Egyptian Goddess, Inc. v. Swisa, Inc.: Federal Circuit Decides to Rehear Important Design Patent Case En Banc

Egyptian Goddess, Inc., v. Swisa, Inc.

Federal Circuit, November 26, 2007, No. 2006-1562
Order

Update: On September 22, 2008, the en banc Federal Circuit affirmed the decision of the District Court for the Northern District of Texas, which had granted summary judgment in favor of Swisa, Inc, finding that no jury could reasonably find Swisa’s nail-buffer design infringed Egyptian Goddess’s design patent. Digest covers the recent decision here.

For more history on the original Federal Circuit opinion and order to vacate, read on.

 On August 29, 2007 a panel of the Federal Circuit affirmed the District Court for the Northern District of Texas’s grant of summary judgment for Swisa, Inc, on the grounds that no jury could reasonably find Swisa’s nail-buffer infringed Egyptian’s design patent. Writing for the panel, Judge Moore held “for a combination of individually known design elements to constitute a point of novelty, the combination must be a non-trivial advance over the prior art.” He reasoned that because Egyptian’s design combined elements in a trivial way, the product failed the “points of novelty” test.

On November 26, the Federal Circuit issued an order vacating the panel’s decision and agreed to re-hear the appeal en banc. The order directs the parties to address three specific questions in the rehearing, concerning the “points of novelty” test and claim construction with respect to design patents. Those questions are elaborated after the jump.

Dennis Crouch of Patently-O believes the order signals that the court will review established design patent law, which both Crouch and John L. Welch of TTAblog find muddled and confusing.
MVS FileWrapper has posted a summary of the August 29 panel decision.

The following are the three questions the court asked the parties to address at the rehearing:

1) Should a point of novelty be a test for infringement of design patent? 2) If so, (a) should the court adopt the non-trivial advance test adopted by the panel majority in this case; (b) should the point of novelty test be part of the patentee’s burden on infringement or should it be an available defense; (c) should a design patentee, in defining a point of novelty, be permitted to divide closely related or ornamentally integrated features of the patented design to match features contained in an accused design; (d) should it be permissible to find more than one point of noveltyâ in a patented design; and (e) should the overall appearance of a design be permitted to be a point of novelty? See Lawman Armor Corp. v. Winner Int’l, LLC, 449 F.3d 1190 (Fed. Cir. 2006). 3) Should claim construction apply to design patents, and, if so, what role should that construction play in the infringement analysis? See Elmer v. ICC Fabricating, Inc., 67 F.3d 1571, 1577 (Fed. Cir. 1995)

The court specifically asks parties to address the opinion in Lawman Armor Corp. v. Winner Int’l LLC, in which the court held that the overall appearance of a design could not be considered a point of novelty.