Decision Comes as More Companies Seek Alternate Forms of IP Protection
On September 22, 2008, the Federal Circuit eliminated the "Point of Novelty" test for design patent infringement, in favor of exclusive application of the long-held "Ordinary Observer" test in Egyptian Goddess, Inc. v. Swisa, Inc. Previously, both tests were applied in making a determination of design patent infringement.
The Federal Circuit held that: (1) the "point of novelty" test should no longer be used in the analysis of a claim of design patent infringement; (2) the "non-trivial advance" test, which is a refinement of the "point of novelty" test, should no longer be used; and (3) the preferred course for claim construction is to rely on the drawings rather than providing a detailed verbal description of the claimed design.
I. The Role of Design Patents
Design patents, unlike utility patents, protect the ornamental or aesthetic appearance of an article of manufacture - not the article's structural or utilitarian features. Patentees have successfully used design patents to prevent others from copying the design of several types of products including bottles, shoes, furniture and text fonts, among others. Since design patents last a period of 14 years and are less costly and issue sooner than utility patents, they can be an important component of an overall strategy in protecting innovative designs and new products. Now, with the decision in Egyptian Goddess, design patents can play an even more significant role.
II. The Ordinary Observer Test
For more than 125 years, the Ordinary Observer test has been employed by Courts in making a determination of design patent infringement (Gorham Mfg. Co. v. White, 81 U.S. 51 (1871)). This test looks at an accused product through the eyes of an ordinary observer, or purchaser of that product. If the ordinary observer is deceived into purchasing the accused product, or is induced to buy the product supposing it to be the patented design, then the product infringes the patented design. In the words of the Supreme Court, " ...if, 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." The accused product does not need to be identical to the patented design, only close enough to deceive an ordinary observer.
III. The Point of Novelty and Non-Trivial Advance Tests
Beginning in the mid-1980s, the Federal Circuit began applying a second test for design patent infringement. This test, the Point of Novelty test, compared the patented design with the prior art to determine which feature(s) were novel. Once the novel features or "points of novelty" were identified, these novel features were compared against the accused product, and if the accused product contained, or appropriated, these novel features, then the accused product infringed the patented design. In order to succeed in proving infringement, the patent owner had to satisfy both the Ordinary Observer test and the Point of Novelty test.
A subsidiary test to the Point of Novelty was also established by the Federal Circuit in cases where the asserted point of novelty consisted of a combination of elements rather than individual elements. In order for a combination of elements to be novel over the prior art, the combination must have been a non-trivial advance over the prior art in order to qualify as a point of novelty.
Both the Point of Novelty and the Non-Trivial Advance tests were eliminated in Egyptian Goddess, leaving the Ordinary Observer test as the sole test for design patent infringement.
IV. The Role of Prior Art
Although the Federal Circuit eliminated the Point of Novelty Test, it was made clear that the Ordinary Observer test was to be applied while taking into account the prior art. Therefore, differences between the patented design and the accused product are viewed in light of the prior art, with the expectation that the attention of a hypothetical ordinary observer will be drawn to the aspects of the patented design that differ from the prior art. When the patented design is close to the prior art, small differences between the accused product and the patented design will be more important. Additionally, when the prior art is used for comparison, it can highlight distinctions between the patented design and the accused product, as viewed by the ordinary observer. As a result, the prior art still plays a significant role in the determination of design patent infringement.
If an accused infringer elects to rely on the comparison of prior art as part of its defense against a claim of infringement, the burden of production of that prior art is on the accused infringer. However, the patent holder still bears the ultimate burden of proof to demonstrate infringement by a preponderance of the evidence.
V. Claim Construction
Before comparing the accused product to the design patent claim, a court must ascertain the meaning and scope of that claim. This issue was also addressed in Egyptian Goddess. Design patents claim a design by referring to figures which illustrate the design. Frequently, when attempting to verbalize those figures, courts construe a design patent claim by providing a detailed description of the claimed design. While this approach is still acceptable, the Federal Circuit cautioned against unduly emphasizing a design's particular features with too much detail. Doing so, the court warned, may prejudice the fact finder's focus from viewing the design as a whole.
The Federal Circuit examined several issues that courts should address when providing appropriate claim construction in design cases. One issue is the convention of design drawings, such as the use of broken lines to show visible environmental structure. These conventions, sometimes mistakenly overlooked by the patentee, help differentiate between the aesthetic and functional elements in a claimed design. Only the aesthetic elements are appropriate for design patents. Another issue is the effect of a patentee's representations made while prosecuting the patent. Patentees frequently limit the scope of their design or a particular element when contrasting the claimed design to prior art. The prior art itself and the accused design may also appropriately bear upon claim construction.
The level at which the figures of design patents are characterized to address these various issues is left to the discretion of the district court. As a general matter, however, claim construction in design cases should not require the level of verbal detail typically used when construing utility patents.
VI. Impact on Design Patent Holders
The decision in Egyptian Goddess swings in the favor of design patent holders. First, the design patent holder need only satisfy one test instead of two. Second, given the less structured approach of the Ordinary Observer test, patent holders will likely identify issues of material fact and survive summary judgment motions of noninfringement. Third, with the reduced emphasis on verbal claim construction, accused infringers will likely not be able to argue noninfringement based on specific words.
If you have any questions or wish to discuss how this decision will impact your company, please contact your attorney at Brinks Hofer Gilson & Lione.
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