In a case decided yesterday, the Federal Circuit clarified the point-of-novelty test for design patents when the point of novelty is a combination of existing design elements. The court adopted the rule that "to constitute a point of novelty, the combinations must be a non-trivial advance over the prior art." The court likened this analysis to an obviousness inquiry of a validity analysis.
In a strong dissent, Judge Dyk stated that this "non-trivial" test conflates the criteria for infringement and validity, is both too broad and too narrow, would be to difficult to apply to design patent cases, and does not have support in Federal Circuit case law.
More detail of Egyptian Goddess, Inc. v. Swisa, Inc. after the jump.
Egyptian Goddess, Inc. brought a design patent infringement suit against Swisa, Inc. for allegedly infringing a design patent of a four-sided nail file that had three of the sides covered with abrasive pads, an example of which is shown below (left). Swisa moved for summary judgment of noninfringement, arguing its design did not meet either the "ordinary observer" or the point-of-novelty test. The district court found that "the only point of novelty" over a prior-art nail file, shown below (right), was the "addition of the forth side without a pad." Because the Swisa nail file had four sides and all four sides were covered with abrasive pads, the district court granted summary judgment.
On appeal, the Federal Circuit stated that the point-of-novelty test, places the burden on the patentee to present its contentions as to the point of novelty because the test is part of the infringement analysis. To determine the point of novelty with a combination of elements, the court held that the "combination must be a non-trivial advance over the prior art." To determine what constitutes a "non-trivial" advance, the court referred to past Federal Circuit cases and likened the analysis to the obviousness analysis for patent validity. It concluded that patent law had "already intertwined [the] infringement and validity analysis," and thus the use of an obviousness-type analysis was within Federal Circuit precedent in an infringement analysis. It stated that the use of an anticipation analysis instead of an obviousness analysis would be useless in a determination of non-trivialness because any trivial difference would meet the standard.
Because there were many nail files in the prior that were four-sided, the Federal Circuit found that "no reasonable juror could conclude that [the] asserted point of novelty constituted a non-trivial advance over the prior art." Moreover, even if a fourth side without a pad was a point of novelty, the accused device must appropriate the point of novelty which distinguishes the patented device over prior art. However, Swisa's product included a fourth side with a pad; thus it did not meet the point-of-novelty test and did not infringe the design patent. Therefore, the Federal Circuit affirmed the district court's grant of summary judgment.
In his dissent, Judge Dyk argued that the new "non-trivial" rule has multiple flaws. Because point of novelty would be determined under an obviousness analysis, the patentee would have to affirmatively prove nonobviousness to meet the point-of-novelty test of infringement, whereas normally the burden rests on the part asserting invalidity to show obviousness. Moreover, because the "non-trivial" requirement applies only to designs which have a combination of design elements, and yet it still extends the obviousness analysis to each point of novelty instead of the overall design; thus it is too broad and too narrow at the same time. Third, the majority's requirement of "non-trivial" advances would be very difficult to implement because points of novelty in design patents are "often dramatically different from the prior art" anyway, so the obviousness analysis would be complicated.
Judge Dyk also distinguished the cases the majority used to support the use of an obviousness-type analysis. In those cases, the courts had found that a feature that had rendered a design nonobvious was also the point of novelty, but that is not the same as finding that "point of novelty cannot exist unless it would also render the design nonobvious." Judge Dyk also noted that in Lawman Armor Corp. v. Winner Int'l, LLC, the Federal Circuit had stated that the determination of "obviousness . . . had no place in the infringement issue" analysis. The majority, however, reasoned that Lawman had only specifically rejected "the notion that the suggestion or motivation to combine prior art references must be proven as part of an infringement analysis." Under KSR Int'l Co. v. Teleflex, rejection of requiring a motivation to combine was "not tantamount to rejecting application of an obviousness type analysis" for infringement issues. Thus, the obviousness-type analysis could still be used to in an infringement analysis.
To read the full decision in Egyptian Goddess, Inc. v. Swisa, Inc., click here.