The United States Court of Appeals for the Federal Circuit, relaxed the once two-prong test for design patent infringement in Egyptian Goddess, Inc. v. Swisa, Inc., 2006-1562, slip op. (Fed. Cir. Sept. 22, 2008) (en banc).
Prior to the Egyptian Goddess, Inc holding, design patent infringement was proven through a two-prong test: the “ordinary observer” test and the “points of novelty” test. Bernhardt, L.L.C. v. Collezione Europa USA, Inc., 386 F.3d 1371, 1383 (Fed. Cir. 2004). The two tests are very different. The “ordinary observer” tests looks at the design as a whole, questioning if an ordinary observer informed by the prior art would believe that the accused design is substantially the same as the patented design. However, the “point of novelty” test examined the individual elements of the design, and the novelty of those individual elements.
In 1871, the Supreme Court established the “ordinary observer” in Gorham Co. v. White, 81 U.S. 511, 20 L. Ed. 731 (1871). The test established the requirements in proving design patent infringement. The Court asserted, “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.”
Later cases recognized a problem with the “ordinary observer” test, citing that the similarity requirements were not enough to establish design patent infringement. Initially, the Supreme Court held in Smith v. Whitman Saddle Co., 148 U.S. 674, 682, 13 S. Ct. 768, 771 (1893), that if the features of the ornamental design, were different from the prior art and material to patentability, were not in the accused design, there was no infringement, although the Court did not identify the test as a "point of novelty" test. It was not until the United States Court of Appeals for the Federal Circuit decided Litton Sys., Inc. v. Whirlpool Corp., 728 F.2d 1423, 1444 (Fed. Cir. 1984), that the “point of novelty” test was established. Citing Sears, Roebuck & Co.v. Talge, 140 F.2d 395, 396 (8th Cir. 1944), the CAFC held that “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.’”
The two-pronged test was well established and held by the courts until Egyptian Goddess, Inc. The Federal Circuit in Egyptian Goddess, Inc rejected the two-pronged test, asserting that a design patent is infringed if an ordinary observer informed by the prior art would believe that the accused design is substantially the same as the patented design. Therefore concluding that the “point of novelty” test is no longer required, rather the “ordinary observer” test should be the only requirement for design patent infringement.
In Egyptian Goddess, Inc, the patentee (Egyptian Goddess, Inc) received a design patent covering an "ornamental nail buffer” having a hollow tubular frame with four sides, wherein abrasive pads are attached to the each side of the frame. Swisa, Inc. were selling nail buffers that was very similar, but only comprised of three sides. Egyptian Goddess, Inc filed suit against Swisa, Inc, claiming that the Egyptian’s patent was infringed by certain Swisa nail buffers.
The District Court applied the two-prong test discussed above. In granting summary judgment, the District Court found that the Swisa buffer did not appropriate the point of novelty of the patented Egyptian Goddess design. On appeal, the Federal Circuit panel affirmed the District Court’s summary judgment. The Federal Circuit held that "in order 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.'“ The Federal Circuit agreed that there was no infringement because no reasonable juror could find a non-trivial advance over the prior art.
Egyptian Goddess, Inc filed a Petition for Rehearing En Banc, specifically asking the following question: whether courts should continue to use the point of novelty test to determine design patent infringement. The CAFC unanimously determined that the “point of novelty” test should no longer be used in the analysis of a claim of design patent infringement, rejecting both the “point of novelty” test as well as “non-trivial advance” test, which is a refinement of the “point of novelty” test. Instead, they held that the “ordinary observer” test should be the sole test for determining whether a design patent has been infringed. Under that test, infringement will not be found unless the accused article “embod[ies] the patented design or any colorable imitation thereof, ” citing Goodyear Tire & Rubber Co. v. Hercules Tire & Rubber Co., 162 F.3d 1113, 1116-17 (Fed. Cir. 1998).