Removing a Hoop in Design Patent Cases; Downfall of the Point of Novelty Test: Egyptian Goddess, Inc. v. Swisa, Inc., 2008 U.S. App. LEXIS 20104 (Fed. Cir. 2008)

Removing a Hoop in Design Patent Cases; Downfall of the Point of Novelty Test: Egyptian Goddess, Inc. v. Swisa, Inc., 2008 U.S. App. LEXIS 20104 (Fed. Cir. 2008)

Someone’s tossing the tools from the toolbox, and some patent attorneys might not be happy about it. In the design patent case of Egyptian Goddess, Inc. v. Swisa, Inc., 2008 U.S. App. LEXIS 20104 (Fed. Cir. 2008), the Federal Circuit asked whether the "point of novelty" test should continue to be used as a tool for determining infringement. The court answered in the negative, and consequently, the “point of novelty test” is no more.
 
Gorham Co. v. White, 81 U.S. 511, 20 L. Ed. 731 (1871) established the "ordinary observer" test for determining design patent infringement. Under this 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.
 
However, in a series of cases tracing their origins to Litton Systems, Inc. v. Whirlpool Corp., 728 F.2d 1423 (Fed. Cir. 1984), the Federal Circuit held that proof of similarity under the ordinary observer test was not enough to establish design patent infringement. Instead, the accused design had to also appropriate the novelty of the claimed design in order to be deemed infringing. This test, known as the “point of novelty” test, was difficult to apply where the claimed design had numerous features that could be considered points of novelty or where multiple prior art references were at issue.
 
In Swisa, Egyptian Goddess, Inc. (EGI) rejected the point of novelty test as a second part of the test for design patent infringement, distinct from the ordinary observer test established in Gorham.
 
Instead of requiring the fact-finder to identify one or more points of novelty in the patented design and then determining whether the accused design has appropriated some or all of those points of novelty, EGI contends that the ordinary observer test can fulfill the purposes for which the point of novelty test was designed, but with less risk of confusion. As long as the ordinary observer test focuses on the "appearance that distinguishes the patented design from the prior art," EGI contends that it will enable the fact-finder to address the proper inquiry, i.e., whether an ordinary observer, familiar with the prior art, would be deceived into thinking that the accused design was the same as the patented design.
 
Agreeing with EGI, the Swisa court concluded that the point of novelty test, as a second and free-standing requirement for proof of design patent infringement, was inconsistent with the ordinary observer test. The court stated:
 
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. And when the claimed design is close to the prior art designs, small differences between the accused design and the claimed design are likely to be important to the eye of the hypothetical ordinary observer.
 
The court held that the "point of novelty" test would no longer be used in the analysis of a claim of design patent infringement. In accordance with Gorham and subsequent decisions, the court held that the "ordinary observer" test would be the sole test for determining whether a design patent has been infringed. Under this test, infringement cannot be found unless the accused article embodies the patented design or any colorable imitation thereof.