Professor of Law, William S. Boyd School of Law, University of Nevada Las Vegas
In Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008), the Federal Circuit made a significant change in the analysis of design patent infringement claims by jettisoning the point-of-novelty test as a separate test of infringement. In a unanimous decision, the court decided that the point-of-novelty test was inconsistent with the ordinary observer test and unnecessary to protect against overbroad infringement claims. In this Commentary, Professor Mary LaFrance examines the point-of-novelty test under prior law and analyzes the decision in Egyptian Goddess. She writes:
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.
In subsequent infringement cases, the Federal Circuit held that the patentee was required to show both (1) substantial similarity and (2) appropriation of the point of novelty of the patented design. Since the 1990s, the Federal Circuit has continued to treat these two tests as both conjunctive and distinct, even holding that it is legal error for a court to merge the two tests into one.
II. Reconsidering the Point-of-Novelty Test
In its en banc rehearing of Egyptian Goddess, however, the Federal Circuit reconsidered the point-of-novelty test. The court observed that, over time, a number of problems have surfaced in its application. The test has been easy to apply in cases where the claimed design (1) is based on a single prior art reference, and (2) departs from that reference in a single respect -- that is, where the claimed design has only a single point of novelty. However, the test has been problematic when the claimed design (1) combines features of several prior art references, and/or (2) has several features that can be considered points of novelty. The specific problem areas which the court identified include:
(1) Uncertainty as to whether a Combination of Old Features can be a Point of Novelty: In a 2006 case, the judges of the Federal Circuit disagreed on the question whether a claimed designs point of novelty may consist of a novel combination of non-novel features in other words, whether the point of novelty can be the overall appearance of the design. In refusing to grant a rehearing in Lawman Armor Corp. v. Winner Int'l, LLC, 449 F.3d 1190, 1192 (Fed. Cir. 2006), the panel majority had held that the overall appearance of a design . . . cannot be its point of novelty, but also stated:
In our decision, we did not intend to cast any doubt upon our prior decisions indicating that in appropriate circumstances a combination of design elements itself may constitute a "point of novelty." Such a combination is a different concept than the overall appearance of a design which, as indicated, our cases have recognized cannot be a point of novelty.
(citations omitted)