Design Patent Infringement Ruling

(Legal Times) 

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 consideredpoints 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 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.

 Scott Drake talks with Tracy Durkin