Design Patent Infringement
Egyptian Goddess, Inc. v. Swisa, Inc.,
498 F.3d 1354 (Fed. Cir. 2007)
Patricia Smink Rogowski
April 11, 2008
An Ornamental Design for
an Article of Manufacture
• Whoever invents any new, original and
ornamental design for an article of manufacture
may obtain a patent therefore, subject to the
conditions and requirements of this title. 35
U.S.C. §171
• A design patentee may recover damages under
35 U.S.C. §284 or under 35 U.S.C. §289.
“Ornamental” Design
•
•
•
•
Surface ornamentation, or
Configuration of goods, or both
Non-Functional Features of the Design
Features not hidden in normal use
Gorham Mfg. Co. v. White, 81 U.S. (14 Wall.) 511,
525 (1872)(design patent for pattern on
silverware handle)
Surface Ornamentation and
Configuration
07/902,055 Application
29/020,787 Continuation
In re Daniels, 144 F.3d 1352 (Fed. Cir. 1998)
Surface Ornamentation and
Configuration
• Drawings provide description of invention
• Drawings of earlier patent disclosed the invention
claimed in the later patent
• Leaf ornamentation did not obscure design of the
leecher in the parent application
In re Daniels, 144 F.3d 1352, 1456-57 (Fed. Cir. 1998)
“Article of Manufacture”
• Phantom representation shows
type of cutting portion that may
be attached to drill shank
• Broken line disclosure is not
claimed as part of design
• Design may cover part of an
article of manufacture
In re Zahn, 617 F.2d 261, 267-69
(CCPA 1980)
Ser. No. 611,034
Design Patent Infringement
Two-Part Test
• Construe the Design Patent Claim
• Compare the Construed Claim to the Accused
Product
– “Ordinary Observer” Test; and
– “Point of Novelty” Test
Catalina Lighting, Inc. v. Lamps Plus, Inc., 295 F.3d
1277, 1286 (Fed. Cir. 2002);
Contessa Food Prods., Inc. v. Conagra, Inc., 282
F.3d 1370, 1376 (Fed. Cir. 2002)
Design Claim Construction
• Scope of a claimed design encompasses:
– “its visual appearance as a whole”
– “the visual impression it creates”
• Appearance created by the ornamental, nonfunctional features
• Drawings disclose the claimed design
Contessa Food Prods., Inc. v. Conagra, Inc., 282
F.3d 1370, 1376 (Fed. Cir. 2002)
“Ordinary Observer” Test
“[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 one patented
is infringed by the other.”
Gorham Mfg. Co. v. White, 81 U.S. (14 Wall) 511,
528 (1871)
“Ordinary Observer” Test
•
•
•
•
Overall appearance of the entire patented design
Ordinary Observer is NOT a design expert
Substantial similarity does not require Identity of Design
Ornamental features are those illustrated in all of the
drawings in the design patent (“all elements” rule)
– Features visible during “normal use”
– Hidden features are not considered
– Not limited to appearance at point of sale
Contessa Food Prods., Inc. v. Conagra, Inc., 282 F.3d
1370, 1376-81 (Fed. Cir. 2002)
“Ordinary Observer” Test
Top and Side Views
US D404,612
Bottom and Cross-Section Views
US D404,612
“Ordinary Observer” Test
Federal Circuit:
• Although tray bottom was covered at point of
sale, its features were visible during “normal use”
• Features of top, side and underside of accused
products must be compared to design as a whole
to determine infringement
• Patented design and accused product must be
“substantially the same” to an ordinary observer
Contessa Food Prods., Inc. v. Conagra, Inc., 282
F.3d 1370, 1379 and 1381 (Fed. Cir. 2002)
“Point of Novelty” Test
Litton Sys., Inc. v. Whirlpool Corp., 728 F.2d 1428
(Fed. Cir. 1984):
For a design patent to be infringed, no matter
how similar two items look to the ordinary
observer, the accused product must appropriate
the novelty of the patented design that
distinguishes it from the prior art.
“Point of Novelty” Test
The purpose of the “points of novelty” approach: focus
on those aspects of a design which render the design
different from prior art designs.
“New” designs frequently involve only relatively small
changes in the shape, size, placement or color of
elements of old designs. It is those changes in and
departures from the old designs that constitute the
“points of novelty” in the patented new design.
Lawman Armor Corp. v. Winner Int’l, LLC, 437 F.3d
1383, 1385-86 (Fed. Cir. 2006)
“Point of Novelty” Test
Point of Novelty Test can be satisfied by:
• Identifying the Point(s) of Novelty
(Patent owner’s burden)
• Making contentions as to how an accused
product appropriates the points of novelty
• Expert testimony not required
Bernhardt, LLC v. Collezione Europa USA, Inc., 386
F.3d 1371, 1384-85 (Fed. Cir. 2004)
“Point of Novelty” Test
2-Color, 3-Stripe Door Frame,
No Handle, Latch Release
Door Handles, No Stripes, No Latch
Litton Sys. Inc. v. Whirlpool Corp., 728 F.2d 1428 (Fed. Cir. 1984)
“Point of Novelty” Test
•
•
Lawman identified 8 specific points
of novelty for its sliding hook portion
of steering wheel lock assembly,
including:
- Open ends of hooks face outward
- Shaft includes a pattern of ridges
Winner cited auto wheel lock
patents that separately depicted
each proposed point of novelty
Lawman Armor Corp. v. Winner Int’l,
LLC, 437 F.3d 1383, 1385-86 (Fed.
Cir. 2006)
Des. 357,621
“Point of Novelty” Test
• Summary Judgment of noninfringement affirmed
• Patents cited by Winner disclosed all 8 points of novelty
Lawman identified
• District Court was not required to specify which patents
disclosed which points of novelty
• Lack of motivation to combine prior art references was not
relevant to infringement analysis
• The combination of 8 known points of novelty is not a 9th
point of novelty
Lawman Armor Corp. v. Winner Int’l, LLC, 437 F.3d 1383,
1385-86 (Fed. Cir. 2006)
“Point of Novelty” Test
Federal Circuit issued supplemental opinion in Lawman Armor.
• Clarified that “a combination of design elements” can be a
“point of novelty” as recognized in prior CAFC decisions
such as Litton.
• However, “the overall appearance of a design” cannot be a
point of novelty (i.e., a combination of non-novel elements
may not be the point of novelty).
Is Judge Newman right – are we in “unpredictable limbo”?
Lawman Armor Corp. v. Winner Int’l, 449 F.3d 1190, 1192 (Fed. Cir. 2006)
“Point of Novelty” Test
• Quasi-invalidity test – a design patent with no
points of novelty cannot be infringed
• Accused infringer picks off points of novelty oneby-one
• No need to show motivation or basis to combine
references – as would be required to prove
obviousness
• No need to meet clear and convincing evidence
burden (as would be required for proving
invalidity)
“Point of Novelty” Test
Des. 349,080 – 6 Figures
“Tire Tread”
Accused Product
Goodyear Tire & Rubber Co. v. Hercules Tire & Rubber
Co., 162 F.3d 1113 (Fed. Cir. 1998)
“Point of Novelty” Test
Ordinary observer test was not met. Ordinary
trucker or fleet operator would notice differences
in the designs.
Point of novelty test was not met.
Accused tire design lacked several of the points of
novelty that had been identified by Goodyear.
Goodyear Tire & Rubber Co. v. Hercules Tire &
Rubber Co., 162 F.3d 1113 (Fed. Cir. 1998)
Egyptian Goddess
Des. 467,389
Accused Swisa product
Egyptian Goddess
Egyptian Goddess asserted combination of four
elements as the point of novelty:
– An open and hollow body
– Square cross-section
– Raised rectangular pads
– Exposed corners
District Court granted summary judgment of no
infringement.
Egyptian Goddess, Inc. v. Swisa, Inc., 2005 WL 5873510
(N.D. Tex. Dec. 14, 2005)
Egyptian Goddess
Des. 467,389
Prior art: Des. 416,648
Egyptian Goddess
• Nail buffers with square cross-sections known in
prior art.
• “…no reasonable juror could conclude that EGI’s
asserted point of novelty constituted a non-trivial
advance over the prior art.”
• If point of novelty included fourth side without a
raised pad, that might be non-trivial advance.
• Swisa product had pads on all four sides.
Egyptian Goddess, Inc. v. Swisa, Inc., 498 F.3d
1354, 1358 (Fed. Cir. 2007)
Egyptian Goddess
• Judge Dyk dissent
– Majority opinion departs from precedent and
fashions new rule “that a combination of elements
cannot constitute a point of novelty in design
patent cases unless the combination constitutes a
‘non-trivial advance’ over the prior art.”
– Wrongly requires patentee to prove
nonobviousness.
– Wrongly extends obviousness-like test to each
point of novelty, not merely the overall design.
– Makes a different point of novelty test for designs
that involve a combination of design elements.
Egyptian Goddess
• Petition for Hearing En Banc granted
• Fed. Cir. Opinion vacated – appeal reinstated
• Supplemental briefing requested
Egyptian Goddess
• Questions for en banc consideration:
– (1) Should the “point of novelty” test be a test
for infringement of design patents?
Egyptian Goddess
– (2) If so, (a) should the court adopt the non-trivial
advance test;
– (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 be permitted to divide
closely related or ornamentally integrated features of
the patented design to match features contained in
accused design;
– (d) should it be permitted to find more than one “point of
novelty”;
– (e) should the overall appearance of a design be
permitted to be a point of novelty?
Egyptian Goddess
– (3) Should claim construction apply to design
patents, and, if so, what role should that
construction play in the infringement analysis?
Egyptian Goddess
• 16 Amicus Briefs submitted:
– IP Organizations:
• AIPLA; Fed. Cir. Bar Assn; IP;
• Houston IP Law Assn; IP Law Assn of
Chicago; DC Bar Assn; Federation
Internationale des Counseils en
Propriete Industrielle (FICPI)
– Design Group:
• Industrial Designers Society of America
Egyptian Goddess
Design Patent Owners:
Apple; Daisy Mfg.; Electrolux; Elite Group; Ford;
Monster Cable Prods.; Nike; Sensio
Egyptian Goddess
• Amicus AIPLA
– Opposes “non-triviality” requirement
– Places new infringement burden on design
patentee to prove design patent’s point of
novelty is “non-trivial advance”
– Design patent has presumption of validity
under 35 U.S.C. §282. Patent Office already
examined and concluded design was novel
and nonobvious.
Egyptian Goddess
• Amicus AIPLA:
– “Requiring the point of novelty to be independently
non-obvious creates a whole class of design
patents which are valid because the overall design
is non-obvious, but cannot be infringed because
the point of novelty is not itself also independently
non-obvious.”
– If a design patent’s novelty is too trivial, then the
challenger may make an obviousness challenge.
The clear and convincing evidence burden applies.
– The “non-triviality” requirement is a backdoor
invalidity attack on design patents.
Egyptian Goddess
• Amicus NIKE
– Egyptian Goddess court failed to apply point of novelty
test in manner consistent with its intended purpose.
– The “non-trivial advance” test lacks precedential
support.
– The “non-trivial advance” test will cause inconsistent
results on design patent infringement. Should not have
different test for designs having combination of design
elements as point of novelty.
– It is almost impossible to determine whether a single
particular design feature represents a “trivial” or
“substantial” advance over prior art.
Egyptian Goddess
• Amicus NIKE
– Court turns point of novelty test into a new
obviousness invalidity test, changes burden of
proof to preponderance of evidence, and shifts
burden to patent owner.
– Court could find an accused product that is
exact duplicate of patented design does not
infringe under this test.
International Registration
• 1999 Geneva Act of Hague Agreement for
International Registration of Industrial
Designs
• Administered by WIPO
• 48 contracting states, but not US at this
time
• 5 year initial term. Renewable for one or
two more 5 year terms.
Compare Europe
• Community Design system (effective in 2002, now
part of Hague Convention as of January 2008)
– Unregistered designs protected for 3 years from
first disclosure in EU territory
– If design registered within one year of first sale or
publication, it can receive 5 years of protection,
renewable in 5 year increments for total of 25
years
• No examination; registration within 3-6 months
• Valid in all European Union countries
• European customs officials will enforce both
registered and unregistered design rights at the
borders
Compare Europe
• Two validity requirements –
– Novelty; and
– Individual character
• “Individual character”: overall impression of
design produced on informed user differs from
the overall impression produced by any design in
the prior art.
Compare Europe
• Both design owner and accused infringer submit
“prior art” designs during enforcement litigation to
determine “individual character” and “novelty”
• “Freedom of the designer” is considered
– For fields with larger “design freedom,” larger
differences will be necessary to avoid
infringement.
– Expert testimony
Compare Japan
• Japan’s Design Law protects shape, form and
external appearance of an object
• 15 year term from date of registration
• For infringement – prove identical or similar form,
pattern, color or combination in the accused
product.
• Japan restricts scope to “kind of design”, so a
design registration on a component likely would
not be enforceable against a manufacturer of a
part or good that incorporates that component.