By Audrey A. Millemann

Last month, the Federal Circuit Court of Appeals revised the test for infringement for the design patent. The new test, set forth in Egyptian Goddess, Inc. v. Swisa, Inc. (Fed. Cir, September 22, 2008), will make it easier for design patent holders to prove infringement.


In Egyptian Goddess, the plaintiff, EGI, sued the defendant, Swisa, in the Northern District of Texas for infringement of its design patent covering a rectangular, hollow nail buffer. Swisa moved for summary judgment of noninfringement. The court applied the two tests which a plaintiff must satisfy to prove infringement: (1) that the allegedly infringing product is substantially similar to the claimed design under the “ordinary observer” test; and (2) that the allegedly infringing product contains “substantially the same points of novelty that distinguished the patent design from the prior art.” The district court granted the motion, finding that Swisa’s nail buffer did not include the point of novelty of EGI’s patented design.

The plaintiff appealed. A panel of the Federal Circuit affirmed the district court’s decision. 

The plaintiff requested a rehearing en banc. The court of appeals affirmed the panel’s decision.


The court first discussed the key Supreme Court design patent case, Gorham Co. v. White, 81 U.S. 511 (1871). In that case, the Court found that the test for the infringement of a design patent requires that there “must be sameness of appearance, and mere difference of lines in the drawing or sketch… or slight variances in configuration…will not destroy the substantial identity.” Id. at 526-27. The Court held that the test for infringement is: “if, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other.” Id. at 528.


The “ordinary observer” test, as the Gorham test has been called, has been cited many times and was viewed by the proper test by the Federal Circuit and its predecessor courts. However, in a case decided in 1984, the Federal Circuit added another requirement for design patent infringement: the infringing product must include the aspect of the patented design that made the patented design novel over the prior art. This test has been referred to as the “point of novelty” test.

In discussing the point of novelty test, the Federal Circuit explained that it is an easy test to apply where there is only one prior art reference and only one point of novelty. In complex cases, where there are many novel features and several prior art references, it is a difficult test to apply. The result has been disagreement over whether a combination of features can satisfy the test, or whether the overall appearance of the product must be novel.


EGI argued that the court should abolish the point of novelty test and rely only on the ordinary observer test. According to EGI, the point of novelty test can be addressed in the application of the ordinary observer test. Swisa, not surprisingly, argued that the point of novelty test is required by precedent and should not be eliminated.


The court found that the point of novelty test was not consistent with the ordinary observer test, is not required by precedent, and is not needed to protect potential infringers from overly broad design patents. The court discussed the prior cases that relied on the point of novelty test, and concluded that those cases had applied “a version of the ordinary observer test in which the ordinary observer is deemed to view the differences between the patented design and the accused product in the context of the prior art.” EGI, supra.


The court held that the point of novelty test is not longer a proper part of the analysis for design patent infringement. “[T]he ‘ordinary observer’ test should be the sole test for determining whether a design patent has been infringed.” Id. The court further explained how the ordinary observer test should be applied, at id.:


“In some instances, the claimed design and the accused design will be sufficiently distinct that it will be clear without more that the patentee had not met its burden of proving the two designs would appear ‘substantially the same’ to the ordinary observer, as required by Gorham. In other instances, when the claimed and accused designs are not plainly dissimilar, resolution of the question whether the ordinary observer would consider the two designs to be substantially the same will benefit from a comparison of the claimed and accused designs with the prior art…”


The court clarified that, although the prior art is to be considered in applying the ordinary observer test, the ordinary observer test is not a test for validity of a patent, but only a test for infringement. Id.

The court also addressed claim construction. The court held that a district court is not required to construe a design patent by providing a detailed written description of the design. In fact, the court stated that it is “preferable” for district courts not to construe design patents. The district courts have the discretion to do so, however, especially if the court finds that a written description is helpful.


The court then found that Swisa’s product was very similar to the prior art products and that no reasonable juror could find Swisa’s product to be so similar to EGI’s patented design that a purchaser would be deceived into purchasing Swisa’s product, thinking it was the patented design. Because EGI did not satisfy the ordinary observer test, the court affirmed the district court’s grant of summary judgment for Swisa.


Based on this case, design patent infringement will be easier to prove, making design patents stronger than they were before, and more valuable as intellectual property.