In a recent en banc ruling, the Federal Circuit adopted the “ordinary observer” test as the sole legal standard for assessing claims of design patent infringement. Egyptian Goddess, Inc. v. Swisa, Inc., No. 3:03CV-0594, 2008 WL 4290856 (Fed. Cir. Sept. 22, 2008) (en banc). According to this standard, a design patentee must show that an ordinary observer would consider the claimed design and the accused design substantially the same. Id. at *12. Under prior case law, the design patentee had a heavier burden. In addition to satisfying the ordinary observer standard, a design patentee had to satisfy a separate “point of novelty” test to prove infringement. The Egyptian Goddess court rejected this additional test and explained that because “the ordinary observer is deemed to view the differences between the patented design and the accused product in the context of the prior art,” the ordinary observer test already accounted for novelty. Id. at *10.

Both design patentees and accused infringers should monitor the development of this new standard and adjust their litigation strategies accordingly.

The “Ordinary Observer” Is the Sole Arbiter of Design Patent Infringement

In Gorham Co. v. White, 81 U.S. 511, 526-27 (1871), the U.S. Supreme Court defined design patent infringement as “sameness of appearance,” or substantial similarity without regard to “mere differences” or “slight variances in configuration.”

Prior to Egyptian Goddess, to show “sameness of appearance,” a design patentee had the burden to show infringement via two separate tests. Under the first test, known as the “ordinary observer” test, the patentee had to show substantial similarity between the patented design and the accused design as a whole, from the perspective of an ordinary observer, and without the use of an expert. See Egyptian Goddess, 2008 WL 4290856, at *4. Under the second test, known as the “point of novelty” test, the patentee had to show that the accused design appropriated the claimed design’s “point of novelty.” Id. Specifically, this required the patentee to produce relevant prior art, identify novel features in the design, and then highlight where these novel features were present in the accused design. Id. at *5.

In the eyes of this Egyptian Goddess court, this is where the “point of novelty” test fell short. Rather than put emphasis on the design as a whole as required by Gorham, it exaggerated the importance of small differences. This problem was compounded when multiple features made up the patented design’s “point of novelty” because an accused infringer could escape liability merely by pointing to a single feature not found in the accused design. Id. at *11. Moreover, when any individual feature was not novel by itself, but only novel when included in a combination of other features, courts had difficulty defining where the “point of novelty” lay. Id.

In light of these shortcomings, the Federal Circuit decided that the cases behind the “point of novelty” standard for design patent infringement had been misinterpreted. Instead of establishing a separate “point of novelty” infringement test, the court read these cases as specific applications of the “ordinary observer” test in which the background prior art provided a “frame of reference” for the comparison of the claimed and accused designs. Id. at *10. According to the court’s explanation, evaluation of a design’s point of novelty is important “when the claimed design is close to the prior art designs, [since] small differences between the accused design and the claimed design are likely to be important to the eye of the hypothetical ordinary observer” and will only become evident after “a comparison of the claimed and accused designs with the prior art.” Id. at *12. But this does not mean that a design patentee must show that an accused design appropriated the claimed design’s point of novelty to show infringement.

Thus, after Egyptian Goddess, the sole standard for determining design patent infringement is the “ordinary observer” test, and it remains the design patentee’s burden to prove infringement via that standard. Id. When the patented design and the accused design are very similar, without reference to the prior art, then the prior art can be used to highlight their differences and to aid the court in deciding whether the ordinary observer would find them substantially the same. The burden to bring forward such prior art, though, now rests with the accused infringer to be employed in defense of the claim of infringement. Id.

District Courts Have Discretion to Verbally Construe Design Patent Claims

A second issue before the Egyptian Goddess court was how district courts should conduct claim construction in design patent cases. Construction of design patent claims presents a unique challenge to district courts. Just like utility patent cases, district courts continue to have a duty to construe the claims in design patent cases. See Elmer v. ICC Fabricating, 67 F.3d 1571, 1577 (Fed. Cir. 1995). But unlike a utility patent, a design patent’s claims are in the form of drawings rather than words, and leaves open the issue of how much verbal detail is required to construe the graphical claim.

In Egyptian Goddess, the Federal Circuit left this issue to the discretion of the district courts, but warned against following the practices established for utility patent cases. In a utility patent case, a detailed verbal description of the invention is often required, but in a design patent case, the Federal Circuit said that “providing a detailed verbal description of the claimed design” is not the “preferable course.” Egyptian Goddess, 2008 WL 4290856, at *13. As the court indicated, while sometimes such descriptions may be necessary, it risks placing undue emphasis on particular features of the claimed design or inviting the finder of fact to focus on individual design features set forth in the verbal description rather than the design as a whole. Id. Thus, as a general matter, detailed verbal descriptions should be avoided. Id. at *14.

On the contrary, when construing a design patent’s claims, the Egyptian Goddess court emphasized the district court’s role in providing sufficient guidance to the jury. To meet this end, the Federal Circuit suggested that it may be helpful for the district court’s construction to (1) point out features of the claimed design as they relate to the accused design and prior art; (2) describe the role of conventions in design patent drafting; (3) describe the effect of representations made in the prosecution history; or (4) distinguish features of the claimed design that are ornamental as opposed to functional. Id.

Practical Effect of Egyptian Goddess

The practical effect of Egyptian Goddess is not likely to be seen for quite some time. Design patentees, seeking to demonstrate infringement under the “ordinary observer” test will continue to be in the position of making the three-way comparison of the patented design, accused design, and the prior art when showing substantial similarity. Accused infringers, on the other hand, will now be placed in the position of identifying the relevant prior art. District courts handling design patent cases will continue to determine how to construe claims and the level of detail required, and where to draw the infringement line.