The Point of Novelty Test – An Offence Now Punishable By Death

It appears as though Pacific Coast Marine Windshields, Ltd. v. Malibu Boats, LLC is the design patent case that keeps on giving.  We previously posted about Judge Antoon’s finding no infringement in this case, and Malibu Boats’ creative use of prosecution history estoppel.  On January 4, another interesting decision came down in Pacific Coast, this time relating to the exclusion of an expert witness who somehow applied a design patent standard that has been dead-letter law for more than four years. 

More than a week after Judge Antoon ruled in Malibu’s favor on the issue of infringement, Magistrate Judge David A. Baker issued an Order on the parties’ motions to exclude various design patent experts.  Of particular interest is Pacific Coast’s motion to exclude the testimony of Malibu’s design patent expert, Fred Smith.  Pacific Coast argued, in part, that Mr. Smith applied the wrong legal standard in forming his opinions and that he admittedly did not know the legal standard used by the examiner.  Apparently, “[i]n Mr. Smith’s Rebuttal Report on infringement, he state[d] that “the final step in determining whether a design patent has been infringed is that the accused design must have appropriated the point(s) of novelty of the patented design which distinguishes the patented design over the prior art.  Litton Systems, Inc. v. Whirlpool Corp., 728 F. 2d 1423, 1424 (Fed. Cir. 1984).”  Pacific Coast Marine Windshields Limited v. Malibu Boats, LLC, No. 6:12-cv-00033, at * 19-20 (M.D. Fla. January 4, 2013) (Baker, M.J.) (emphasis added) (“Pacific Coast II”).  “Mr. Smith also testified that he applied the points of novelty test in providing his opinion on infringement of the ‘070 Patent.” Id. at *20. 

As is well known in the field, the so-called point of novelty test was jettisoned in an en banc decision of the Federal Circuit in Egyptian Goddess, Inc. v. Swisa Inc., 543 F.3d 665, 678 (Fed. Cir. 2008):

[W]e 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.

Nevertheless, for whatever reason, Malibu’s expert appears to have relied on the point of novelty test throughout his expert report.

Malibu attempted to discount the impact of Mr. Smith’s reliance on the point of novelty test by arguing that “consideration of a patented design’s novel features still has a proper place in an infringement analysis” and that Mr. Smith “did not actually apply or rely upon the points of novelty test.”  Malibu argues that Mr. Smith made no mention of the ‘points of novelty’ test in his initial expert report, and in his Rebuttal Report he “unambiguously applied the ordinary observer test when addressing infringement.”  However, Judge Baker wasn’t buying:

Malibu argues that, even if Mr. Smith’s conclusion of non-infringement did rely on the points of novelty test, his “subsidiary opinion” that the ordinary observer would not be confused between the accused product and the patented design would still be admissible. … Unfortunately, that is not the law under Egyptian Goddess, which holds that the “ordinary observer” is the sole independent test – not “subsidiary” to some other test – “points of novelty” is no longer (after 2008) the appropriate test, and the two tests cannot be “merged” or assessed side by side as if they are given equal weight. Egyptian Goddess, 543 F.3d at 671 (“merger of the point of novelty test and the ordinary observer test is legal error”); 678 (“the ‘ordinary observer’ test should be the sole test for determining whether a design patent has been infringed”).

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Malibu’s argument that Mr. Smith considered a few “novel features” as just a part of his analysis is not well taken, given the statement in his Rebuttal Report that he applied the “points of novelty” test of Litton Systems and the confirmation of his position at his deposition. Because Mr. Smith’s opinion on infringement and invalidity are based on the “points of novelty” test of Litton Systems, which the Federal Circuit squarely rejected as a separate test in 2008 in Egyptian Goddess, Mr. Smith’s opinions in this respect are not appropriate and must be excluded.

It is worth noting that expert testimony is not nearly as valuable in design patent cases as in a utility patent case.  See, e.g. Hutzler Mfg. Co., Inc. v. Bradshaw Intern., Inc., No. 11-civ-7211, 2012 WL 3031150, *6 (S.D.N.Y. July 25, 2012) (“The case law makes clear that the ‘ordinary observer’ is not an expert in the field.  As the Supreme Court said in Gorham, “[e]xperts . . . are not the persons to be deceived.”) (quoting Gorham Co. v. White, 81 U.S. 511, 528 (1871).  Thus, although not irrelevant, the opinion of a design patent expert is entitled to very little weight.  For example, expert testimony is not necessary to prove infringement nor will a contrary expert opinion create a triable issue of fact in cases of clear infringement.  Thus, litigants should carefully consider whether to use a design patent infringement expert at all.  In the author’s opinion, unless collateral issues, like functionality, are at play, expert witnesses typically are not useful or cost effective. 

However, Pacific Coast II stands as a clear warning.  If you choose to employ a design patent expert, make sure he or she is up to speed on the latest standards for design patent infringement.