In a decision addressing Gorham’s ordinary-observer test, the sole infringement test pursuant to Egyptian Goddess, the U. S. Court of Appeals for the Federal Circuit vacated and remanded a jury verdict of design patent infringement for further proceedings where the jury was instructed to consider the ordinary observer test and point of novelty. Sofpool LLC v. Intex Recreation, Case No. 08-1498 (Fed. Cir., May 11, 2009) (per curiam) (nonprecedential).

Sofpool LLC (Sofpool) filed suit against Intex Recreation Corp. (Intex), alleging infringement of two design patents. The district court submitted the infringement issue to a jury, with instructions that “[t]he comparison of the accused product to the patented design includes two distinct tests, the ordinary observer test and the point of novelty test.” The court further instructed the jury that it could find infringement only if it determined that both the ordinary observer and the point of novelty tests had been satisfied. The jury returned a verdict in Intex’s favor, finding no infringement of either of Sofpool’s patents. Sofpool appealed.

Subsequent to the jury verdict, the Federal Circuit issued its en banc decision in Egyptian Goddess v. Swisa (See IP Update, Vol. 11, No. 9). In that decision, the Federal Circuit concluded “that the point of novelty test, as a second and free-standing requirement for proof of design patent infringement, is inconsistent with the ordinary observer test laid down by the Supreme Court in [Gorham] … and is not needed to protect against unduly broad assertions of design patent rights.” In stating that the Gorham ordinary observer test should be the sole test for determining whether a design patent is infringed—the Federal Circuit noted that the “ordinary noted observer” would benefit from a comparison of the claimed design and accused design. Thus the Court reasoned, “[o]ur rejection of the point of novelty test does not mean … that the differences between the claimed design and prior art designs are irrelevant. To the contrary, examining the novel features of the claimed design can be an important component of the comparison of the claimed design with the accused design and the prior art. But the comparison of the designs … must be conducted as part of the ordinary observer test.” The Court emphasized that such comparisons are not a test of validity, but are designed solely for purposes of infringement. According to the Court, the burden of proof of infringement is on the patentee, but the burden of the production of the prior art is on the accused infringer.

Because the Sofpool jury infringement instructions were based upon the point of novelty test eliminated by Egyptian Goddess, the Court reversed the judgment of the district court and remanded the case.

Sofpool also argued that it “is entitled to an instruction on remand that the … patent is infringed, because both Intex’s expert and its attorney conceded that the accused design satisfied the ordinary observer test.” The Court disagreed stating that “[a]lthough Intex acknowledged that its oval pool might infringe the … patent under the ordinary observer test as it existed prior to Egyptian Goddess, Intex has never conceded that its oval pool infringes under this court’s newly articulated ordinary observer standard.”

Practice Note: The Egyptian Goddess ordinary observer test is a newly articulated test that contemplates a comparison between the accused design and the prior art as a factor that may be considered. To that extent, the test is different than the ordinary observer test as it existed prior to Egyptian Goddess.