The Federal Circuit Wednesday affirmed a district court's denial of preliminary injunction to the plaintiffs (a patentee and its licensee with a right to enforce the patent) in a design patent case. The district court held there was a substantial question regarding the validity of the patent that was not shown to lack substantial merit, and therefore the plaintiffs were not likely to succeed on the merits.

On appeal, the Federal Circuit took the opportunity to clarity how district courts should assess likelihood of success in patent cases, particularly when invalidity is raised in response to the motion for preliminary injunction. Specifically, the court observed:

[W]hen analyzing the likelihood of success factor, the trial court, after considering all the evidence available at this early stage of the litigation, must determine whether it is more likely than not that the challenger will be able to prove at trial, by clear and convincing evidence, that the patent is invalid. We reiterate that the "clear and convincing" standard regarding the challenger's evidence applies only at trial on the merits, not at the preliminary injunction stage. The fact that, at trial on the merits, the proof of invalidity will require clear and convincing evidence is a consideration for the judge to take into account in assessing the challenger's case at the preliminary injunction stage; it is not an evidentiary burden to be met preliminarily by the challenger.

If the trial court is persuaded, then it follows that the patentee by definition has not been able to show a likelihood of success at trial on the merits of the validity issue, at least not at this stage. This decision process, which requires the court to assess the potential of a "clear and convincing" showing in the future, but in terms of what is "more likely than not" presently, rests initially in the capable hands and sound judgment of the trial court.

Applying this standard, the Federal Circuit determined the district court did not abuse its discretion in denying the injunction.

More detail of Titan Tire Corp. v. Case New Holland, Inc. after the jump.

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In an en banc decision this morning, the Federal Circuit has unanimously held that the "point of novelty" test for design patent infringement should no longer be applied.  As stated by the court:

[W]e hold that the "point of novelty" test should no longer be used in the analysis of a claim of design patent infringement. Because we reject the "point of novelty" test, we also do not adopt the "non-trivial advance" test, which is a refinement of the "point of novelty" test. Instead, in accordance with Gorham and subsequent decisions, we hold that the "ordinary observer" test should be the sole test for determining whether a design patent has been infringed. Under that test, as this court has sometimes described it, infringement will not be found unless the accused article "embod[ies] the patented design or any colorable imitation thereof."

In addition, the court held that claim construction is not necessary (and, in fact, not "preferable") in a design patent case, but is permitted.  As stated by the court:

Given the recognized difficulties entailed in trying to describe a design in words, the preferable course ordinarily will be for a district court not to attempt to "construe" a design patent claim by providing a detailed verbal description of the claimed design.

With that said, it is important to emphasize that a district court's decision regarding the level of detail to be used in describing the claimed design is a matter within the court's discretion, and absent a showing of prejudice, the court’s decision to issue a relatively detailed claim construction will not be reversible error. At the same time, it should be clear that the court is not obligated to issue a detailed verbal description of the design if it does not regard verbal elaboration as necessary or helpful.  In addition, in deciding whether to attempt a verbal description of the claimed design, the court should recognize the risks entailed in such a description, such as the risk of placing undue emphasis on particular features of the design and the risk that a finder of fact will focus on each individual described feature in the verbal description rather than on the design as a whole.

A discussion of the panel decision may be found in this post, and detail regarding the en banc petition is in this post.

More detail of Egyptian Goddess, Inc. v. Swisa, Inc. after the jump.

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The Federal Circuit today granted a petition for rehearing en banc in a design patent case, Egyptian Goddess, Inc. v. Swisa, Inc.  In that case, the court held that when a design patent's "point of novelty" is a combination of existing design elements, the point of novelty must be a "non-trivial" advance over the prior art.  This essentially incorporated an obviousness-type inquiry into the infringement analysis, as in order to infringe a design patent, the allegedly infringing article must incorporate a point of novelty of the patented design.

Judge Dyk dissented, arguing that the new test conflated the tests for design patent validity and infringement.

Update (11/27):  A copy of the order granting rehearing en banc is availble here.  According to the order, there are three issues to be considered:

1. Should "point of novelty" be a test for infringement of design patent?
2. If so, (a) should the court adopt the non-trivial advance test adopted by the panel majority in this case; (b) should the point of novelty test be part of the patentee's burden on infringement or should it be an available defense; (c) should a design patentee, in defining a point of novelty, be permitted to divide closely related or, ornamentally integrated features of the patented design to match features contained in an accused design; (d) should it be permissible to find more than one "point of novelty" in a patented design; and (e) should the overall appearance of a design be permitted to be a point of novelty? See Lawman Armor Corp. v. Winner Int'l, LLC, 449 F.3d 1190 (Fed. Cir. 2006).
3. Should claim construction apply to design patents, and, if so, what role should that construction play in the infringement analysis? See Elmer v. ICC Fabricating, Inc., 67 F.3d 1571, 1577 (Fed. Cir. 1995).
   

It is interesting that the court is considering completely scrapping both the point of novelty test and the concept of claim construction in the context of design patents.  In any event, it is good that the court is reconsidering its holding in Lawman Armor, as that case has caused considerable controversy (see here and here for examples), and resulted in the court issuing a supplemental opinion to clairfy its original ruling.

More detail on the case may be found in our original post here.

Patently-O provides this report.  I/P Updates offers thoughts on the case here.

In a recent decision, the Federal Circuit affirmed a district court’s order granting summary judgment of non-infringement of two design patents.  Specifically, the court acknowledged that the Supreme Court's decision in Gorham Co. v. White held that an "ordinary observer" for purposes of design patent infringement cannot be an expert.  Nevertheless, in this case, the "ordinary observer" was not the end-user of the product, but rather industrial buyers who used the designed items as component parts assembled into a final retail product.

Based on this determination of the "ordinary observer," the district court's determination of no infringement was affirmed, as it was undisputed that to these "industrial buyers," the designs were not substantially similar.

More detail of Arminak & Assocs., Inc. v. Saint-Gobain Calmar, Inc. after the jump.

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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.

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