09/07/2010 10:10:00 AM EST
LaFrance on the Demise of the Point of Novelty Test
the Federal Circuit eliminated the point of novelty test for infringement of
design patents in Egyptian Goddess, Inc. v. Swisa, Inc.,
543 F.3d 665 (Fed. Cir. 2008), the court expressly reserved the
question whether it would also eliminate this test for determinations of design
patent validity. In Int'l Seaway Trading Corp. v. Walgreens
Corp., 589 F.3d 1233 (Fed. Cir. 2009), the court answered this
question. In this Analysis, Mary LaFrance answers the question and analyzes the
issues presented. She writes:
The patentee, International
Seaway, sued the defendants for infringing Seaway's '263, '032, and '033 design
patents for lightweight "clog" style footwear. However, the district
court held that all three patents were invalid due to anticipation by the '789
design patent owned by Crocs, Inc., under 35 U.S.C. §§ 102(a) and 102(e). The
district court reached this conclusion by applying the ordinary observer test
alone, declining to apply the point of novelty test.
. . . .
C. Federal Circuit
On appeal, the Federal
Circuit held that the district court correctly declined to apply the point of
novelty test, but erred in how it applied the ordinary observer test.
Reaffirming the general rule
that "the same test must be used for both infringement and
anticipation," the Federal Circuit held that, because the ordinary
observer test was now the sole test for infringement of a design patent,
"the ordinary observer test must logically be the sole test for
anticipation as well." The court also identified several problems that
arise from applying the point-of-novelty test in the anticipation context. Specifically,
the point of novelty test (1) overemphasizes the importance of minor
differences, (2) requires a review of the entire prior art in order to identify
the points of novelty in the specific prior art that is alleged to anticipate
the patented design, and (3) raises the question whether a combination of old
design features can itself be a point of novelty.
. . . .
The disagreement between the
majority and the dissent in International Seaway highlights a problem
which is likely to require further attention from the Federal Circuit in the
future. If the ordinary observer test requires comparison of the "overall
designs," which differences are so insignificant as to warrant a grant of summary
judgment? If the anticipation question were presented to a jury, then true
"ordinary observers" would decide this question. However, in the
summary judgment context, the court itself must play the role of ordinary
observer. How much deference should be accorded to a district court's
determination that a reasonable jury would consider certain differences to be
insignificant? In this case, with respect to the exterior differences between
the shoe designs (that is, all of the differences except those arising from the
insole designs), the Federal Circuit agreed with the district court that
"these minor variations in the shoe are insufficient to preclude a finding
of anticipation because they do not change the overall visual impression of the
shoe." The subjectivity of any attempt to characterize the "overall
visual impression" of a design casts doubt on the appropriateness of
resolving such a question at the summary judgment stage.
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