A Fresh Perspective on Design Patents
| Jurisdiction | United States,Federal |
| Citation | Vol. 38 No. 7 Pg. 71 |
| Pages | 71 |
| Publication year | 2009 |
2009, July, Pg. 71. A Fresh Perspective on Design Patents
July 2009
Vol. 38, No. 7 [Page 71]
Intellectual Property and Technology articles are sponsored by the CBA Intellectual Property and Technology Law and Policy Sections. They provide information of interest to intellectual property and technology attorneys who advise clients on protecting and exploiting various forms of intellectual property in the marketplace.
Coordinating Editors
Steven J. Merker, Denver, of Dorsey and Whitney LLP--(303) 629-3400, merker.steve@dorsey.com; William F. Vobach, Littleton, of Swanson & Bratschun, L.L.C.--(303) 268-0066, bvobach@sbiplaw.com
About the Authors
Bruce A. Kugler is a shareholder at Sheridan Ross PC--bkugler@sheridanross.com. Craig W. Mueller is an associate at Sheridan Ross PC--cmueller@sheridanross.com. The authors thank Lew Hansen, Robert Brunelli, and James Burke, all of Sheridan Ross PC, for their assistance.
This article provides a synopsis of design patents and their relation with other forms of intellectual property. Proving design patent infringement recently has become less difficult than in the past. Thus, it is likely that inventors and companies will more readily consider design patents to protect their intellectual property.
Recently, in Egyptian Goddess v. Swisa ,(fn1) the U.S. Court of Appeals for the Federal Circuit (CAFC)(fn2) in effect altered the way design patents are to be viewed as a tool to protect unique product designs. Prior to the Egyptian Goddess decision, a plaintiff had the burden of proving that: (1) to an ordinary observer, the product of an accused infringer was substantially similar to the claimed design;(fn3) and (2) the accused product possessed substantially the same points of novelty that distinguished the patented design from the prior art.(fn4)
In Egyptian Goddess , the CAFC stated that the point of novelty test is inconsistent with precedent from various courts,(fn5) in effect overruling those precedents.(fn6) In so doing, the CAFC held that the ordinary observer test is the primary test for determining infringement of a design patent. However, the court stated that the test must be performed from the perspective of an ordinary observer who is familiar with the relevant prior art.(fn7) In view of the Egyptian Goddess opinion, this article provides a new perspective on the applicability and usefulness of design patents to protect intellectual property, and how the burden of proof has shifted to now favor the patent holder.
Design Patents Generally
Design patents protect the ornamental or nonutilitarian features of an invention;(fn8) that is, a design patent protects the appearance of a product, while a utility patent protects the way a product functions, is made, or is used.(fn9) In many circumstances, it is possible and recommended to pursue both design and utility patents to properly protect all novel features of a novel product or device. Furthermore, the savvy practitioner often will use design patents, along with utility patents, trademarks, trade dress, and copyrights, to place a legal barrier or fence around his or her client's intellectual property. Although each of these legal vehicles are designed to protect specific aspects of intellectual property, some overlap often will occur, which can serve only to enhance overall protection of a client's invention.
Design Patent Protection Pre- Egyptian Goddess
Prior to Egyptian Goddess , the patentee had the burden of proving that the allegedly infringing product embodied the essence of the claimed design. As opposed to utility patents, which typically include multiple claims directed to one or more embodiments of an invention, design patents include a single design claim illustrated by a series of drawings that sufficiently define the claimed design.
To prove infringement of a design patent, a patentee first would apply the ordinary observer test to prove that an accused product would confuse an ordinary observer.(fn10) The standard was somewhat analogous to a likelihood of confusion test, a concept primarily related to trademark law.
The ordinary observer test was first articulated by the Supreme Court in Gorham Co. v. White .(fn11) There, the Court held that if a person "giving such attention as a purchaser usually gives" is deceived by one design into thinking it is another, the patented design is infringed by the other. In practice, the allegedly infringing product is placed in front of the trier of fact, along with the figures of the design patent for comparison.
If the patent holder carried the burden of proving that an ordinary observer would mistake the design of the allegedly infringing product for the claimed design, the point of novelty test then was applied. The point of novelty test was first articulated in Sears, Roebuck & Co. v. Talge .(fn12) It states, generally, that no matter how similar an accused design is to the claimed design, the accused device also must incorporate the features that made the patented design novel--that is, patentable.(fn13) This means the patent holder must prove that the allegedly infringing product possessed the various points of novelty embodied in the figures. Accused infringers thus could knock off substantial portions of a claimed design and avoid infringement by omitting subtle features that arguably were the point of novelty. The test was burdensome to the patent holder, because an alleged infringing device could avoid infringement by merely eliminating a point of novelty while still meeting the ordinary observer test by incorporating the general ornamental shape of the claimed design. The CAFC closed this loophole in the Egyptian Goddess case.
The Egyptian Goddess Case
On September 22, 2008, the CAFC released its en banc opinion regarding the point of novelty test in design patent infringement cases.(fn14) The court held that the point of novelty test, as a free-standing test applied in addition to the traditional ordinary observer test, is inconsistent with precedent from various courts.(fn15) The court held that the proper test for infringement of a design patent is solely the ordinary observer test, as performed from the perspective of an individual who is familiar with the prior art.(fn16)
Facts and Background
Egyptian Goddess brought an action for infringement of its design patent, which claimed a rectangular nail buffer with buffing surfaces on three of its four sides. The accused product, made by Swisa, was similar in almost all respects, except that it had buffing surfaces on all four sides.
The U.S. District Court for the Northern District of Texas granted Swisa's motion for summary judgment of noninfringement. The court found that Egyptian Goddess failed to prove: (1) that the accused device was substantially similar to the claimed design under the ordinary observer test; and (2) that the accused device contained "substantially the same points of novelty that distinguished the patented design from the prior art."(fn17) The District Court limited its discussion on the second point to a single prior art reference that was similar to the claimed design, but triangular instead of rectangular in cross-section. In finding that the Egyptian Goddess patent contained only one element not found in the prior art reference (a fourth side without a buffing pad) and that Swisa's accused product did not include this point of novelty (it had a fourth side, but with a buffing pad), the court held that the patent was not infringed.
CAFC Opinion
In its en banc opinion, the CAFC noted that prior CAFC decisions held that the ordinary observer test alone is not enough to establish infringement, but also noted the difficulty of applying the point of novelty test, especially where numerous prior art references are involved.(fn18) After a detailed review of these precedents, including...
To continue reading
Request your trial