FAREWELL TO THE POINT OF NOVELTY TEST:
EGYPTIAN GODDESS, INC. v. SWISA, INC.
THE EN BANC FEDERAL CIRCUIT SCRAPS ONE OF THE
TWO TESTS FOR DESIGN PATENT INFRINGEMENT AND
TRANSFORMS THE OTHER
Presented by:
Frederick L. Medlin, Counsel
K&L Gates
1717 Main Street, Suite 2800
Dallas, Texas 75201
212.939.4911
frederick.medlin@klgates.com
October 29, 2008
Andrew L. Reibman, Partner
K&L Gates
599 Lexington Avenue
New York, New York 10022
212.536.4074
andrew.reibman@klgates.com
The nature of design patents requires a
different infringement analysis than that for
utility patents.
Unlike utility patents, which protect inventions
that serve a function, design patents protect
the ornamental aspects of a product’s design.
They do not have the kind of claims that utility
patents do, with written claims limitations.
Instead, they have a single claim, consisting of
drawings for the design. So infringement must
be determined in a different manner than for
utility patents.
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3
The “Ordinary Observer Test.”
“We hold . . . that if, 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 v. White, 81 U.S. 511, 528 (1871).
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The Ordinary Observer Test is a
Substantial Similarity Test.
By itself it is like a “substantial similarity” analysis
under the doctrine of equivalents, but one not
restrained by individual claim limitations because,
again, design patents have no such limitations.
Standing alone, the traditional ordinary observer
test could lead to a finding of liability where the
accused design was only practicing the prior art.
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The “Point of Novelty Test”
“For a design to be infringed, however, no matter how similar
two items look, the accused device must appropriate the
novelty in the patented device which distinguishes it from the
prior art.” Litton Sys., Inc. v. Whirlpool Corp., 728 F.2d 1423
(Fed. Cir. 1984).
In Egyptian Goddess, Swisa argued that the Litton test had
its origins in Smith v. Whitman Saddle, 148 U.S 674 (1893),
where the Court seemed to isolate the “inventive” aspect of
the plaintiff’s patented design, determined that it was not
present in the accused design, and held that therefore there
was no infringement.
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The point of novelty test was a check on the
equivalence analysis inherent in the ordinary
observer test.
The ordinary observer test subsumes an
equivalence analysis, so that even when
conducting a “literal” infringement analysis,
you are in effect conducting an equivalence
analysis. The point of novelty test could be
seen as constraining this equivalence
analysis in the same way that the claims of a
utility patent limit an application of the
doctrine of equivalents.
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In Egyptian Goddess, the en banc Federal Circuit
dramatically altered this two test framework for
determining infringement, all in the context of . . .
Fingernail Buffers!
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Starting with the 4-way buffer block invented
by in 1987 by Michael Falley
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Elements of the Falley Buffer 4-way Buffer Block:
ƒ A solid foam block, with the foam absorbing the heat from
the buffing process.
ƒ Four long sides, with a different abrasive surfaces attached
to each long side, for a four step buffing process.
ƒ Along the sides, a gap between the abrasive surfaces: a
“cuticle protection edge.”
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Michael Falley’s company, Realys, Inc., also made the
Tammy Taylor Buffer, which had three different
abrasive surfaces on three of the block’s long sides,
with one side bare. This was a 3-way buffer for a three
step buffing process.
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The Falley Buffer Block and imitations
were widely available.
By November, 2006, Realys Inc. had sold over 1,500,000 4-way
and 3-way buffer blocks.
In addition, numerous foreign and domestic manufacturers were
making 3-way and 4-way buffer blocks that were imitations of the
Falley Buffer Block
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In 1998 Nailco, Inc. asked Falley to make a threesided hollow buffer with triangular ends.
A hollow plastic tube instead of the foam block
ƒ Raised foam pads to absorb the heat of the buffing process
ƒ Different abrasive surfaces on all three sides, for a three step
buffing process.
ƒ The “cuticle protection edges”—gaps between abrasive
surfaces—- retained.
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THE NAILCO DESIGN PATENT
In August, 1998, Anne Letherby and Lawrence Gaynor,
who was Nailco’s owner, applied for what became United
States Design Patent D416, 648 (the “Nailco Patent”).
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Michael Falley’s company, Realys, Inc.,
makes Nailco Buffers, some with the words “Egyptian
Goddess” printed on them, and sells them to Nailco, Inc.--
Nailco, Inc., then resells the buffers marked
“Egyptian Goddess” to--Adi Torkiya’s Company,
Egyptian Goddess, Inc. which resells them.
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THE SWISA 4-WAY BUFFER
At a Fort Worth trade show in the summer of 2001, Falley
proposed to make a hollow, 4-way buffer for Dror Swisa. The
new buffer would have every feature of the Nailco Buffer, but
would add a fourth side with a pad, resulting in square ends
like the Falley Buffer Block.
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IN OCTOBER, 2001, ADI TORKIYA APPLIED FOR A
PATENT.
Torkiya, who again was selling the Nailco Buffer, applied for a
design patent for a 3-way buffer that had every feature of the
Nailco design, but added a fourth side without an abrasive
pad, resulting in square ends like the Falley Buffer Block. He
was issued United States Patent No. D467,389 (the “D’389
Patent”).
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In 2003, Torkiya’s company, Egyptian Goddess, Inc. sued
Dror Swisa and Swisa Inc. for patent infringement.
After Markman claim construction briefing, the district court out
a detailed verbal description of the patented design:
“A hollow tubular frame of generally square cross
section, where the square has sides of length S,
the frame has a length of approximately 3S, and
the frame has a thickness of approximately 1.25T,
and the inner corner of the cross section rounded
on a 90 degree radius of approximately 0.25T;
and the rectangular abrasive pads of thickness T
affixed to three of the sides of the frame, covering
the flat portion of the sides while leaving the
curved radius uncovered, with the fourth side of
the frame bare. (emphasis added).”
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Swisa moved for Summary Judgment on the
grounds that it could not infringe under either
the ordinary observer test or the point of
novelty test.
Only possible point of novelty:
4th side without a pad
Swisa argued that the Swisa Buffer could not infringe
under the point of novelty test because the only
possible point of novelty in the D’389 design, the
addition of a fourth side without an abrasive pad, was
not present in the Swisa Buffer.
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Egyptian Goddess argued that its point of novelty was
not the addition of a fourth side without a pad, but a
combination point of novelty consisting of four prior
art elements:
1. Open and hollow body
2. Square cross section
3. Raised rectangular pads
4. exposed corners.
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The District Court granted summary judgment that there
could be no infringement under the point of novelty test.
“[The Nailco Patent] discloses a nail buffer with an open and
hollow body, raised rectangular pads, and open corners . . . EGI
cannot claim the combination of those three elements in the
D’389 Patent as novel when they were already combined in
the Nailco Patent. The only point of novelty in the D’389 Patent
over the Nailco Patent is the addition of the fourth side without a
pad, thereby transforming the equilateral triangular cross-section
into a square.” (emphasis added).
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Egyptian Goddess appealed, still claiming the same
combination point of novelty. Swisa again argued that a
combination point of novelty at most consists of the
difference between the claimed design and the nearest prior
art.
The Nailco Patent already combined the open and hollow frame,
the raised pads, and the exposed corners, so none of these
elements could be part of Egyptian Goddess’ combination point of
novelty. That left the addition of the fourth side without a pad, and
the resulting square ends, as the point of novelty.
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Swisa also argued in both its brief and oral argument
that the panel could affirm the summary judgment on
the grounds that there could be no infringement
under the Ordinary Observer test.
A purchaser of buffers for a multi-step buffing process would
not buy a 4-way buffer mistaking it for a 3-way buffer.
© 2008 K&L Gates LLP
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During oral argument before the panel, Judge
Kimberly Moore, then new to the Federal Circuit from
being a law professor, asked:
Why do we even need a point
of novelty test?
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In a split decision, the majority of the Federal
Circuit panel affirmed, but in doing so introduced
the “non-trivial advance test.”
ƒ “For a combination of individually known design
elements to constitute a point of novelty, the
combination must be a non-trivial advance over the
prior art. Smith v. Whitman Saddle . . .”
ƒ “In light of the prior art, no reasonable juror could
conclude that EGI’s asserted point of novelty
constituted a non-trivial advance over the prior art.”
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The Federal Circuit granted rehearing en banc and
vacated the panel decision.
The Federal Circuit ordered the parties to brief a series of
questions going to the basic nature of design patent
infringement, starting with:
1. Should ‘point of novelty’ be a test for
infringement of a design patent?
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The En Banc Court further inquired:
2. If [the point of novelty test is retained]:
(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? See Lawman Armor Corp. v. Winner Int’l, LLC, 449
F.3d 1190 (Fed. Cir. 2006).
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And finally:
3. Should claim construction apply to design
patents, and, if so, what role should that
construction play in the infringement analysis? See
Elmer v. ICC Fabricating, Inc., 67 F.3d 1571, 1577
(Fed. Cir. 1995).
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27 Amici Filed 16 Amicus Briefs:
1. American Intellectual Property Law Association
2. Apple, Inc.
3. Bar Association of the District of Columbia—Patent,
Trademark & Copyright Section
4. Daisy Manufacturing Company
5. Electrolux Home Products, Inc. and Nike, Inc.
6. Elite Group, Inc. and Sensio, Inc.
7. Ford Global Technologies, LLC
8. Houston Intellectual Property Law Association
9. Industrial Designers Society of America
10. Federal Circuit Bar Association
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11. Federation Internationale Des Conseil’s En Propriete
Industrielle (“FICPI”)
12. Intellectual Property Law Association of America
13. Intellectual Property Owners Association
14. Monster Cable Products, Inc.
15. LKQ Corp.; Keystone Automotive Industries, Inc.; U.S. Auto
Parts Networks, Inc.; Gordon Auto Body Parts Co., Ltd.;
Depo Auto Parts Ind. Co., Ltd.; Automotive Aftermarket
Industry Association; Coalition for Auto Repair Equality; Auto
Body Parts Association; Automotive Parts Remanufacturers
Association; and Property Casualty Insurer’s Association of
America
16. Professor William T. Fryer, III
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THE BIG QUESTION: Should the point of
novelty test even exist?
EGYPTIAN GODDESS
ARGUED THAT:
AND
MANY
AMICI
• The Point of Novelty Test was unworkable, and
• The Ordinary Observer Test could be
performed in such a way as to render the point
of novelty test unnecessary.
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TWO PROPOSED NEW ORDINARY OBSERVER TESTS:
THE 3-WAY TEST: The fact finder, putting himself in the
place of the ordinary observer, would compare the accused
design to both the claimed design and the prior art, and if
the accused design was closer to the claimed design than to
the prior art, then it infringed. If the accused design were
closer to the prior art, it did not infringe.
THE “CONTEXTUAL” OR “FAMILIAR OBSERVER”
TEST: The fact finder compares the accused and claimed
designs in the context of the prior art, or put differently, the
ordinary observer is someone familiar with the prior art.
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According to Egyptian Goddess and some amici,
until Litton the ordinary observer test had always
been conducted in light of the prior art.
“The need for the point of novelty test has been
founded upon the false notion that the prior art is not
considered when conducting the ordinary observer
test. Simply put, the Gorham ordinary observer test is
not applied in a vacuum. Rather, the Gorham test
[takes] into account (1) accused design, (2) claimed
design, and (3) prior art.”
AIPLA Amicus Brief at p. 4 (emphasis added).
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Swisa argued that precedent and policy
both required the point of novelty test.
ƒ Swisa argued that the Supreme Court had adopted the
essence of the point of novelty test in Smith v. Whitman
Saddle in 1893.
ƒ There was insufficient reason to overturn the Federal Circuit’s
own precedent employing the point of novelty test.
ƒ The test was needed to prevent findings of infringement
where the accused design was simply practicing the prior art
or what was obvious over the prior art.
ƒ The proposed three-way test was unworkable.
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The buffers at issue showed why the “3-way” version of the
ordinary observer test would lead to improper findings of
infringement.
Nearest prior art
Accused Design
Claimed Design
Here, the accused design looks closer to the claimed design than to the nearest
prior art, but:
ƒNothing “inventive” has been appropriated, and
ƒAn ordinary observer familiar with the prior art and “giving such
attention as a purchaser usually gives” would not buy a 4-way buffer
mistaking it for a 3-way buffer.
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Even if you compare the accused design to both the
Falley Buffer Block and Nailco Patent on the one hand,
and the Claimed D’389 on the other: the Swisa Buffer
still looks closer to the D’389.
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The En Banc Oral Argument Before 12 Judges
Other K & L Gates Lawyers at the en banc argument:
Jeff Snow.
He generously lent
assistance on the case from the
early days on, and assisted at the
appellate arguments before both
the panel and the en banc hearing
Linda Moore.
Dror Swisa and
Swisa Inc. were her clients, and
she was active throughout the
case.
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THE COURT DECIDED: WHITMAN SADDLE DID NOT
REQUIRE RETAINING THE POINT OF NOVELTY TEST.
Unanimous En Banc Opinion: “Nothing in the
[Whitman Saddle] opinion suggested that it
was fashioning a separate point of novelty test
for infringement.”
COMPARE
Robert Oake at oral argument: “. . . this Whitman Saddle case . . .
does not use or express a point of novelty test.
Judge Lourie: Well, it doesn’t use those words but it certainly
applies the concept. It talks about what was new and material
and said lacking that there was no infringement.” (emphasis
added).
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BUT WHAT ABOUT LITTON?
Chief Judge Michel had noted at oral argument
that the Federal Circuit didn’t normally overrule
a precedent of a decade or more standing, like
Litton, unless there was some intervening event
like a new Supreme Court case or, rarely, when
the practical application had proved to be a
disaster.
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LITTON DID NOT HAVE TO BE OVERRULED,
BUT JUST “MORE PROPERLY READ.”
THE EN BANC COURT: “We think, however, that
Litton and the predecessor cases on which it relied
are more properly read as applying a version of the
ordinary observer test in which the ordinary observer
is deemed to view the differences between the
patented design and the accused product in the
context of the prior art.”
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The En Banc Court thus
SCRAPPED THE POINT OF NOVELTY TEST,
and adopted the
“CONTEXTUAL” or “FAMILIAR OBSERVER”
version of the ordinary observer test.
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The purpose of the point of novelty test had been
“to focus on those aspects of a design which
render the design different from prior art designs.”
“That purpose can be equally served . . . by applying the ordinary
observer test through the eyes of an observer familiar with the
prior art. If the accused design has copied a particular feature of
the claimed design that departs conspicuously from the prior art,
the accused design is naturally more likely to be regarded as
deceptively similar to the claimed design, and thus infringing.”
(emphasis added).
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But query to what extent this new test, by whatever
name, conflicts with Gorham’s conclusion that the
test is not whether an “expert” would be deceived:
“Such a test would destroy all the protection which
the act of Congress intended to give. There never
could be piracy of a patented design, for human
ingenuity has never yet produced a design, in all
its details, exactly like another, so like, that an
expert could not distinguish them . . . Experts,
therefore, are not the persons to be deceived.”
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The Court affirmed Swisa’s summary judgment on the
ground that there could be no infringement under this
new Ordinary Observer Test.
“[A]n ordinary observer, familiar with the prior art Falley
and Nailco designs,” would not “be deceived into
believing the Swisa buffer is the same as the patented
buffer.”
Or put differently
“In light of the similarity of the prior art buffers to the
accused buffer, we conclude that no reasonable factfinder could find that EGI met its burden of showing, by
a preponderance of the evidence, that an ordinary
observer, taking into account the prior art, would believe
the accused design to be the same as the patented
design.”
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EGYPTIAN GODDESS PLANS TO FILE A
PETITION FOR WRIT OF CERTIORARI
Egyptian Goddess argues that the Federal Circuit has
misapplied the Gorham test, because it took individual
features from prior art designs into account rather than
just comparing overall designs.
Note that comparing only to individual overall designs
from prior art, rather than to features in a collection of
prior art designs, would have the same effect as just
using a 3-way comparison with the closest piece of prior
art.
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45
Egyptian Goddess argues that the Swisa Buffer’s overall
design still looks closer the overall design of the D’389
Design than to the overall designs either the Falley Buffer
Block or the Nailco Patent.
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46
A Ghost of the Three-Way Test
Although the En Banc Court embraced the “familiar
observer” or “contextual” test, a trace remained of
the 3-way test for which Egyptian Goddess had
argued:
“Nothing about Ms. Eaton’s declaration explains why
an ordinary observer would regard the accused
design as being closer to the claimed design than to
the Nailco prior art patent.”
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So what will courts call the new test?
Some Possibilities:
ƒ The “familiar ordinary observer test:” “. . . The ordinary observer
test through the eyes of an observer familiar with the prior art.”
ƒ The “contextual ordinary observer test.” “[T]he ordinary observer
is deemed to view the differences between the patented design and
the accused product in the context of the prior art.”
ƒ The “knowledgeable ordinary observer test.” “[A] test that asks
how an ordinary observer with knowledge of the prior art designs
would view the differences between the claimed and accused
designs is likely to produce results more in line with the purposes of
design patent protection.”
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48
Another major issue before the En Banc Court:
3. Should claim construction apply to design
patents, and, if so, what role should that
construction play in the infringement analysis? See
Elmer v. ICC Fabricating, Inc., 67 F.3d 1571, 1577
(Fed. Cir. 1995).
© 2008 K&L Gates LLP
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THE EN BANC COURT DECIDED:
Ordinarily, no verbal description of the
design as part of Claim Construction.
“[T]he preferable course ordinarily will be for a district court
not to attempt to ‘construe’ a design patent claim by providing
a detailed verbal description of the claimed design.”
With that said, it is important to emphasize that a district
court’s decision regarding the level of detail to be used in
describing the claimed design is a matter within the court’s
discretion, and absent as showing of prejudice, the court’s
decision to issue a relatively detailed claim construction will
not be reversible error.”
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As part of claim construction the court “can” or
“must” identify the non-functional aspects of the
design.
“A trial court can “usefully guide” the finder of fact by
addressing such matters as “distinguishing between
those features of the claimed design that are ornamental
and those that are purely functional, see Oddzon Prods.,
Inc. v. Just Toys, Inc. 122 F.3d 1396, 1405 (Fed.Cir.
1997) (‘Where a design contains both functional and
non-functional elements, the scope of the claim must be
construed in order to identify the non-functional aspects
of the design as shown in the patent.’)” (emphasis
added)
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“Design patents do not and cannot include claims to
the structural or functional aspects of the article.”
Lee v. Dayton Hudson, 838 F.2d 1186, 1188 (Fed.
Cir. 1988).
Compare with
“It is not necessary to parse ornamental and functional
features during claim construction, since the design
patentee has already claimed all features shown in solid
lines in the drawings, regardless of whether such features
are new, old, ornamental or functional. Functionality is a
validity issue, not an infringement issue.”
Amicus Brief in the Egyptian Goddess case for Apple Inc. at p. 12,
n.14 (internal Citations omitted).
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Swisa had argued during claim construction in the
district court and in briefing to the appellate panel
that features of the Swisa Buffer were functional.
ƒ
ƒ
ƒ
ƒ
Four-sidedness is functional in a 4-way buffer.
Square ends are functional in a 4-way way buffer.
The “cuticle protection edges” are functional.
The foam pads are functional in a hollow buffer.
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53
What does “functional” mean in the context of
elements of a design patent?
Egyptian Goddess argued in the district court that appearance
must be dictated solely by functional considerations for the
feature to be “functional” in the claim construction context, and
that it did not matter what was the best or most practical design.
Swisa argued that the existence of other alternatives did not
necessarily mean that a design was not still primarily functional,
and that other considerations included whether the protected
design represented the “best” design and whether alternative
designs would adversely affect the utility of the article.
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54
In support of its argument, Swisa cited to Supreme
Court authority in the trademark area.
ƒ Federal Circuit decisions seemed to go both ways as
to what was “functional” in the design patent arena.
ƒ Swisa argued that in the related area of the
functionality doctrine in the trademark context, the
Supreme Court had repeatedly made clear that a
product feature was functional not only when it was
essential to the use or purpose of the article, but also if
“it affects the cost or quality of the article.” E.g. Inwood
Laboratories, Inc. v. Ives Laboratories Inc., 456 U.S.
844, 851 fn. 10 (1982).
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The District Court accepted the argument of Egyptian
Goddess, and in March 2005 ruled that no feature of the
D’389 Patent was functional
ƒ The district court seemed to accept that features were
not functional if alternative designs could accomplish the
purpose.
ƒ A year later, the Federal Circuit in a design patent case
would adopt the approach urged by Swisa, and quote
the Supreme Court decision in Inwood for the
proposition that “[a]n aspect is functional ‘if it is essential
to the use or purpose of the article or if it affects the
cost or quality of the article.” Amini Innovation Corp.
v. Anthony California, Inc., 439 F.3d 1365, 1371 (Fed.
Cir. 2006) (emphasis added).
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Two developments to watch for as courts
interpret the Egyptian Goddess case:
How exactly will the new ordinary observer test,
whatever they call it, work? Just how “familiar” with
the prior art will the non-expert ordinary observer be?
Will the language about identifying functional elements
in claim construction lead to courts finding features
functional, so that they can be deleted from the
comparison under the ordinary observer test, and how
will that work?
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57
Whether the point of novelty test existed for 115
years or only 24, I met it late in its life, in a time
when many extremely talented voices cried out
for its death. I say with pride that I defended it
to its last hours.
FAREWELL TO
THE POINT OF NOVELTY TEST!
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58
Some Thoughts On Design Patent Acquisition
ƒ Although my partner won the case, the patent
holders appear to have won on the rule
ƒ Stopping exact copies and “colorable imitations”
often has great commercial importance
ƒ Although prior art still must be considered in
infringement case, burden remains on accused
infringers to invalidate in the face of presumption of
validity
ƒ Detailed written claim constructions optional
© 2008 K&L Gates LLP
frederick.medlin@klgates.com
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Repeat Players Explore What Is Available at the PTO
© 2008 K&L Gates LLP
frederick.medlin@klgates.com
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Egyptian Goddess Reminds Us The Prior Art Does
Matter – so consider doing a search…
ƒ In many consumer product categories design
searches are quick and easy – much quicker than
utility searches.
ƒ Get samples of what's already out there
ƒ If you’re a regular in a field, collect magazines &
catalogs, make shopping trips, and visit the trade
shows
© 2008 K&L Gates LLP
frederick.medlin@klgates.com
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Use Divisional Practice
Related Design Patents For the Same Package:
© 2008 K&L Gates LLP
frederick.medlin@klgates.com
62
Think About Every Feature -Delete Whatever You Can Get Away With
© 2008 K&L Gates LLP
frederick.medlin@klgates.com
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Consider Being Aggressive In The PTO
ƒ If you aren't ever fighting rejections and taking
appeals you may not be trying hard enough.
(This is already an accepted folk wisdom for utility
patent applications…)
ƒ The patent at issue in Egyptian Goddess was
allowed on a first office action without objection; so
was its parent application.
© 2008 K&L Gates LLP
frederick.medlin@klgates.com
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Where the Action Is:
ƒ Consumer Products Where “Look” Matters
ƒ Distinctive Applied or Separable Features
ƒ Packaging
ƒ Markets With “Private Labels”
ƒ Replacement Parts
ƒ “Instant” Trade Dress
ƒ Molded Copies or “Third Shift” Products
Notably Egyptian Goddess Is Not In Any Of These
Categories
© 2008 K&L Gates LLP
frederick.medlin@klgates.com
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