Egyptian Goddess v. Swisa, Inc. (Fed. Cir. en Banc 2007)
Design patents typically play the role of the pre-ball Cinderella – hopeful but meaningless and sitting in a pile of ash. Already devalued, recent appellate decisions have further decimated design patent values.[1]
Infringement of a design patent requires satisfaction of both the ordinary observer test[2] and the points of novelty test[3]. In Egyptian Goddess, the patentee argued that the point of novelty of its ornamental fingernail buffer design[4] is the unique combination of four elements found in the design.[5]
In the appeal, the Federal Circuit (Judge Moore) held that a combination of known elements may serve as a point of novelty – but only if the combination represents a “non-trivial advance over the prior art.”[6] Here, the court found the combination trivial. The Egyptian Goddess panel opinion helps clarify the recent Lawman Armor opinion. In Lawman Armor, the court held (at least) that the “overall appearance” of a design cannot serve as a “point of novelty.”[7]
Picking up on some incongruence, Judge Dyk dissented from the Egyptian Goddess majority. Judge Dyk argued instead that the “non-trivial advance” requirement is antithetic to the notion of “points of novelty” in the same way that it would be odd to include a nonobviousness element within the requirements for novelty under 35 USC 102.
En Banc: Now, the Federal Circuit has agreed to re-hear the case en banc. In all likelihood, the case will be at least vacated with the point of (non-trivial) novelty test being returned to a straight novelty requirement.[8]
A Nightmare: The law of design patents has become a nightmare of confusion and formality. Judge Moore recently stated in the oral arguments for In re Bilski that design patent law follows the same statutes as utility patents.[9] The truth is, however, that design patent law is almost wholly judge made law that varies dramatically from the Patent Statute and precedent interpreting the statute. Thorny issues abound: How do design patents fit within the PTO’s concept of useful patentable subject matter under 35 U.S.C. § 101? Why does the patent office refuse to enter any true written claim of a new design beyond a few drawings while a court must put the claimed ‘ornamental design’ into text form during claim construction?
Hopefully, the en banc court will take this opportunity to return some sanity to design patent law – starting with a complete overhaul of the definition of design patent infringement. Perhaps Egyptian Goddess will be remembered as the fairy godmother of design patents.
[1] See, for example, Egyptian Goddess, Inc. v. Swisa, Inc., 498 F.3d 1354 (Fed. Cir. 2007) (holding that infringement requires proof that one or more particular elements of the patented design exhibits a ‘non-trivial advance over the prior art.’); Arminak & Assocs. v. Saint-Gobain Calmar, Inc., 501 F.3d 1314 (Fed. Cir. 2007) (holding that an “ordinary observer” judging potential confusion is a corporate buyer rather than a retail customer); PHG Techs., LLC v. St. John Cos., 469 F.3d 1361 (Fed. Cir. 2006) (preliminary injunction vacated); Lawman Armor Corp. v. Winner Int'l LLC, 437 F.3d 1383 (Fed. Cir. 2006) clarified in en banc denial at 449 F.3d 1190 (Fed. Cir. 2006) (noting that the “overall appearance” of a design cannot serve as a “point of novelty.”).
[2] Satisfaction of the ordinary observer test requires proof that an “ordinary observer” would think the accused design – examined as a whole – is substantially the same as the patented design.
[3] Satisfaction of the points of novelty test requires proof that the accused device incorporates one or more of the “points of novelty” that distinguish the patented design from the prior art. The points of novelty test is thus similar to a test of invalidity.
[4]
[5] Egyptian Goddess listed the following four points of novelty: (1) an open hollow body; (2) square cross-section; (3) raised rectangular pads; and (4) exposed corners. Each of these elements are found in the prior art and thus do not server as individual points of novelty.
[6] Egyptian Goddess, 498 F.3d 1354 (holding that the combination of elements here is trivial).
[7] Lawman Armor Corp., 449 F.3d 1190 (Fed. Cir. 2006).
[8] Normally, a majority of the twelve Federal Circuit judges must agree to hear a case en banc.
[9] 35 U.S.C. § 171 provides that “provisions of this title relating to patents for inventions shall apply to patents for designs, except as otherwise provided.”
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