Patent Law

Egyptian Goddess v. Swisa (en banc 2008)

More than a handful of studies and articles have discussed how the rise in patent law power parallels the founding and evolution of the Court of Appeals for the Federal Circuit (CAFC).  Those articles gloss over the CAFC’s negative impact on design patent law. Today, design patent law is in the weakest and most confused state since before the Supreme Court’s landmark 1871 decision of Gorham v. White. (Although, the law is admittedly more uniform now than it was pre-CAFC).

Through its en banc rehearing of Egyptian Goddess, the CAFC now has the opportunity to change course and breathe new life into this languishing area of intellectual property.

In Gorham, the Supreme Court created the test governing design patent infringement. The so-called ordinary observer test considers whether an ordinary purchaser of the claimed product, “giving such attention as a purchaser usually gives” would consider that “two designs are substantially the same.”  Later, cases recognized a problem with this simple formulation — finding that the ordinary observer test could potentially capture prior-art designs as infringing.  In response, the CAFC added an additional “points of novelty” test that requires a showing that accused devices appropriate the specific novel features of a patented design.

To many, this points-of-novelty requirement and the apparent rule requiring transform the design-patent picture claims into paragraph form as unduly limiting the potential scope of a design patent. The requirements are also seen by some as unnecessary because of the parallel validity requirements of novelty and nonobviousness. Two additional points-of-novelty test issues that raise ire are whether the design as a whole can be a point of novelty and whether the points of novelty can include “trivial” points.

The en banc appeal will focus on three separate questions:

1. Should "point of novelty" be a test for infringement of a 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 (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 (Fed. Cir. 1995).

Now, the plaintiff, Egyptian Goddess along with its amici have filed opening briefs in the case. (Attached below). Swisa’s opposition will arrive in a few weeks.   

• File Attachment: EG.EGBrief.pdf (750 KB)
• File Attachment: EG.AIPLA.pdf (226 KB)
• File Attachment: EG.FICPI.pdf (347 KB)
• File Attachment: EG.IPO.pdf (962 KB)
• File Attachment: EG.ISDA.pdf (607 KB)
• File Attachment: EG.FCBA.pdf (468 KB)
• File Attachment: EG.Apple.pdf (425 KB)
• File Attachment: EG.Daisy.pdf (4103 KB)
• File Attachment: EG.HIPLA.doc (181 KB)
• File Attachment: EG.IPLAC.pdf (79 KB)
• File Attachment: EG.Nike.pdf (339 KB)
• File Attachment: EG.ProfFryer.rtf (125 KB)

Points of Novelty: Several of the briefs dismiss the points-of-novelty test as unnecessary in light of the validity requirements of novelty and nonobviousness.  That suggestion is ultimately unworkable because of a disconnect between a strict ordinary observer test of infringement and the obviousness test of invalidity. This disconnect would potentially allow a finding that a prior art design infringes a valid design patent. (Obviousness is in the eye of PHOSITA at the time of the invention while ordinary observer infringement is in the eye of an ordinary purchaser at the time of purchase).  The points-of-novelty approach is, however, seriously flawed — it is an odd process akin to separating a painting into various individual components and then making a list of those components that have never been used before. In most cases, the final list has little relation to the patented design. (This process is further facilitated by an overzealous Markman process).

The better approach is suggested in the AIPLA and Apple briefs. The ordinary observer test should necessarily include some consideration of the prior art, but that consideration should be at the level of the ordinary observer in a three-way visual comparison test.  Thus, in the Braun case (below), the accused design would be found to infringe if the ordinary observer finds it substantially the same as the patented design and more similar to the patented design than to the prior art.

Academics are Out: It is notable that for this important case, only one academic (Professor Fryer of Baltimore) filed an amicus brief. Perry Saidman’s brief for Apple was the only brief citing a law review article, and it cited one by Perry Saidman.  Saidman also cited a Patently-O comment made by Chris Carini (author of the AIPLA brief).