Case(s): Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008).

Egyptian Goddess, Inc., filed suit in the U.S. District Court for the Northern District of Texas, alleging that Swisa, Inc., and Dror Swisa (Swisa) infringed its U.S. Design Patent No. 467,389 (the ‘389 patent) for a design for a nail buffer, consisting of a rectangular, hollow tube having a generally square cross-section and featuring buffer surfaces on three of its four sides. Swisa’s accused product consists of a rectangular, hollow tube having a square cross-section, but featuring buffer surfaces on all four of its sides.

District Court Decision

The district court issued an order construing the claim of the389 patent. In so doing, the district court sought to describe in words the design set forth in Figure 1 of the patent.  In the same order, the district court ruled that “Swisa has not shown that the appearance of the Buffer Patent is dictated by its utilitarian purpose.” The court therefore held that the patent is not invalid on the ground that the design was governed solely by function.

Swisa moved for summary judgment of noninfringement. The district court granted the motion. Citing precedent of this court, the district court stated that the plaintiff in a design patent case must prove both (1) that the accused device is “substantially similar” to the claimed design under what is referred to as the “ordinary observer” test, and (2) that the accused device contains “substantially the same points of novelty that distinguished the patented design from the prior art.” After comparing the claimed design and the accused product, the court held that Swisa’s allegedly infringing product did not incorporate the “point of novelty” of the 389 patent, which the court identified as “a fourth, bare side to the buffer.” Because the Swisa product does not incorporate the point of novelty of the 389 patent – a fourth side without a pad – the court concluded that there was no infringement.

Federal Circuit Appeal

Egyptian Goddess appealed, and the Federal Circuit affirmed. The panel agreed with the district court that there was no issue of material fact as to whether the accused Swisa buffer “appropriates the point of novelty of the claimed design.”  In reaching that conclusion, the panel stated that the point of novelty in a patented design “can be either a single novel design element or a combination of elements that are individually known in the prior art.”  The panel added, however, that in order for a combination of individually known design elements to constitute a point of novelty, “the combination must be a nontrivial advance over the prior art.” In light of the prior art, the panel determined that “no reasonable juror could conclude that EGI’s asserted point of novelty constituted a non-trivial advance over the prior art.”

The panel further observed that the various design elements of the claimed design “were each individually disclosed in the prior art,” and concluded that summary judgment was appropriate.

Hearing En Banc

The Federal Circuit granted rehearing en banc and asked the parties to address several questions, including whether the “point of novelty” test should continue to be used as a test for infringement of a design patent; whether the court should adopt the “nontrivial advance test” as a means of determining whether a particular design feature qualifies as a point of novelty; how the point of novelty test should be administered, particularly when numerous features of the design differ from certain prior art designs; and whether district courts should perform formal claim construction in design patent cases.

Following a review of the relevant case law, court held on September 22, 2008 that the point of novelty test was no longer to be used in the analysis of a claim of design patent infringement. Instead, the court held that the ordinary observer test is the proper test for determining whether a design patent had been infringed. Specifically, the Court reasoned that because the “ordinary observer” test is the appropriate standard for gauging infringement, it must, therefore, also be the correct standard when comparing the patented design to the prior art.

In short, it is clear that anticipation in design patent cases occurs if (and only if) the “ordinary observer” determines that the patented design is “substantially similar” to cited prior art.