A recent decision by the Federal Circuit clarified the proper test for infringement of a design patent. Prior to the decision in Egyptian Goddess, Inc. v. Swisa, Inc., No. 2006-1562, slip op. (Fed. Cir. Sept. 22, 2008) (en banc), the test for design patent infringement was a two-part test. The first part of the test was referred to as the "ordinary observer" test, and was first laid out by the Supreme Court in 1871: "[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 decieve such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other." Gorham Manufacturing Company. v. White, 81 U.S. 511, 528 (1871).

The second part of the test was referred to as the "point of novelty" test, which was attributed to a Federal Circuit decision in 1984: "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.'" Litton Sys., Inc. v. Whirlpool Corp., 728 F.2d 1423, 1444 (Fed. Cir. 1984). (citations ommitted). Over time, the ordinary observer and point of novelty tests became two separate and distinct steps of design patent infringement analysis.

The Federal Circuit, however, recently rejected the need for a separate "point of novelty" test in Egyptian Goddess. Rather, the Federal Circuit found that application of the ordinary observer test wherein the ordinary observer is deemed to view the differences between a patented design and an accused product in the context of the prior art is sufficient to determine infringement. Thus, the Federal Circuit's decision has not rendered the differences between the claimed design and the prior art irrelevant, but it has made the analysis more subjective. The focus is no longer on the differences per se, but is on the effect those differences have on the appearance of the design as a whole when viewed in the context of the prior art. If, when comparing an accused design to a patented design in the context of the prior art, the accused design is far more similar to the prior art than to the patented design, infringement is unlikely, but where the accused design is more similar to the patented design than the prior art, a finding of infringement may be justified.

Egyptian Goddess has seemingly made it easier for a patentee to prove infringement, or more accurately, made it more difficult for a defendant to show non-infringement. No longer can a defendant point to a specific aspect of a design as a "point of novelty" and claim that since the accused design does not have that specific aspect, it cannot infringe. Such a factor will still be considered by the hypothetical "ordinary observer," but if, in the context of the prior art, the accused design still creates an overall appearance deceptively similar to the patented design, a finding of infringement may still be made.

Moreover, the subjectiveness of the "ordinary observer" test may provide difficulties in obtaining summary judgment as there will almost certainly remain a question of fact as to whether an ordinary observer familiar with the prior art would be deceived by the similarities between patented and accused designs.

Furthermore, the Federal Circuit also ruled that while claim construction is a necessary part of an infringement analysis, courts dealing with design patent infringement cases need not provide a detailed verbal description of the claimed design. A court may still choose to provide a detailed description of a claimed design and it will not be reversible error, but it is preferable for a district court not to attempt to "construe" a design patent claim by providing a detailed verbal description of the claimed design. Thus, a design patent is no longer constrained by the English language. This removes an accused infringer's ability to identify specific missing elements that would have literally been spelled out for the fact finders by a claim construction in the past.

In the end, Egyptian Goddess has likely made the design patent a stronger and more valuable intellectual property, and an added deterrent to would-be infringers in the marketplace.