Egyptian Goddess v. Swisa (CAFC 06-1562, en banc)

Design patent 467,389 -

The patent claimed a design for a nail buffer, consisting of a rectangular, hollow tube having a generally square cross-section and featuring buffer surfaces on three of its four sides. Swisa's accused product consists of a rectangular, hollow tube having a square cross-section, but featuring buffer surfaces on all four of its sides.

The concocted CAFC standard for infringement assessment from the split panel decision -

[T]he panel stated that the point of novelty in a patented design "can be either a single novel design element or a combination of elements that are individually known in the prior art." [Egyptian Goddess, Inc. v. Swisa, Inc., 498 F.3d 1354, 1355 (Fed. Cir. 2007)] Id. at 1357. The panel added, however, that in order 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." Id.

The en banc cleared its throat by reaching back to the 1871 "ordinary observer" test -

The starting point for any discussion of the law of design patents is the Supreme Court's decision in Gorham Co. v. White, 81 U.S. 511 (1871). That case involved a design patent for the handles of tablespoons and forks. In its analysis of claim infringement, the Court stated that the test of identity of design "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. Identity of appearance, the Court explained, or "sameness of effect upon the eye, is the main test of substantial identity of design"; the two need not be the same "to the eye of an expert," because if that were the test, "[t]here never could be piracy of a patented design, for human ingenuity has never yet produced a design, in all its details, exactly like another, so like, that an expert could not distinguish them." Id. at 527.

The Gorham Court then set forth the test that has been cited in many subsequent cases: "[I]f, 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." 81 U.S. at 528. In the case before it, the Court concluded that "whatever differences there may be between the plaintiffs' design and those of the defendant in details of ornament, they are still the same in general appearance and effect, so much alike that in the market and with purchasers they would pass for the same thing--so much alike that even persons in the trade would be in danger of being deceived." Id. at 531.

Since the decision in Gorham, the test articulated by the Court in that case has been referred to as the "ordinary observer" test and has been recognized by lower courts, including both of this court's predecessors, as the proper standard for determining design patent infringement. See, e.g., Blumcraft of Pittsburgh v. United States, 372 F.2d 1014, 1016 (Ct. Cl. 1967); In re Dubois, 262 F.2d 88, 91 (CCPA 1958). However, in a series of cases tracing their origins to Litton Systems, Inc. v. Whirlpool Corp., 728 F.2d 1423 (Fed. Cir. 1984), this court has held that proof of similarity under the ordinary observer test is not enough to establish design patent infringement. Rather, the court has stated that the accused design must also appropriate the novelty of the claimed design in order to be deemed infringing. The court in Litton Systems wrote as follows:

For a design patent to be infringed . . . 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." That is, even though the court compares two items through the eyes of the ordinary observer, it must nevertheless, to find infringement, attribute their similarity to the novelty which distinguishes the patented device from the prior art.

Litton Systems, 728 F.2d at 1444 (citations omitted). After identifying the combination of features in the design that it considered novel, the court in Litton Systems held that the accused design had none of those features and therefore did not infringe. Id.

In a number of cases decided after Litton Systems, this court has interpreted the language quoted above to require that the test for design patent infringement consider both the perspective of the ordinary observer and the particular novelty in the claimed design. See, e.g., Bernhardt, L.L.C. v. Collezione Europa USA, Inc., 386 F.3d 1371, 1383 (Fed. Cir. 2004); Contessa Food Prods., Inc. v. Conagra, Inc., 282 F.3d 1370, 1377 (Fed. Cir. 2002); Unidynamics Corp. v. Automatic Prods. Int'l, Inc., 157 F.3d 1311, 1323-24 (Fed. Cir. 1998); Oakley, Inc. v. Int'l Tropic-Cal., Inc., 923 F.2d 167, 169 (Fed. Cir. 1991); Avia Group Int'l, Inc. v. L.A. Gear Cal., Inc., 853 F.2d 1557, 1565 (Fed. Cir. 1988).

Then, self-admittedly, the appeals court drove the law into the weeds.

The extent to which the point of novelty test has been a separate test has not always been clear in this court's case law. In cases decided shortly after Litton, the court described the ordinary observer test and the point of novelty test as "conjunctive." See L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 1125 (Fed. Cir. 1993); Shelcore, Inc. v. Durham Indus., Inc., 745 F.2d 621, 628 n.16 (Fed. Cir. 1984). It has not been until much more recently that this court has described the ordinary observer and point of novelty tests as "two distinct tests" and has stated that "[t]he merger of the point of novelty test and the ordinary observer test is legal error." Unidynamics Corp., 157 F.3d at 1323-24; see also Lawman Armor Corp. v. Winner Int'l, LLC, 437 F.3d 1383, 1384 (Fed. Cir. 2006); Contessa Food Prods., Inc., 282 F.3d at 1377; Sun Hill Indus., Inc. v. Easter Unlimited, Inc., 48 F.3d 1193, 1197 (Fed. Cir. 1995).

Egyptian Goddess, supported by a gaggle of amici, bellowed against the point-of-novelty test. Counterpoint, Swisa sang solo. "According to Swisa, the point of novelty test was adopted by the Supreme Court in Smith v. Whitman Saddle Co., 148 U.S. 674 (1893)." And so the CAFC gang in toto ambled on stage to moon its own recent tomfoolery.

A close reading of Whitman Saddle and subsequent authorities indicates that the Supreme Court did not adopt a separate point of novelty test for design patent infringement cases. In fact, a study of the development of design patent law in the years after Gorham shows that the point of novelty test, in its current form, is of quite recent vintage. After a review of those authorities, which we examine in some detail below, we conclude that the point of novelty test, as a second and free-standing requirement for proof of design patent infringement, is inconsistent with the ordinary observer test laid down in Gorham, is not mandated by Whitman Saddle or precedent from other courts, and is not needed to protect against unduly broad assertions of design patent rights.

The CAFC explored its antecedent wanderings with revisionist history, bemoaning the difficulty of design patent decisions, then getting to the nub, lavishing praise on the hoary Gorham "ordinary observer" metric.

Particularly in close cases, it can be difficult to answer the question whether one thing is like another without being given a frame of reference. The context in which the claimed and accused designs are compared, i.e., the background prior art, provides such a frame of reference and is therefore often useful in the process of comparison. Where the frame of reference consists of numerous similar prior art designs, those designs can highlight the distinctions between the claimed design and the accused design as viewed by the ordinary observer.

Applying the ordinary observer test with reference to prior art designs also avoids some of the problems created by the separate point of novelty test. One such problem is that the point of novelty test has proved difficult to apply in cases in which there are several different features that can be argued to be points of novelty in the claimed design. In such cases, the outcome of the case can turn on which of the several candidate points of novelty the court or fact-finder focuses on. The attention of the court may therefore be focused on whether the accused design has appropriated a single specified feature of the claimed design, rather than on the proper inquiry, i.e., whether the accused design has appropriated the claimed design as a whole. See Amini Innovation Corp. v. Anthony Cal., Inc., 439 F.3d 1365, 1370-71 (Fed. Cir. 2006); Keystone Retaining Wall Sys., Inc. v. Westrock, Inc., 997 F.2d 1444, 1450 (Fed. Cir. 1993); Braun Inc., 975 F.2d at 820.

In addition, the more novel the design, and the more points of novelty that are identified, the more opportunities there are for a defendant to argue that its design does not infringe because it does not copy all of the points of novelty, even though it may copy most of them and even though it may give the overall appearance of being identical to the claimed design. In such cases, a test that asks how an ordinary observer with knowledge of the prior art designs would view the differences between the claimed and accused designs is likely to produce results more in line with the purposes of design patent protection.

Crafting a surreally twisted story line, the CAFC wrapped the the point-of-novelty test around the ordinary observer test. It then sybaritically viewed what it had done.

This court has characterized the purpose of the point of novelty test as being "to focus on those aspects of a design which render the design different from prior art designs." Sun Hill Indus., Inc., 48 F.3d at 1197, quoting Winner Int'l Corp. v. Wolo Mfg. Corp., 905 F.2d 375, 376 (Fed. Cir. 1990). That purpose can be equally well served, however, by applying the ordinary observer test through the eyes of an observer familiar with the prior art. If the accused design has copied a particular feature of the claimed design that departs conspicuously from the prior art, the accused design is naturally more likely to be regarded as deceptively similar to the claimed design, and thus infringing. At the same time, unlike the point of novelty test, the ordinary observer test does not present the risk of assigning exaggerated importance to small differences between the claimed and accused designs relating to an insignificant feature simply because that feature can be characterized as a point of novelty.

This approach also has the advantage of avoiding the debate over the extent to which a combination of old design features can serve as a point of novelty under the point of novelty test. An ordinary observer, comparing the claimed and accused designs in light of the prior art, will attach importance to differences between the claimed design and the prior art depending on the overall effect of those differences on the design. If the claimed design consists of a combination of old features that creates an appearance deceptively similar to the accused design, even to an observer familiar with similar prior art designs, a finding of infringement would be justified. Otherwise, infringement would not be found.

The CAFC can't help itself muddying the water just cleared.

One function that has been served by the point of novelty test, according to Swisa and its supporting amici, is to cabin unduly broad assertions of design patent scope by ensuring that a design that merely embodies or is substantially similar to prior art designs is not found to infringe. Again, however, we believe that the preferable way to achieve that purpose is to do so directly, by relying on the ordinary observer test, conducted in light of the prior art. Our rejection of the point of novelty test does not mean, of course, that the differences between the claimed design and prior art designs are irrelevant. To the contrary, examining the novel features of the claimed design can be an important component of the comparison of the claimed design with the accused design and the prior art. But the comparison of the designs, including the examination of any novel features, must be conducted as part of the ordinary observer test, not as part of a separate test focusing on particular points of novelty that are designated only in the course of litigation.

The dénouement: rejecting the point-of-novelty test for infringement analysis. Back to basics. 137 years back.

On the basis of the foregoing analysis, we hold that the "point of novelty" test should no longer be used in the analysis of a claim of design patent infringement. Because we reject the "point of novelty" test, we also do not adopt the "non-trivial advance" test, which is a refinement of the "point of novelty" test. Instead, in accordance with Gorham and subsequent decisions, we hold that the "ordinary observer" test should be the sole test for determining whether a design patent has been infringed. Under that test, as this court has sometimes described it, infringement will not be found unless the accused article "embod[ies] the patented design or any colorable imitation thereof." Goodyear Tire & Rubber Co., 162 F.3d at 1116-17; see also Arminiak & Assocs., Inc. v. Saint-Gobain Calmar, Inc., 501 F.3d 1314, 1319 (Fed. Cir. 2007).

The CAFC then elaborated infringement assessement via acumen with the prior art. Channeling Obzilla, the "ordinary observer" is keenly perceptive by being expert in the art.

In some instances, the claimed design and the accused design will be sufficiently distinct that it will be clear without more that the patentee has 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, as in many of the cases discussed above and in the case at bar. Where there are many examples of similar prior art designs, as in a case such as Whitman Saddle, differences between the claimed and accused designs that might not be noticeable in the abstract can become significant to the hypothetical ordinary observer who is conversant with the prior art.

Next, multiple thought streams in a single paragraph. Mixing prior art in infringement analysis as described foregoing is not to be confused with validity analysis. A reminder that the patentee has the burden of proof of infringement, by preponderance of evidence. Flinging more mud into the stream, the decision noted that this is decidedly not the last word, as nailing down firm case law is beyond the grasp of this crew. That's a huge irony in that this decision essentially wound back the clock to 1871 because the court of appeals made of mess of it since.

We emphasize that although the approach we adopt will frequently involve comparisons between the claimed design and the prior art, it is not a test for determining validity, but is designed solely as a test of infringement. Thus, as is always the case, the burden of proof as to infringement remains on the patentee. However, if the accused infringer elects to rely on the comparison prior art as part of its defense against the claim of infringement, the burden of production of that prior art is on the accused infringer. To be sure, we have stated that the burden to introduce prior art under the point of novelty test falls on the patentee. See Bernhardt, 386 F.3d at 1384. Under the ordinary observer test, however, it makes sense to impose the burden of production as to any comparison prior art on the accused infringer. The accused infringer is the party with the motivation to point out close prior art, and in particular to call to the court's attention the prior art that an ordinary observer is most likely to regard as highlighting the differences between the claimed and accused design. Regardless of whether the accused infringer elects to present prior art that it considers pertinent to the comparison between the claimed and accused design, however, the patentee bears the ultimate burden of proof to demonstrate infringement by a preponderance of the evidence. As in our recent decision in In re Seagate Technology, LLC, we "leave it to future cases to further develop the application of this standard." 497 F.3d 1360, 1371 (Fed. Cir. 2007) (en banc).

Acting as jurisprudential shaman, the CAFC murmurs that "a picture is worth a thousand words," and waves its hands over design patent claim construction.

As the Supreme Court has recognized, a design is better represented by an illustration "than it could be by any description and a description would probably not be intelligible without the illustration." Dobson v. Dornan, 118 U.S. 10, 14 (1886). The Patent and Trademark Office has made the same observation. Manual of Patent Examining Procedure § 1503.01 (8th ed. 2006) ("[A]s a rule the illustration in the drawing views is its own best description."). Given the recognized difficulties entailed in trying to describe a design in words, 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.

While it may be unwise to attempt a full description of the claimed design, a court may find it helpful to point out, either for a jury or in the case of a bench trial by way of describing the court's own analysis, various features of the claimed design as they relate to the accused design and the prior art.

Apart from attempting to provide a verbal description of the design, a trial court can usefully guide the finder of fact by addressing a number of other issues that bear on the scope of the claim. Those include such matters as describing the role of particular conventions in design patent drafting, such as the role of broken lines, see 37 C.F.R. § 1.152; assessing and describing the effect of any representations that may have been made in the course of the prosecution history, see Goodyear Tire & Rubber Co., 162 F.3d at 1116; and distinguishing between those features of the claimed design that are ornamental and those that are purely functional, see Oddzon Prods., Inc. v. Just Toys, Inc., 122 F.3d 1396, 1405 (Fed. Cir. 1997) ("Where a design contains both functional and non-functional elements, the scope of the claim must be construed in order to identify the non-functional aspects of the design as shown in the patent.").

Providing an appropriate measure of guidance to a jury without crossing the line and unduly invading the jury's fact-finding process is a task that trial courts are very much accustomed to, and any attempt by an appellate court to guide that process in detail is likely to do more harm than good. We therefore leave the question of verbal characterization of the claimed designs to the discretion of trial judges, with the proviso that 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.

The CAFC then affirmed the district court's ruling, albeit walking a different road. The "non-trivial advance" test promulgated by the CAFC panel last episode is kicked like a can to the gutter.

Finally, although we do not adopt the "non-trivial advance" test employed by the panel in this case, we note that our analysis under the ordinary observer test is parallel to the panel's approach in an essential respect.

No infringement affirmed.

One fervent delinquency with the courts, abundantly apparent here, and stock-in-trade with the current Supreme Court, is woolly writing. Clear writing is a product of clear thinking, but cogent analysis does not necessarily translate to clear exposition. Suggestion for the courts, in two words: tighter editing. The courts regularly self-indulge in musings subject to later misinterpretation. This case is exemplary. You kids take a writing class. Seriously.

Patent law is fact-rich. The courts attempting to bottle rules into magic elixir for rulings of law is a legal alchemist's pipe dream. The CAFC here adopting the geezer anthem "the old ways are the best" is the right tune - treating patent jurisprudence rules as rules of thumb. If the rules of the game are hard to interpret, don't over-elaborate. Get better umpires - a dedicated patent circuit court.