Federal Circuit Clarifies the Test for Design Patent Infringement: "Ordinary Observer Informed by the Prior Art"

23 September 2008 Publication
Authors: Marshall J. Brown

Legal News Alert: Intellectual Property

The United States Court of Appeals for the Federal Circuit, sitting en banc, clarified the test for design patent infringement in Egyptian Goddess, Inc. v. Swisa, Inc., 2006-1562, slip op. (Fed. Cir. Sept. 22, 2008) (en banc). In a unanimous opinion, the Federal Circuit explained that a design patent is infringed if an ordinary observer informed by the prior art would believe that the accused design is substantially the same as the patented design. The Court’s opinion expressly rejected the “point of novelty” and “non-trivial advance” standards as separate requirements to prove design patent infringement, but explained circumstances where these concepts may be considered as part of the “ordinary observer” test. The Federal Circuit also held that detailed verbal constructions of a design patent’s claims were neither required nor prohibited.

The Court then applied these holdings to the facts of the case and affirmed the summary judgment of non-infringement.

The Context: A Brief History of Egyptian Goddess
Egyptian Goddess sued Swisa for infringement of a design patent covering an ornamental design for a nail buffer. The District Court granted Swisa’s motion for summary judgment of non-infringement. Egyptian Goddess, Inc. v. Swisa, Inc., Civil Action No. 3:03-CV-0594-N (N.D. Tex. Dec. 14, 2005). The District Court applied the two tests previously required for design patent infringement: (1) whether an ordinary observer test would have found the design of the accused product to be substantially similar to the claimed design; and (2) whether the accused product’s design included “substantially the same points of novelty that distinguished the patented design from prior art.” In granting summary judgment, the District Court found that the Swisa buffer did not appropriate the point of novelty of the patented Egyptian Goddess design.

On appeal, the Federal Circuit panel affirmed the grant of summary judgment. Egyptian Goddess, Inc. v. Swisa, Inc., 498 F.3d 1354. As part of its infringement analysis under the point of novelty requirement, the Federal Circuit held that “in order 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.’” Id. at 1355. Because no reasonable juror could find a non-trivial advance over the prior art, the Federal Circuit agreed that there was no infringement. The dissenting judge objected to the non-trivial advance standard as inconsistent with precedent, and as confusing the infringement/obviousness analysis, creating a special test for combinations of design elements and analyzing infringement on an element rather than overall design basis. Id. at 1359-1360.

On November 26, 2007, the Federal Circuit granted Egyptian Goddess’ petition to hear the case en banc to consider the following four issues:

  • Whether courts should continue to use the point of novelty test to determine design patent infringement
  • Whether the Court should adopt the non-trivial advance test to determine whether a particular design feature qualifies as a point of novelty
  • How the point of novelty test should be administered, particularly when numerous features of the design differ from certain prior art designs
  • Whether district courts should perform formal claim construction in design patent cases

The Court Reaffirms the “Ordinary Observer” Test
The en banc Federal Circuit rejected both the point of novelty and non-trivial advance requirements as separate tests for determining design patent infringement. To support these results, the Federal Circuit’s opinion traced the origin and development of the ordinary observer test. The Supreme Court first articulated the ordinary observer test:

[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 deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other.
Gorham Co. v. White, 81 U.S. 511 (1871).

After a review of subsequent cases, the Federal Circuit determined that Litton Systems, Inc. v. Whirlpool Corp., 728 F.2d 1423, 1444 (Fed. Cir. 1984), should not be interpreted as creating a second, separate test for design patent infringement, and instead explained:

We think, however, that Litton and the predecessor cases on which it relied are more properly read as applying a version of the ordinary observer test in which the ordinary observer is deemed to view the differences between the patented design and the accused product in the context of the prior art. When the differences between the claimed and accused design are viewed in light of the prior art, the attention of the hypothetical ordinary observer will be drawn to those aspects of the claimed design that differ from the prior art. Egyptian Goddess, slip op. at 17.

Moreover, the Court pointed to a number of additional cases after Gorham that further support viewing the ordinary observer as one who is informed of the prior art. Id. at 13-17 (citing Smith v. Whitman Saddle Co., 148 U.S. 674 (1893); Bevin Brothers Mfg. Co. v. Starr Brothers Bell, Co., 114 F. 362 (C.C.D. Conn. 1902); Zidell v. Dexter, 262 F. 145, 146 (9th Cir. 1920)).

The Federal Circuit explained that the burden of producing prior art that should be considered in the context of the ordinary observer test falls upon the accused infringer. Id. at 22-23. The ultimate burden of proving infringement by a preponderance of the evidence, however, remains on the patentee. Id. at 23. 

Detailed Claim Construction Is Within the District Court’s Discretion
With respect to the final question regarding construction of design patent claims, the Court’s opinion did not prescribe any particular form of claim construction. As the Federal Circuit recognized, district courts are “very accustomed” to providing adequate guidance to a jury’s consideration of the issues presented in a case. Id. at 26. A district court’s decision to issue a relatively detailed claim construction, therefore, is not per se reversible error; however, the district court is not required to issue such a construction. Id. at 23. Indeed, the Federal Circuit suggested that detailed verbal claim constructions may not contribute enough to the process of analyzing the case to be worth the effort. Id. at 24.

By rejecting separate point of novelty or non-trivial advance tests, the Federal Circuit has arguably opened the door for findings of design patent infringement in at least some instances where infringement would otherwise have been more difficult to prove. For example, by noting that, “[i]f the claimed design consists of a combination of old features that creates an appearance deceptively similar to the accused design, even to an observer familiar with similar prior art designs, a finding of infringement would be justified,” the Court has left open the possibility that infringement could be found in some situations where the non-trivial advance test may have pointed toward a finding of noninfringement. At the same time, however, the Court has reaffirmed the importance of prior art in a design patent infringement analysis. Thus, while the Federal Circuit has established the primacy of the ordinary observer test, relevant prior art will continue to serve as an important benchmark when comparing an accused device to a claimed design.

Legal News is part of our ongoing commitment to providing legal insight to our clients and our colleagues. If you have any questions about this alert or would like to discuss this topic further, please contact your Foley attorney or the following individuals:

Marshall J. Brown
Chicago, Illinois

Heidi L. Belongia
Chicago, Illinois