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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