Egyptian Goddess v. Swisa (CAFC 06-1562)

Design patent infringement is a two-prong factual test, determined after claim construction: the first test is deceptive look-alike; the second is whether the accused product uses the novel feature.

There are two distinct requirements for establishing design patent infringement. Bernhardt, L.L.C. v. Collezione Europa USA, Inc., 386 F.3d 1371, 1383 (Fed. Cir. 2004). The first, called the ordinary observer test, requires that “in the eye of an ordinary observer, giving such attention as a purchaser usually gives, [the] two designs are substantially the same . . . the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other.” Gorham Co. v. White, 81 U.S. (14 Wall.) 511, 528 (1871). The second, called the point of novelty test, requires that “no matter how similar two items look, ‘the accused device must appropriate 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) (citing Sears, Roebuck & Co. v. Talge, 140 F.2d 395, 396 (8th Cir. 1944)). “Both the ordinary observer and point of novelty tests are factual inquiries that are undertaken by the fact finder during the infringement stage of proceedings, after the claim has been construed by the court.” Bernhardt, 386 F.3d at 1383.

Design novelty must be pointed out by the patentee. In a footnote, the CAFC points out that "the point of novelty should be determined by comparing the claimed design to the prior art and not to the accused design."

Because the point of novelty determination is part of the infringement analysis, the initial burden is on the patentee to “present, in some form, its contentions as to points of novelty.” Id. at 1383. The point of novelty can be either a single novel design element or a combination of elements that are individually known in the prior art. See Lawman Armor Corp. v. Winner Int’l, LLC, 449 F.3d 1190, 1192 (Fed. Cir. 2006) (supplemental opinion on petition for rehearing); Litton, 728 F.2d at 1443-44. The patentee is not free to set forth any combination of elements as the point of novelty, rather, the point of novelty must include features of the claimed design that distinguish it from the prior art. Litton, 728 F.2d at 1444; Goodyear Tire & Rubber Co. v. Hercules Tire & Rubber Co., 162 F.3d 1113, 1118 (Fed. Cir. 1998).

Fashioning a new test, a combination of prior art elements must be a "non-trivial advance" to be considered a point of novelty.

For a combination of individually known design elements to constitute a point of novelty, the combination must be a non-trivial advance over the prior art. See Smith v. Whitman Saddle Co., 148 U.S. 674, 682 (1893) (analyzing whether the accused device contained the aspects of the claimed design that “rendered it patentable as a complete and integral whole”); Bernhardt, 386 F.3d at 1384 (noting that the point of novelty determination “is not especially different from the factual determinations that the district courts routinely undertake” in performing the obviousness inquiry); cf. Litton, 728 F.2d at 1444 (applying the results of the obviousness analysis when determining the point of novelty of the claimed design).

The CAFC agreed with the district court that EGI's proffered point of novelty that would have allowed infringement was, from a patentability standpoint, trivial (in double-negative-speak: by not being "a non-trivial advance"); hence, non-obvious over the prior art, and thus invalid.

The district court properly determined that no reasonable jury could conclude that the point of novelty proffered by EGI is a non-trivial advance over the prior art. The parties do not dispute that the various design elements of the claimed design were each individually disclosed in the prior art. EGI’s asserted point of novelty is a combination of four of the claimed design’s elements: (1) an open and hollow body, (2) square cross-section, (3) raised rectangular pads, and (4) exposed corners. The district court properly found that one prior art nail buffer design, illustrated in U.S. Design Patent No. 416,648 (the Nailco patent), shown below, contains each of these elements except that the body is triangular—rather than square—in cross-section. Summary Judgment Order, at 4.

There is no dispute, however, that nail buffers having square cross-sections were widely known in the prior art. EGI admits that three prior art references cited during prosecution of the D’389 patent illustrate at least five nail buffer designs with a square cross-section. Moreover, the parties both agree that other well-known prior art designs, namely the Tammy Taylor buffers, also had square cross-sections. In light of the prior art, no reasonable juror could conclude that EGI’s asserted point of novelty constituted a non-trivial advance over the prior art.

The district court determined that the only possible point of non-trivial advance over the prior art provided the basis for Swisa to evade infringement.

The district court correctly determined that only if the point of novelty included a fourth side without a raised pad could it even arguably be a non-trivial advance over the prior art. The Swisa buffers have raised, abrasive pads on all four sides. When considering the prior art in the nail buffer field, this difference between the accused design and the patented design cannot be considered minor. See Litton, 728 F.2d at 1444 (explaining that the differences between the claimed and accused designs must be considered in light of the differences between the prior art and the claimed design). Since the parties agree that the Swisa buffers do not contain a fourth side without a raised pad, summary judgment of noninfringement was properly granted.

DYK strongly dissented from the majority opinion of Archer and Moore, finding "non-trivial advance" to be a new metric badly applied, without precedential support, and even contrary to preexisting case law.

In my view, the majority opinion departs from our precedent in fashioning a new rule—that a combination of elements cannot constitute a point of novelty in design patent cases unless the combination constitutes a “non-trivial advance” over the prior art. The majority equates its newly-fashioned non-trivial advance test with the requirement that a design patent be nonobvious over the prior art. It then appears to limit the application of that test to cases in which the point of novelty involves a combination of prior art elements.

It seems to me that there are multiple flaws in the majority’s approach. First, by conflating the criteria for infringement and obviousness, the test eviscerates the statutory presumption of validity by requiring the patentee to affirmatively prove nonobviousness. See 35 U.S.C. § 282 (“The burden of establishing invalidity of a patent or any claim thereof shall rest on the party asserting such invalidity.”). The burden of proof on obviousness rests with the accused infringer and must be established by clear and convincing evidence. Under the majority’s test, however, the patentee would have to prove nonobviousness in order to establish infringement.

The majority opinion addressed the foregoing argument in a footnote, but failed to tackle the presumption issue raised.

The dissent suggests that determining the point of novelty by a non-triviality test conflates infringement and validity analyses. Design patent law has already intertwined the infringement and validity tests. The infringement test at issue in this case is called the "point of novelty" test. The question is not whether the infringement and validity analyses are similar or conflated, they already are. The question is: When the patentee claims a combination of old prior art elements as its asserted point of novelty should the test be one of anticipation or obviousness? We conclude that non-triviality ought to apply—if the standard is akin to anticipation then a combination with even the most trivial difference would meet the standard.

Continuing with the dissent -

Second, the majority’s approach is at the same time too narrow and too broad. It is too narrow because it applies a special test only to designs which involve a combination of design elements. It is clear to me that a single point of novelty test must apply to all points of novelty, not just those involving combinations. That has invariably been the approach of our past cases. The majority’s approach is also too broad because it extends an obviousness-like test to each point of novelty, not merely the overall design (which is presently the sole focus of the obviousness analysis).

Third, determining whether each combination point of novelty represents a “non-trivial advance” over the prior art requires a difficult and restrictive inquiry in design patent cases. As we have previously noted, “[d]esign patents have almost no scope.” In re Mann, 861 F.2d 1581, 1582 (Fed. Cir. 1988). Points of novelty in design patents are often not dramatically different from the prior art. It is difficult enough to assess whether an overall design would have been obvious; it is almost impossible to determine whether a particular design feature represents a trivial or substantial advance over the prior art.

Fourth, the majority’s test is devoid of support in the case law. The most that any of the cases cited by the majority can establish is that we have, in certain instances, used the results of our obviousness analysis to determine the point of novelty under the point of novelty test. But no case has come close to requiring a showing of nonobviousness as part of the point of novelty test.

Finally, the majority’s test is in fact contrary to several of our cases.