CAFC Rules in Egyptian Goddess: Point of Novelty Test Gone (sort of)

The Federal Circuit issued its en banc decision today in Egyptian Goddess, Inc. v. Swisa, Inc. (2006-1562). In a decision authored by Judge Bryson, the Court thoughtfully and carefully reviewed the history of the "point of novelty test," concluding that the test in its current incarnation "is of quite recent vintage" and holding that it "should no longer be used in the analysis of a claim of design patent infringement."


While the case holding is quite clear in ridding design patent law of the point of novelty test, the opinion does not say one may ignore the prior art during an analysis of design patent infringement. On the contrary, "when the claimed and accused designs are not plainly dissimilar, resolution of the question whether the the ordinary observer would consider the two designs to be substantially similar will benefit from comparison of the claimed and accused designs with the prior art." Eliminated from the plaintiff's burden of proof in a design patent case, the point of novelty test therefore survives as a defensive doctrine, where the burden of producing prior art rests on the accused infringer. Under this new legal framework, one accused of design patent infringement is free to argue that any similarity between its device and the patented design results from prior art features or combinations and that the hypothetical ordinary observer would therefore not find the two designs "substantially the same."



What this means to a litigator like me is that a lot more design patent cases will go to the jury under the new test. Whether similarity in any given case is due to copying the prior art or due to actionable copying of the patented design is something the jury will now be asked to sort out on a more frequent basis. Score one point for trial lawyers and another for design patent holders in general.



In addition to eliminating the point of novelty test as a part of the Plaintiff's burden of proof for infringement, the opinion says that a detailed claims construction is not required, and that "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." A district court may (in its discretion) reduce the design patent claim to a verbal or written pronouncement of scope, and the opinion gives several examples where a court might choose to do so; like where features appear in broken lines or where features have a purely utilitarian (as opposed to ornamental) purpose. The court has only one proviso "as a general matter, those courts should not treat the process of claim construction as requiring a detailed verbal description of the claimed design, as would typically be true in the case of utility patents."


So there you have it. Life just got a little easier for those owning design patents.