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Federal Circuit Ruling Sets Legal Standard for Design Patent Infringement
'Egyptian Goddess' Sets Standard for Design Patent InfringementThe landscape of design patent law has changed fundamentally, following a federal appeals court ruling that sets aside the use of the "point of novelty" test in assessing design patent infringement. The Federal Circuit, sitting en banc, ruled unanimously Monday that design patent infringement analysis must be rooted in the long-established "ordinary observer" test. The ruling was immediately heralded by lawyers in the intellectual property bar as a strengthening of design patents.
Legal Times2008-09-24 12:00:00 AM
The landscape of design patent law changed fundamentally following a federal appeals court ruling this week that sets aside the decades-long use of the "point of novelty" test in assessing design patent infringement.
The U.S. Court of Appeals for the Federal Circuit, sitting en banc, ruled unanimously Monday that design patent infringement analysis must be rooted in the long-established "ordinary observer" test (pdf) -- essentially whether the accused design "embodies" the appearance of the patented design. There has been confusion over whether the point of novelty test was a separate and distinct test for design patent infringement.
The appellate court ruling in Egyptian Goddess v. Swisa was immediately heralded by lawyers in the intellectual property bar as a strengthening of design patents. "The decision today creates a better framework for analysis of design patent rights. For many designs, especially the more aesthetically pioneering designs, it substantially strengthens those design patents," says Banner & Witcoff partner Robert Katz, whose firm represented Nike, among others, in amicus briefs in the Federal Circuit.
The ordinary observer test holds that two designs cannot be so alike that the consumer is deceived --purchasing one product thinking that it is the other. But in a series of later cases, the Federal Circuit ruled that proof of similarity is insufficient to establish design patent infringement. To prove infringement, the court said, the accused design must also incorporate the novelty of the claimed design. But until now it has remained unclear whether the point of novelty test has been a separate test.
The point of novelty test generated confusion and was particularly difficult to apply in cases where the claimed design had numerous features that can be considered points of novelty or where the claimed design includes features found in one or more earlier designs, the Federal Circuit said in its 31-page opinion. Point of novelty analysis eroded design patents, making them less valuable, says Tracy-Gene Durkin, a partner at Sterne, Kessler, Goldstein & Fox, which represented the Intellectual Property Owners Association in an amicus briefs in the litigation.
The latter part of the Federal Circuit decision in Egyptian Goddess, Durkin and Katz say, gives discretion to district court judges in verbally describing the design patent for the guidance of jurors. District court judges typically provide a detailed verbal description in the case of utility patents. But in design cases, "the ultimate test is comparing the image to the accused product," Katz says.
The case's facts involved nail buffers. Egyptian Goddess makes a beauty-supply product that has raised, abrasive padding on three sides. The accused design, made by Swisa, has padding on all four sides. The Northern District of Texas found Swisa's product did not infringe the Egyptian Goddess patent because Swisa's nail buffer had pads on each of its four sides. The Federal Circuit last year affirmed the district court ruling before granting a rehearing en banc to address standards used to assess design patent infringement.
The full Federal Circuit ruled that the Swisa's nail buffer does not infringe the Egyptian Goddess patent. "No reasonable fact-finder" could find the Egyptian Goddess nail buffer design -- with its pads on three sides -- is the same as Swisa's four-padded-sides design, the court concluded.
First reported in The BLT: The Blog of Legal Times