Federal Circuit Abandons "Point of Novelty" Test in Egyptian Goddess's Design Patent Suit Versus Swisa

Holding:

In an en banc opinion, the U.S. Court of Appeals for the Federal Circuit held that the "point of novelty" test should no longer be used in resolving a claim for design patent infringement. Rather, the "ordinary observer" test should be the sole test for determining whether a design patent has been infringed. In this case, Egyptian Goddess, Inc. ("EGI") alleged that Swisa, Inc. had infringed its patent relating to a design for a nail buffer But the U.S. District Court for the Northern District of Texas issued a summary judgment of noninfringement, stating that Swisa's product did not incorporate the "point of novelty" of EGI's design patent. The "point of novelty" test provides that for a design patent to be infringed, no matter how similar two items look, the defendant's device must appropriate the novelty in the patented device which distinguishes it from the prior art. On appeal, a panel of the Federal Circuit, applying a refined version of this "point of novelty" test, affirmed. Subsequently, the Federal Circuit en banc also sustained the district court's judgment, but used a different analytical approach, the "ordinary observer" method. In applying this test, the Federal Circuit explained that infringement will not be found unless the accused article embodies the patented design or any colorable imitation thereof. Here, EGI was not able to meet its burden of showing by a preponderance of evidence that Swisa's design was the same as the patented design. Specifically, the Federal Circuit en banc affirmed the panel’s conclusion that in considering the prior art in the nail buffer field, the difference between Swisa’s design and that of EGI can not be considered as minor.

Detailed Summary:

Appellant EGI brought this action in the district court, alleging that Swisa, Inc., and Dror Swisa (collectively, “Swisa”) had infringed EGI’s U.S. Patent No.  ’389. Opinion, p. 1.

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. Id., p. 2.

The district court held that the patent was not invalid on the ground that the design was…

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