When is a design patent infringed? The US Court of Appeals for the Federal Circuit’s recent en banc decision in Egyptian Goddess v. Swisa leaves no doubt: the ordinary observer test is, and always has been, the sole legal standard for design patent infringement in the United States.

For years, there has been some confusion over the test for design patent infringement in the United States. In 1871, the Supreme Court held in Gorham Co. v. White that infringement took place when two designs appeared so similar that an "ordinary observer" would purchase one believing it to be the other.

More than a century later, the Federal Circuit in Litton Systems v. Whirlpool held that design patent infringement required that two criteria be satisfied. The first was the "ordinary observer test" as established in Gorham. Additionally, the accused design also had to incorporate the very features that distinguished the claimed design from the prior art (the "point of novelty" test).

Decisions rendered after Litton Systems have raised questions about the role of the point of novelty test. While some argued that it should be considered part of the ordinary observer test, the Federal Circuit held on several occasions that it was a distinct test that must be satisfied independently.

The point of novelty test works well where the claimed design differs from the prior art in only one respect. If the accused design incorporates that single novel aspect and is otherwise similar in appearance, finding infringement is straightforward.

The problem arises where the claimed design differs from the prior art in several ways (i.e., where there are several points of novelty). In such cases, the outcome can turn on which points of novelty the court focuses on. As such, the court’s attention may shift from the proper inquiry of whether the accused design appropriated the claimed design as a whole.

In Egyptian Goddess, the Federal Circuit had to assess the similarity between two designs for nail buffers. The plaintiff, Egyptian Goddess Inc., claimed that Swisa Inc. infringed its patented design for a nail buffer. Egyptian Goddess’s design was for a rectangular shape with abrasive pads on three of its four sides. Swisa’s design had a similar shape, but had abrasive pads on all four sides. After reviewing and restating the law on design patent infringement, the Federal Circuit held that Swisa’s design did not infringe Egyptian Goddess’s patent. The two designs were sufficiently different such that an ordinary observer, familiar with the prior art, would not be deceived into thinking that the Swisa buffer was the same as the patented buffer.

McCarthy Tétrault Notes:

The Federal Circuit’s unanimous judgment in Egyptian Goddess has important implications. With Egyptian Goddess, the Federal Circuit has clearly indicated that the point of novelty test no longer forms part of the test for design infringement as a separate analysis. It did not actually overrule its previous case law on this point, finding that the point of novelty test could be viewed as "a version of the ordinary observer test." This ruling reconciles almost a quarter-century of seemingly divergent case law. As such, Egyptian Goddess has given US design patent law a new start, or at least a restart.