Egyptian Goddess v. Swisa: No more Point of Novelty Test for Design Patent Infringement

In its highly anticipated en banc opinion in Egyptian Goddess v. Swisa, 543 F.3d 665 (Fed. Cir. 2008), the Court of Appeals for the Federal Circuit rejected the point of novelty test for design patent infringement. The Court held that the “ordinary observer” test set forth in Gorham v. White is the only appropriate test for assessing claims of design patent infringement. When properly applied, the “ordinary observer” test takes into account prior art; therefore, the point of novelty test was an unnecessary and inconsistent departure from precedent and common sense.

Background

Egyptian Goddess, Inc. (“Egyptian Goddess”) sued Swisa, Inc. (“Swisa”), claiming that certain Swisa fingernail buffers infringed on Egyptian Goddess’ U.S. Design Patent 467,389. Swisa moved for summary judgment of non-infringement and invalidity. Egyptian Goddess claimed that the point of novelty of its design patent was its unique combination of four design elements, all of which were individually known in the prior art.

The district court granted summary judgment and a finding of non-infringment in favor of Swisa, finding that Egyptian Goddess had failed to satisfy its burden under the point of novelty test, one of the two tests required to prove design patent infringement under then-current Federal Circuit law. (See discussion below). Egyptian Goddess appealed the district court’s decision.

On appeal, the Federal Circuit panel majority agreed that Egyptian Goddess had failed to meet its burden under the point of novelty test and affirmed the district court’s summary judgment. However, the Federal Circuit panel curiously added a brand new twist on the point of novelty test – it held: “For a combination of individually known elements to constitute a point of novelty, the combination must be a non-trivial advance over the prior art.” Egyptian Goddess, Inc. v. Swisa, Inc., 498 F.3d 1354, 1357(Fed. Cir. 2007). The panel found that Egyptian Goddess’ asserted point of novelty was not a “non-trivial advance” over the prior art.

Egyptian Goddess sought a rehearing en banc, arguing against the new “non-triviality” requirement. Prior to rehearing, the Federal Circuit requested briefing well beyond the “non-triviality” requirement, in an apparent attempt to clarify the appropriate test for design patent infringement.¹

Pre-Egyptian Goddess: Two tests for design patent infringement

Prior to the en banc decision in Egyptian Goddess, Federal courts had developed two tests for design patent infringement – the “ordinary observer” test and the “point of novelty” test. In order to succeed on a claim of infringement, a plaintiff has to meet the burden of proof of both tests.

1) The “Ordinary Observer” Test

The U.S. Supreme Court established the ordinary observer test in Gorham v. White, 81 U.S. 511 (1871). The ordinary observer test looks for substantial similarity between the patented or claimed design and the accused design, as taken from the viewpoint of an ordinary observer familiar with the prior art.  The Gorham court set forth the test as follows:

“[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 patented is infringed by the other.”

81 U.S. 528. The ordinary observer test alone governed design patent infringement analysis for more than 100 years.

2) The “Point of Novelty” Test

The Federal Circuit added a separate and distinct test to the long-standing Gorham ordinary observer test in Litton Systems Inc. v. Whirlpool Corp, 728 F.2d 1423 (Fed. Cir. 1984) and its progeny. The Litton court described this second test, the “point of novelty” test, as follows:

“For a design patent to be infringed… no matter how similar two items look, ‘the accused device must appropriate the novelty in the patent device which distinguishes it from the prior art.”

Litton, 728 F.2d at 1444 (citing Sears, Roebuck & Co. v. Talge, 140 F.2d 395, 396 (8th Cir. 1944); Horwitt v. Longines Wittnauer Watch Co., 388 F. Supp. 1257, 1263 (S.D.N.Y. 1975)). The point of novelty test requires an identification of the claimed design’s point of novelty, then a determination as to whether the accused design has appropriated that point of novelty.

Prior to the Egyptian Goddess en banc decision, numerous practitioners had voiced displeasure with the “point of novelty” test, claiming it was unnecessary if the Gorham test is performed properly. Those critical of the “point of novelty” test claim it was fundamentally flawed, overly limiting of the potential scope of the design patent, and difficult to apply in cases of multiple points of novelty or multiple prior art references. (See, e.g., discussion in Egyptian Goddess v. Swisa, 543 F.3d at 671).

The Egyptian Goddess court rejects the “point of novelty” test

Much to the relief of many practitioners, the Federal Circuit rejected and did away with the “point of novelty” test in its en banc rehearing of the Egyptian Goddess appeal. The Federal Circuit determined that the Gorham “objective observer” test comported with both common sense and established precedent. 543 F.3d at 676-677. The “point of novelty” test, on the other hand, is inconsistent with precedent and “not needed to protect against unduly broad assertions of design patent rights.” Id. at 672.

The en banc court noted that proper application of the “ordinary observer” test requires that “the perspective of the ordinary observer be informed by a comparison of the patented design and the accused design in light of the prior art, so as to enable the fact-finder to determine whether the accused design had appropriated the inventiveness of the patented design.” Id. at 674.

Because the “ordinary observer” test enables reference to prior art without having to identify a specific point of novelty, the “ordinary observer” test “avoids some of the problems created by the separate point of novelty test.” Id. at 677. The court ultimately held that: “the ‘point of novelty’ test should no longer be used in the analysis of a claim of design patent infringement… we also do not adopt the ‘non-trivial advance’ test, which is a refinement of the ‘point of novelty’ test… we hold that the ‘ordinary observer’ test should be the sole test for determining whether a design patent has been infringed.” Id. at 678.

Applying its holding to the Egyptian Goddess facts, the en banc court found that “no reasonable fact-finder could find that EGI met its burden of showing, by a preponderance of the evidence, that an ordinary observer, taking in account the prior art, would believe the accused design to be the same as the patented design.” Id. at 682.

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