En banc Federal Circuit scraps point of novelty test for design patent infringementSeptember 22, 2008 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. 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. A panel of the Federal Circuit affirmed. The court held 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. Judge Dyk dissented from the panel opinion, and argued 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. The court then granted rehearing en banc to resolve three questions: Should "point of novelty" be a test for infringement of design patent? 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). 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). The en banc court held the point of novelty test is not an appropriate test for design patent infringement. After tracing the history of the point of novelty test, the court noted the test grew out of cases where the differences from the prior art and the patented design were mentioned, but generally in the context of designs about which an ordinary observer would be aware, and thus informing the analysis under the ordinary observer test. Further, the advantages of the point of novelty test, such as preventing unduly broad assertions of design patent infringement, can be accomplished by using the prior art to inform design patent claim construction and the infringement analysis. As stated by the court: Our rejection of the point of novelty test does not mean, of course, that the differences between the claimed design and prior art designs are irrelevant. To the contrary, examining the novel features of the claimed design can be an important component of the comparison of the claimed design with the accused design and the prior art. But the comparison of the designs, including the examination of any novel features, must be conducted as part of the ordinary observer test, not as part of a separate test focusing on particular points of novelty that are designated only in the course of litigation. Accordingly, the court rejected the point of novelty test as a separate test for design patent infringement. 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." The court further clarified application of the test somewhat, noting, for example, when there are many examples of similar designs in the prior art, "differences between the claimed and accused designs that might not be noticeable in the abstract can become significant to the hypothetical ordinary observer who is conversant with the prior art." The court also this revised ordinary observer test is "is not a test for determining validity, but is designed solely as a test of infringement." However, "the burden of production as to any comparison prior art" is on the infringer, as that is the party who is "motivated to point out close prior art, and in particular to call tot he court's attention the prior art that an ordinary observer is most likely to regard as highlighting the differences between the claimed and accused design." The patentee still bears the ultimate burden of proof of infringement. In addition to this holding, the court held in most cases, the "preferable" course of action is for a district court not to engage in a verbal claim construction of the patented design. As stated by the court: < ← Return to Filewrapper