For the past two decades, finding infringement of a design patent -- a patent protecting the ornamental rather than utilitarian features of an invention -- required satisfying two distinct tests. However, a recent en banc Federal Circuit opinion in Egyptian Goddess, Inc. v. Swisa, Inc. has streamlined the infringement inquiry, and ostensibly returned it to its earliest Supreme Court roots.
In 1871, the Supreme Court established what is known as the "Ordinary Observer" test for infringement in Gorham Mfg. Co. v. White. Under this test, a finding of infringement requires that the design of an accused infringer’s article be "substantially the same" as a patented design. A design is substantially the same if an ordinary observer, viewing either design as would a potential purchaser, would be led by their close similarities to mistakenly purchase one design believing it to be the other. This design-based confusion over the identity of the article itself is similar to, but distinct from, that encountered in trade dress analysis, where design-based similarity leads to confusion as to the source of a product or service.
More recently -- in 1984-- the Court of Appeals for the Federal Circuit introduced the so-called "Point of Novelty" test in Litton Systems v. Whirlpool Corp. To satisfy this test, an infringing design must “appropriate the novelty in the patented device which distinguishes it from the prior art”. This test prohibits finding infringement based solely on a combination of prior art elements incorporated into each of the patented design and the accused infringing design, unless the combination itself constitutes the "point of novelty" that distinguishes the patented design over the prior art. The Supreme Court has never clearly endorsed the Point of Novelty test.
In August of 2007, a panel majority of the Federal Circuit held in Egyptian Goddess that a finding of infringement requires applying both the Ordinary Observer and Point of Novelty tests. Over a strongly-worded dissent, the majority then took the inquiry a new step farther, holding that a "point of novelty" must represent a "non-trivial advance" over the prior art. The Federal Circuit swiftly granted en banc review of that decision.
On September 22, 2008, the en banc Federal Circuit reversed the earlier panel decision. In doing so, the Federal Circuit discarded not only the nascent "non-trivial advance" requirement, but also the old Point of Novelty as an independent test, calling it inconsistent with established precedent. Instead, the court returned to the Ordinary Observer test established in Gorham. In the court’s view, the hypothetical ordinary observer is deemed to compare and contrast the patented and accused infringing designs while utilizing the prior art as a "frame of reference" for the analysis.
While not quite a "reset" to the pre-Litton days, we expect design patent infringement determinations will turn more on an "as a whole" evaluation following Egyptian Goddess, rather than focusing on small differences divorced from the overall design. This may broaden the scope of design patent protection somewhat, but to what extent is still unclear. The opinion also signaled the survival of key elements of the Point of Novelty test, as integrated into the Ordinary Observer test. “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…infringing." Thus, an accused infringer will remain strongly motivated to locate and produce relevant prior art to refute the existence of such "conspicuous departures." A point of novelty, by another name, may still remain.
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