The United States Court of Appeals for the Federal Circuit clarified the law of design patents on Monday (September 22, 2008), with its ruling in Egyptian Goddess, Inc. v. Swisa, Inc.[1] Prior to this decision, owners of design patents were required to satisfy the following two tests to hold infringers accountable for their alleged design misdeeds:

(1) Ordinary Observer Test: Formulated by the Supreme Court in 1871, this test asks "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 be the other, the first one patented is infringed by the other." Gorham Co. v. White, 81 U.S. 511.

(2) Point of Novelty Test: In 1984, the Federal Circuit Court of Appeals held that "for a design patent to be infringed . . . no matter how similar two items look, the accused device must appropriate the novelty in the patented device which distinguishes it from the prior art. That is, even though the court compares two items through the eyes of the ordinary observer, it must nevertheless, to find infringement, attribute their similarity to the novelty which distinguishes the patented device from the prior art." Litton Systems, Inc. v. Whirlpool Corp., 728 F.2d 1423 (Fed. Cir. 1984). After Litton, the Federal Circuit Court of Appeals treated this point of novelty test as separate and distinct from the ordinary observer test and required that the patent owner "point out the point of novelty in the claimed design that has been appropriated by the accused design." Egyptian Goddess at *10.

Though arguably simple to apply to a design with only one feature distinguishing it from a single prior art reference, the "point of novelty" test created confusion in situations where a design patent had numerous features that could be considered points of novelty, and even more so in situations where a design sported a combination of features that were disclosed in multiple prior art references. In view of this confusion, the Court in Egyptian Goddess represented that it was jettisoning the point of novelty test and held that "the ordinary observer test should be the sole test for determining whether a design patent has been infringed." Id. at *12.[2]

The Court modified this test, however, by holding that the hypothetical "ordinary observer" is considered to be familiar with the prior art. In other words, this knowledgeable, yet ordinary, observer takes prior art into account when comparing a design patent with an infringing design and determining whether "the accused design has appropriated the claimed design as a whole." Id. at *11. When there are prior art designs that are similar to the patented design, as there were in Egyptian Goddess, and where the accused and patented designs are also very similar, the ordinary observer may focus on smaller differences between the patented design and accused product, "which might not be noticeable in the abstract," to determine infringement. Id. at *12. As such, it appears that the Federal Court has not discarded the point of novelty test entirely, but instead has softened its sting and rolled it into the ordinary observer test. In fact, the Court noted that the ordinary observer test, with this modification, "does not present the risk of assigning exaggerated importance to small differences between the claimed and accused designs relating to an insignificant feature simply because that feature can be characterized as a point of novelty." Egyptian Goddess at *11. In this case, the Court analyzed the nail buffers at issue and asked whether an ordinary observer would regard the accused design as being closer to the claimed design than to the prior art. Id. at *16. When the answer was no, the Court affirmed the trial court's decision in favor of the defendant.

In view of the Egyptian Goddess decision, patentees should be aware that infringers may attempt to rely on similar prior art designs to narrow the focus of the ordinary observer test to distinctions in the designs that might otherwise escape notice.