US Court Dusts Off Old Case Law to Broaden Design Patent Infringement Test

In an en banc rehearing in Egyptian Goddess v Swisa, the US Court of Appeals for the Federal Circuit has broadened the test for infringement of a design patent. Rejecting the relatively recent "point of novelty" test, the Court reviewed a long line of cases that started with a decision of the US Supreme Court in 1871, and affirmed that the appropriate test for infringement is the "ordinary observer" test.

"[I]f, in the eye of an ordinary observer, giving 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 first one patented is infringed by the other."

The rejected "point of novelty" test required that the infringing design contain all the "points of novelty" that the design patent depicted. If one point of novelty was missing in the allegedly infringing design, under the rejected test there would be no infringement. In contrast, under the older, "ordinary observer" test, a finding of infringement would still be possible under those circumstances, so long as the overall impression to an ordinary observer is that the two designs are substantially the same. In many cases, it will be easier for a court to find infringement with this test. Ironically, it was not so in this case, as the Court found that Swisa's nail buffer did not infringe Egyptian Goddess's design patent. For the full reasons for judgment, see: http://caselaw.lp.findlaw.com/data2/circs/fed/061562pv2.pdf Summary by: James Kosa