In utility patent cases, combining prior art references to invalidate claimed novelty has to meet threshold requirements. Not so with design patents.

In comparing a design patent claim to the accused design to determine infringement, a court must apply “two distinct tests, both of which must be satisfied in order to find infringement: (a) the ‘ordinary observer’ test, and (b) the ‘point of novelty’ test.” Contessa Food Prods., Inc. v. Conagra, Inc., 282 F.3d 1370, 1377 (Fed. Cir. 2002). See Unidynamics Corp. v. Automatic Prods. Int’l, Ltd., 157 F.3d 1311, 1323 (Fed. Cir. 1998). The “ordinary observer” test requires comparison of the two designs from the viewpoint of the ordinary observer to “determine whether the patented design as a whole is substantially the same as the accused design.” Tropicana Prods., Inc. v. Land O’ Lakes, Inc., 286 F. Supp. 2d 343, 345 (D. Del. 2003) (citing Braun Inc. v. Dynamics Corp. of Am., 975 F.2d 815, 820 (Fed. Cir. 1992)). Under the “point of novelty” test, a court must determine whether “the accused device . . . appropriate[s] the novelty in the patented device which distinguishes it from the prior art.” Litton Sys., Inc. v. Whirlpool Corp., 728 F.2d 1423, 1444 (Fed. Cir. 1984), (quoting Sears, Roebuck & Co. v. Talge, 140 F.2d 395, 396 (8th Cir. 1944)). See generally Bernhardt, L.L.C. v. Collezione Europa USA, Inc., 386 F.3d 1371, 1384 (Fed. Cir. 2004) (discussing the required showing for the “point of novelty” test).

The district court ruled that factual disputes precluded summary judgment under the “ordinary observer” test, but granted summary judgment for Winner under the “point of novelty” test. Lawman had specified eight “points of novelty” that allegedly distinguished the patented design in the ’621 patent from the prior art. In response, Winner had listed specific prior art patents that allegedly disclosed each of Lawman’s “points of novelty.” As noted, the district court held that “Lawman’s proposed points of novelty are found in the prior art.”

Lawman does not directly challenge this latter ruling. It makes no attempt to show either that the district court incorrectly accepted the eight “points of novelty” or that the prior art patents do not disclose those points. Instead, it argues only that the district court failed to make sufficient findings as to the scope and content of the prior art, and also failed to determine the “points of novelty” of the ‘621 patent. Basically, it argues only that there are factual issues on these points, not that the district court erroneously resolved those questions.

Lawman stresses that there is no “suggestion to combine visual elements in the alleged prior art to achieve the ‘621 patent.” Whether there is any suggestion to combine prior art references may be relevant in a validity inquiry to determine obviousness. Litton, 728 F.2d at 1444. It has no place in the infringement issue in this case. Id.

What Lawman’s contention comes down to is that the D’621 patent contains a ninth “point of novelty,” namely, the combination in a single design of the eight non-novel “points of novelty” it embodies. This argument is inconsistent with, and would seriously undermine, the rationale of the “points of novelty” test.

“The purpose of the ‘points of novelty’ approach . . . is to focus on those aspects of a design which render the design different from prior art designs.” Winner Int’l Corp. v. Wolo Mfg. Corp., 905 F.2d 375, 376 (Fed. Cir. 1990), overruled in part on other grounds by Cardinal Chem. Co. v. Morton Int’l., 508 U.S. 83 (1993). “New” designs frequently involve only relatively small changes in the shape, size, placement, or color of elements of old designs. It is those changes in and departures from the old designs that constitute the “points of novelty” in the patented new design.

If the combination of old elements shown in the prior art is itself sufficient to constitute a “point of novelty” of a new design, it would be the rare design that would not have a point of novelty. The practical effect of Lawman’s theory would be virtually to eliminate the significance of the “points of novelty” test in determining infringement of design patents, and to provide patent protection for designs that in fact involve no significant changes from the prior art. Id. (“To consider the overall appearance of a design without regard to prior art would eviscerate the purpose of the ‘point of novelty’ approach, which is to focus on those aspects of a design which render the design different from prior art designs.”).