Law School Case Brief
Egyptian Goddess, Inc. v. Swisa, Inc. - 543 F.3d 665 (Fed. Cir. 2008)
The United States Court of Appeals for the Federal Circuit holds that the point of novelty test should no longer be used in the analysis of a claim of design patent infringement. Because the Federal Circuit rejects the point of novelty test, it also does not adopt the nontrivial advance test, which is a refinement of the point of novelty test. Instead, in accordance with case law, the Federal Circuit holds that the ordinary observer test should be the sole test for determining whether a design patent has been infringed. Under that test, as the Federal Circuit court has sometimes described it, infringement will not be found unless the accused article embodies the patented design or any colorable imitation thereof.
Appellant Egyptian Goddess, Inc., (EGI) brought the present action in the United States District Court for the Northern District of Texas, alleging that Swisa, Inc., and Dror Swisa (Swisa) had infringed EGI’s U.S. Design (the ‘389 patent). The patent claimed a design for a nail buffer, consisting of a rectangular, hollow tube having a generally square cross-section and featuring buffer surfaces on three of its four sides. Swisa's accused product consists of a rectangular, hollow tube having a square cross-section, but featuring buffer surfaces on all four of its sides. The District Court held that the patent was not invalid on the ground that the design was governed solely by function. Swisa then moved for summary judgment of non-infringement. The district court granted the motion. Citing precedent of the Supreme Court, the district court stated that the plaintiff in a design patent case must prove both: (i) that the accused device was "substantially similar" to the claimed design under what was referred to as the "ordinary observer" test, and (ii) that the accused device contained "substantially the same points of novelty that distinguished the patented design from the prior art." After comparing the claimed design and the accused product, the court held that Swisa's allegedly infringing product did not incorporate the "point of novelty" of the '389 patent.
- Was it proper to use the point of novelty test in analyzing a claim of design patent infringement?
- Was there infringement in the present case?
Based on a thorough review of the case law, the appellate court held that the point of novelty test was no longer to be used in the analysis of a claim of design patent infringement. Rather, the ordinary observer test was the sole test for determining whether a design patent had been infringed. The decision as to the level of detail to be used in describing the claimed design was a matter within the district court's discretion, although the district court was not to treat the claim construction process as requiring a detailed verbal description of the claimed design. Absent a showing of prejudice, the district court's decision to issue a relatively detailed claim construction was not reversible error. On the facts of this case, no reasonable factfinder could have found that the patent holder met its burden of showing that an ordinary observer would have believed the accused design to be the same as the patented design.
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