To determine whether an accused product infringes a design patent, a two-part test is applied. The two parts are the "ordinary observer" test and the "point of novelty" test. The tests have been treated as being complementary, so that if an ordinary observer would consider the two designs as essentially the same, the second test would be applied to determine whether the accused device appropriates the point of novelty that distinguishes the patented item from the prior art. This second test is somewhat in conflict with the general proposition that a claimed invention should be viewed taking into account all of the claim limitations together and focusing on the overall design, rather than on any particular element that may be considered "the invention."
This two-part test was applied in a recent case (Egyptian Goddess, Inc vs. Swisa, Inc.) by the U.S. Court of Appeals for the Federal Circuit (CAFC), sitting in as three-judge panel in Washington, D.C. (The CAFC has jurisdiction over all patent-related issues in cases that are brought in any U.S. District Court.) The CAFC affirmed the U.S. District Court for the Northern District of Texas ruling that granted summary judgment against the patent owner because of failure to meet the "point of novelty" test. The CAFC found that the combination of elements that was asserted as comprising the "point of novelty" did not rise to a non-trivial advance over the prior art, and that no reasonable jury could conclude that it did; and held the accused design did not infringe as a matter of law. In a strongly-worded dissenting opinion, Judge Dyk disagrees with the holding for several reasons, the most cogent being that the point of novelty, as applied, is directed to raising a "non-obviousness" issue in the "point of novelty" test in contravention of the statutory presumption of validity of a patent. There is also the inherent difficulty in making a determination in a design case of what constitutes a non-trivial advance over the prior art at the point of novelty.
In a per curiam order, the CAFC has granted a petition for rehearing by an en banc panel of all thirteen members of the CAFC. This procedural step by an appellate court is usually resorted to when the court intends to clarify a point of law in a decisive way. The case will be re-argued before the full court, and the CAFC has requested the parties, and any interested amicus curiae, to brief specific questions as follows:
1) Should "point of novelty" be a test for infringement of design patent?
2) If so,
(a) should the court adopt the non-trivial advance test adopted by the panel majority in this case;
(b) should the point of novelty test be part of the patentee's burden on infringement or should it be an available defense;
(c) should a design patentee, in defining a point of novelty, be permitted to divide closely-related or ornamentally-integrated features of the patented design to match features contained in an accused design;
(d) should it be permissible to find more than one "point of novelty" in a patented design; and
(e) should the overall appearance of a design be permitted to be a point of novelty?
3) Should claim construction apply to design patents, and, if so, what role should that construction play in the infringement analysis?...
The decision of the en banc panel is expected sometime in the new year. Whatever the outcome, the CAFC will advance the understanding of design patents and their enforcement.
Vol. 53, June 2010