En Banc Federal Circuit Revives Design Patent Law

Egyptian Goddess v. Swisa (Fed. Cir 2008, en banc)

In a rare unanimous en banc opinion, the Court of Appeals for the Federal Circuit has revived the value of design patent protection by loosening the standard for infringement. The opinion – penned by Judge Bryson – rejects the "point of novelty" test as a requirement to prove infringement of a design patent. Instead, the judges agree that the 1871 Gorham "ordinary observer" test is the "sole test for determining whether a design patent has been infringed."

The focus of the Gorham test is to look for substantial similarity between the patented design and the accused design. It is called the ordinary observer test because the similarity is considered from the perspective of an ordinary observer who is familiar with the art. Although Gorham only requires a comparison between the patented and accused designs, prior art designs will generally be useful for highlighting differences. A second pro-patentee rule that emerges from this case is that the burden of production of prior art designs will fall on the accused infringer. On claim construction, the Federal Circuit agreed that a 'verbal description' of the diagrams is not required, but will not – by itself – be reversible error.

Ordinary Observer With a Tight Focus: Although the patentee was able to change the law, it actually lost the day. In the appeal, the CAFC concluded that even under the ordinary observer test, "no reasonable fact finder 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."

The courts application of the law shows that proving infringement under the ordinary observer test will not be a walk in the park for design patent holders. Many cases will likely still turn on technical points of similarity rather than simply a broader totality of similarity. Yet, despite the potential difficulties, the situation is vastly improved from the hardships imposed by the point of novelty test.

More to come…

Comments

[snitty]

It doesn't worry you that every other time the CAFC has treated anything in patent law as the "only way" to do it they end up getting reversed by the supreme court for being too narrow.

Don't get me wrong, it's nice to see them agree on something, but it worries me that the next step is likely for the Supreme Court so say, yes, that's one test, but there are others.

[Random]

Snitty is on the right course.

[Kevin E. Noonan]

Maybe, but the court seemed to go out of its way to overrule its own "point of novelty" test in favor of the Supreme Court's "ordinary observer" test. It will be hard for the Supreme Court to overrule the CAFC (no disrespect intended) when it's being so obsequious.

[Malcolm Mooney]

"In a rare unanimous en banc opinion, the Court of Appeals for the Federal Circuit has revived the value of design patent protection by loosening the standard for infringement. "

In theory, isn't this a zero sum game? i.e., doesn't this decision also "loosen" the standard for finding that a design is patentable?

I mean, assuming that the PTO actually examines design patents before issuing them ...

[Michael Brooks]

Goodbye to the logical lybrinth that was the Point of Novelty Test.

[Malcolm Mooney]

Correction: my 4:53 comment should read "...standard for finding that a design is UNpatentable."

[Chaon]

----Goodbye to the logical lybrinth that was the Point of Novelty Test.----

And welcome back the ephemeral "ordinary observer who is familiar with the art".

[AllSeeingEye]

patentable, unpatentable, 220, 221, what's the difference? I don't think anyone really noticed since it would have required reading your snarky post. I celebrate the ordinary observer test. It seems to work just fine in the trademark realm as the "create confusion" test.

[BSN]

The original decision was appalling, but I think the CAFC has got it right now.

Malcolm's right, in theory this reduces the threshold for both patentability and avoidance of infringement. In reality, though, you could never have argued with a straight face that the (square) design in this case infringed the (triangular) design of the prior art.

The test is now what I argue Design protection should be - a narrowly defined monopoly right with a scope similar to the degree of difference to the prior art.

[Perry Saidman]

Regarding a Supreme Court review of this decision, it ain't gonna happen. The Federal Circuit, not wanting yet another Supreme Court review, cleverly split the baby, agreeing with Egyptian Goddess' positions on the broad point of novely and Markman issues, but finding for the infringer Swisa. Thus, Swisa, even though they lost on the broad issues, won the case, and Egyptian Goddess is left with nothing to appeal but a misapplication of the new law to the facts that is very unlikely to grab the attention of the Supremes.
I do think the Federal Circuit blew the holding, for one reason because they applied totally new law retroactively to declarations submitted in the district court that were drafted under the old law (patently unfair). They should have reversed the summary judgment holding to allow the parties to reargue infringement under the new law.
Also, can anyone argue with a straight face (except MM) that EG's rectangular hollow is closer IN APPEARANCE to the triangular hollow of the prior art than to Swisa's rectangular hollow? (Under utility patent law, EG's design is obvious as hell, but this is design patent law where appearance is supposed to trump structural/functional considerations).

[EG]

Perry,

Perceptive, as always, in the design area. I'm with you that SCOTUS won't touch this one. I'm also with you that affirming the grant of SJ of noninfringement under these circumstances where the controlling law being applied had changed wasn't very fair; vacating/reversal with remand seems much more appropriate. But then again, in my opinion, courts often now pull the SJ cord too quickly as a convenient way to manage their docket.

[smashmouth football]

"I'm also with you that affirming the grant of SJ of noninfringement under these circumstances where the controlling law being applied had changed wasn't very fair; vacating/reversal with remand seems much more appropriate."

Maybe the CAFC is just following the lead of SCOTUS. After all, SJ in the KSR case was equally ridiculous, founded in that case on the dubious notion that obviousness is a question of law. (Although that fiction wasn't what changed through the SCOTUS decision, but rather, the legal standard for determining obviousness.)

[clarify]

...this is design patent law where appearance is supposed to trump structural/functional considerations).
Posted by: Perry Saidman | Sep 23, 2008 at 07:02 AM

I'm not sure if this statement is right. If it would be obvious to make the EG product, why wouldn't its design be obvious as well? There seems to be no disagreement that the EG product would have been an obvious combination of the features of the Falley buffer block and the Nailco design. But, I'm not clear whether this would be a valid 103 rejection on the design of the EG product.

Can anyone opine? Here are the parts of MPEP 1504.03(II) that confuse me:

As a whole, a design must be compared with something in existence, and not something brought into existence by selecting and combining features from prior art references. In re Jennings, 182 F.2d 207, 86 USPQ 68 (CCPA 1950). The “something in existence” referred to in Jennings has been defined as “...a reference... the design characteristics of which are basically the same as the claimed design....” In re Rosen, 673 F.2d 388, 391, 213 USPQ 347, 350 (CCPA 1982) (the primary reference did “...not give the same visual impression...” as the design claimed but had a “...different overall appearance and aesthetic appeal...”.) Hence, it is clear that “design characteristics” means overall visual appearance.

Specifically, in the Yardley decision, it was stated that “[t]he basic consideration in determining the patentability of designs over prior art is similarity of appearance.”

Therefore, in order to support a holding of obviousness, a *>primary< reference must be more than a design concept; it must have an appearance substantially the same as the claimed design. Absent such a reference, no holding of obviousness under 35 U.S.C. 103(a) can be made, whether based on a single reference alone or in view of modifications suggested by secondary prior art.

Would either the Falley or Nailco designs meet this requirement for a primary reference? The main difference between EG and Nailco that stands out to me is the four sides vs. three. But, I admit that I am a male, so I may not be the "ordinary observer" for this particular product.

[anonymous]

"Also, can anyone argue with a straight face (except MM) that EG's rectangular hollow is closer IN APPEARANCE to the triangular hollow of the prior art than to Swisa's rectangular hollow?"

No. But in view of the *entire* set of prior art, an ordinary observer would fixate on the "empty" side of the four-sided, three-padded design and would not find infringement. The court got it right.

[Malcolm Mooney]

"Here are the parts of MPEP 1504.03(II) that confuse me:"

It's pure drivel. We have a de facto design patent registration system in the US and it'll take 100 years of defendants fighting the garbage patents in court to get anything close to a reasonable set of "laws", statutory or otherwise. I pity the CAFC as it tries to clean up the mess.

I assume that there is some sort of intra parte re-exam scheme for design patents ... yes?

[mark]

I can't help wondering, with the disposal of the Litton point of novelty test and the resort solely to the ordinary observer test, whether a design that embodies the prior art (or an obvious variant) could be found to infringe.

You might think that a court would then simply invalidate the patent, but the problem the court has been struggling with is the case where there are multiple novel design features, the totality of which in combination are not obvious over the prior art design. It is the totality of features in combination which renders the design not obvious and therefore patentable. It is also what makes evaluating point of novelty difficult. Yet, a design with just a small subset of the patent's novel features could be found to infringe solely under the ordinary observer test, even though that infringing design would itself have been deemed obvious in view of prior art by the PTO.

Despite the difficulty in many cases of trying to apply the point of novelty test, it did serve as a check against overreaching on the scope of the patented design.

[anon]

Re Anonymous' "No. But in view of the *entire* set of prior art, an ordinary observer would fixate on the "empty" side of the four-sided, three-padded design and would not find infringement. The court got it right."

Way to substitute your opinion for the fact finders'.

[BSN]

That was the evidence, anon. To the ordinary observer, the number of pads was a significant feature.
The EG design and the triangular prior art were both 'three pad' buffers. The Swisa was a 'four pad' buffer. For reasons passing understanding, this was a very important consideration for the ordinary observer (who is much more familiar with these things than I am).

[Jeff]

If you really look at what Snitty is saying, I think it's inconsistent. It would have been pertinent had the CAFC *upheld* the panel decision, which imposed a single rigid infringement test as the "only way." To the contrary, the ordinary observer test "taking into account the prior art" embraces the point-of-novelty test, which is one way of taking into account the prior art. I.e., a patentee could still prove infringement by establishing that an ordinary observer could mistake the accused infringing design for the patented design in light of its general similarity and the fact that it incorporates the point(s) of novelty that distinguish the patented design from the prior art, but she doesn't have to (that is, assuming there are other ways that an ordinary observer can "take into account the prior art" besides noticing the point(s) of novelty and seeing if the accused infringing design incorporates it/them, which I'm still not sure I understand.) I believe Snitty's point misreads the point of the Court's "sole test" language, which is actually to say that Gorham is the sole test that you must apply, in fact rejecting the idea that there is some further test defining the "only way" of *applying* it. Unlike in KSR, for example, where the CAFC was imposing a further TSM test as the "only way" of applying Graham. So if you accept the rationale that the Supreme Court rejects "only way" patent law rules, it would fit the pattern for it to uphold and not reverse EGI. Anyway, I think the more significant holdings of EGI are that the defendant has the burden of production of prior art and verbal claim construction is not required. I don't think the Supreme Court, or the law generally, objects to "only way" rules of burden of production, so I think the former holding is safe from that kind of attack. And obviously the latter is not an "only way" holding.

[babaloo]

With all the rejections by SPE's who want to protect their jobs, I think we have a de facto NON-registration system.

[ANON2]

I stopped representing folks regarding design patents in the 1970s since they are just as subjective as trademarks.

So I have zip interest in reading yet another absurd CAFC decision.

But I'm guessing that the CAFC judges determine what the "ordinary observer" perceives. That is, yet another fact question converted into a "question of law".

Right?