LaFrance on the Demise of the Point of Novelty Test

When 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:

III. International Seaway

A. Facts

     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.

    . . . .

IV. Analysis

     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.

(citations omitted)

Access the full version of LaFrance on the Demise of the Point of Novelty Test with your lexis.com ID. Additional fees may be incurred. (approx. 7 pages) 

If you do not have a lexis.com ID, you can purchase the Emerging Issues Analysis content through our lexisONE Research Packages