In 2008 the United States Court of Appeals for the Federal Circuit issued its landmark decision in Egyptian Goddess, Inc. v. Swisa
, 543 F.3d 665 (Fed. Cir. 2008) (en banc) in which the court eliminated the point of novelty test for design patent infringement, stating:
[W]e 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.
Egyptian Goddess, 543 F.3d at 672. After Egyptian Goddess the test for determining infringement of design patents has been clear. However, the decision in Egyptian Goddess left open the question of how to determine invalidity of design patents under 35 U.S.C. §§ 102 or 103 since before Egyptian Goddess, the test for invalidity involved both the ordinary observer test and the point of novelty test. The patent bar and design patent holders were facing one standard for infringement and a different standard for validity. This disparity contradicted long standing maxims of patent law, such as "that which infringes, if later, would anticipate if earlier." Door-Master Corp. v. Yorktowne, Inc.
, 256 F. 3d 1308, 1312 (Fed. Cir. 2001) (citing Peters v. Active Mfg. Co.
, 129 U.S. 530, 537 (1889)). This uncertainty was recently resolved in International Seaway Trading Corp. v. Walgreens Corp.
, 589 F. 3d 1233 (Fed. Cir. 2009).
In International Seaway
plaintiff sued for infringement of three design patents covering clogs, U.S. Patent Nos. D529,263, D545,032 and D545,033. Fig. 1 from the '263 Patent is shown below and illustrates a representative sample of the designs.
The district court granted summary judgment for defendants, finding that the three Seaway patents were invalid under 35 U.S.C. § 102 as anticipated by a patent assigned to Crocs, Inc. The district court did not rule on defendants' motion for summary judgment of obviousness. On appeal, Seaway contended that the district court erred by basing its invalidity determination solely on the ordinary observer test and not including the "point of novelty" test. On this question the Federal Circuit affirmed the district court's use of the ordinary observer test alone.
In addressing Seaways contention that the district court should have applied the point of novelty test during its anticipation analysis, the Federal Circuit first noted that:
Our decision Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008) (en banc), changed the test for infringement. In doing so, we held that the 'point of novelty' test should no longer be used in the analysis of a claim of design patent infringement and that the 'ordinary observer' test should be the sole test for determining whether a design patent has been infringed. [ ] The issue remains whether Egyptian Goddess also requires a similar change in the test for invalidity.Seaway
, 589 F.3d 1237 (internal quotations omitted). The Federal Circuit then reaffirmed the maxim that the same test for infringement should apply for validity and confirmed that this rule extends to design patent. Id.
at 1239. Thus, "the ordinary observer test is the sole test for infringent" and "the ordinary observer test must logically be the sole test for anticipation as well." Id.
Eliminating the "point of novelty" test for validity should, in many cases, allow more references to constitute invalidating prior art. This balances the holding in Egyptian Goddess
that, in many cases, makes it easier to prove infringement.
Despite not having the issue of obviousness before it on appeal, the Federal Circuit went on to articulate that the ordinary observer test applies to the determination of obviousness. However, for design patents, the role of one of ordinary skill in the art is limited to "determining whether to combine earlier references to arrive at a single piece of art for comparison with the potential design or to modify a single prior art reference." Id. at 1240. Once a combined prior art design is constructed, "obviousness, like anticipation, requires application of the ordinary observer test, not the view of one skilled in the art." Id.
This new analysis for obviousness appears to conflict with 35 U.S.C. § 103, which states that a patent may not be obtained "if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art
to which said subject matter pertains." Further, the design patent statute, 35 U.S.C. § 171 states that "The provisions of this title relating to patents for inventions shall apply to patents for designs ...." Thus, under the statute, obviousness should be determined by "a person having ordinary skill in the art," not the ordinary observer. It will be interesting to see how the case law develops around this aspect of the Seaway