Egyptian Goddess v. Swisa: Federal Circuit Rejects Point of Novelty Test for Design Patent Infringement

Egyptian Goddess v. Swisa

CAFC, September 22, 2008,
Slip Opinion

The U.S. Court of Appeals for the 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.

A panel of the Federal Circuit had upheld the District Court’s decision on August 29, 2007, applying the “point of novelty” test for design patent infringement. On November 26, the Federal Circuit vacated the panel’s decision, deciding to hear the appeal en banc to determine the proper standard for assessing claims of design patent infringement.

The point of novelty test states that “the accused device must appropriate the novelty in the patented device which distinguishes it from the prior art.” Sears, Roebuck & Co. v. Talge, 140 F.2d 395, 396 (8th Cir.1944). This test requires that in order to find infringement, a court must attribute the similarity of two items to the novelty which distinguishes the patented device from the prior art. By contrast, the “ordinary observer” test, established in 1871 in Gorham Co. v. White looks for substantial similarity between the two designs, as taken from the viewpoint of an ordinary observer familiar with the prior art. The Federal Circuit held that the point of novelty test should no longer be used to assess claims of design patent infringement, favoring the ordinary observer test instead.

The Federal Circuit determined that the ordinary observer test was in line with both common sense and established precedent; the point of novelty test had been a recent departure from and was inconsistent with precedent. The court noted that viewing the items in light of prior art is the best way to highlight differences and similarities between two items, and that this can be done from the perspective of the ordinary observer.

Additionally, the court found that the ordinary observer test avoids a problem that the point of novelty test encounters when a claimed patent contains several points of novelty: any one point of novelty that a court chooses to focus on may determine the outcome of the case. This may go against what the Court calls the “proper inquiry” – whether the design as a whole has been appropriated. The point of novelty test may also allow a defendant to argue that its design does not infringe because it does not copy every point of novelty, even if it copies most of them and is identical in overall appearance.

Applying the newly-adopted test to the present case, the Federal Circuit affirmed, holding that no reasonable fact finder could find that an ordinary observer, familiar with the prior art, would deem Swisa’s design to be the same as Eyptian’s patented design.

Dennis Crouch of Patently-O points out that while this decision will mark an improvement for the holders of design patents, proving infringement under the ordinary observer test will likely be remain difficult. 

John Welch of TTABlog highlights the court’s analysis of problems with the point of novelty test, such as that the test favors a verbal approach over the visual approach of the ordinary observer test. The difficulty with the former approach is that a design patent defendant may always rephrase the verbal description, making the two items seem more different than they truly are.  

The Digest covered the Federal Circuit panel decision and the decision to re-hear the appeal en banc last year.

Tags: Federal Circuit, Patent

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