Friday, April 30, 2010

Where It Began: Egyptian Goddess Slays Point of Novelty

The recent fervor in Design Patent cases stems largely from Egyptian Goddess, Inc. v. Swisa, Inc. (2008), in which the CAFC eliminated the “point of novelty” test long used by courts. Formerly, the "point of novelty" test existed as a "second and free-standing requirement for design patent infringement." The CAFC on review found this test inconsistent with the Supreme Court's decision in Gorham v. White (1871).

In Gorham, the Supreme Court made clear that “sameness of effect upon the eye, is the main test of substantial identity of design.” It then enunciated what has become known as the ordinary observer test:

“[I]f, in the eye of an ordinary observer, given 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 CAFC attempted to reconcile existing precedent that applied a separate “point of novelty” test, characterizing it as a “version” of the ordinary observer test espoused. It noted, however, that those cases “are more properly read as applying 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.” The analysis now collapses into one test to determine if a design as a whole is substantially similar, taking into account the context of the prior art.

Egyptian Goddess also addressed whether trial courts should conduct claim construction in design patent cases. The CAFC cautioned that the trial court should "recognize the risks entailed" in detailed verbal description of the claimed design, "such as the risk of placing undue emphasis on particular features." Further, courts should not require "a detailed verbal description of the claim, as would typically be true in the case of utility patents." Concluding that although courts "have a duty to conduct claim construction in design patent cases," there is no required format, and indeed the drawing itself may be the best source of describing what is claimed.

Egyptian Goddess dealt only with infringement, but International Seaway (analyzed here) expanded the ordinary observer test to validity, as well. Recent cases have highlighted the difficulty in applying the ordinary observer test, as courts have struggled to clarify how an ordinary observer views the differences between a patented design and the accused product. In Crocs v. ITC, (analyzed here) the CAFC reiterated its caution against overly-detailed claim construction. In Richardson v. Stanley Works, (analyzed here) the court provided guidance on the ordinary observer’s view of functional elements in a design. The nuances of the ordinary observer test will likely provide fertile ground for subsequent decisions for some time to come.

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