panel noted that the various design elements of the claimed design “were each individually disclosed in the prior art.” Thus, the panel concluded that summary judgment was appropriate.

The Federal Circuit then granted EGI’s request for an en banc review. The Federal Circuit considered whether the “point of novelty” test or the “ordinary observer” test should be used to determine whether an accused infringing product infringes a design patent. To infringe under the point of novelty test, “the accused device must appropriate the novelty in the patented device which distinguishes it from the prior art.” Under the ordinary observer test, “[I]f 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 be the other, the first one patented is infringed by the other.”

In a decision that could strengthen the amount of protection provided by design patents, the Federal Circuit agreed with EGI in holding that “the ‘ordinary observer’ test should be the sole test for determining whether a design patent has been infringed. Under that test, . . . infringement will not be found unless the accused article ‘embod[ies] the patented design or any colorable imitation thereof.’” The Federal Circuit reasoned, in part, that the point of novelty test proved too difficult to apply where the claimed design has numerous features that can be considered points of novelty, or where multiple prior art references are in issue and the claimed design consists of a combination of features, each of which could be found in one or more of the prior art designs. Nonetheless, the Federal Circuit affirmed the district court’s summary judgment in favor of Swisa because “no reasonable fact-finder could find that EGI 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.

Practice Tip:

When considering whether a design patent may present a question of infringement for a product, it is recommended to consider whether the product and the patented design are substantially the same to deceive an ordinary observer. In cases where the accused design and the claimed design are not plainly dissimilar, the ordinary observer analysis may include reviewing the prior art, which may yield significant differences between the product and the patented design.When considering whether a design patent may present a question of infringement for a product, it is recommended to consider whether the product and the patented design are substantially the same to deceive an ordinary observer. In cases where the accused design and the claimed design are not plainly dissimilar, the ordinary observer analysis may include reviewing the prior art, which may yield significant differences between the product and the patented design.