Intellectual Property Law

En banc Federal Circuit scraps point of novelty test for design patent infringement

By McKee, Voorhees & Sease, P.L.C.

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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Full post as published by FileWrapper on September 22, 2008 (boomark / email).