NO POINT TO THE POINT OF NOVELTY TEST

Egyptian Goddess, Inc., v. Swisa, Inc., [2006-1562] (September 22, 2008) [BRYSON, en banc] The Federal Circuit affirmed a finding of no-infringement.
DISCUSSION: After a detailed examination of design patent jurisprudence, the Federal Circuit held that the “point of novelty” test should no longer be used in the analysis of a claim of design patent infringement. The Federal Circuit further held that the “ordinary observer” test should be the sole test for determining whether a design patent has been infringed. Under the ordinary observer test, infringement will not be found unless the accused article embodies the patented design or any colorable imitation thereof.
The Federal Circuit said that in some instances, the claimed design and the accused design will be sufficiently distinct that it will be clear without more that the patentee has not met its burden of proving the two designs would appear “substantially the same” to the ordinary observer, as required by Gorham. The Federal Circuit acknowledged that in other instances, when the claimed and accused designs are not plainly dissimilar, resolution of the question whether the ordinary observer would consider the two designs to be substantially the same will benefit from a comparison of the claimed and accused designs with the prior art. The Federal Circuit said that where there are many examples of similar prior art designs, differences between the claimed and accused designs that might not be noticeable in the abstract can become significant to the hypothetical ordinary observer who is conversant with the prior art.
The Federal Circuit also addressed claim construction for a design patent, noting that while it has held that trial courts have a duty to conduct claim construction in design patent cases, as in utility patent cases, it has not prescribed any particular form that the claim construction must take. The Federal Circuit said that “[g]iven the recognized difficulties entailed in trying to describe a design in words, the preferable course ordinarily will be for a district court not to attempt to ‘construe’ a design patent claim by providing a detailed verbal description of the claimed design.” However, the Federal Circuit said that a district court’s decision regarding the level of detail to be used in describing the claimed design is a matter within the court’s discretion, and absent a showing of prejudice, the court’s decision to issue a relatively detailed claim construction is not reversible error. The Federal Circuit concluded that “it should be clear that the court is not obligated to issue a detailed verbal description of the design if it does not regard verbal elaboration as necessary or helpful.” The Federal Circuit also warned that the court should recognize the risks entailed in such a description, such as the risk of placing undue emphasis on particular features of the design and the risk that a finder of fact will focus on each individual described feature in the verbal description rather than on the design as a whole. While it may be unwise to attempt a full description of the claimed design, a court may find it helpful to point out, either for a jury or in the case of a bench trial by way of describing the court’s own analysis, various features of the claimed design as they relate to the accused design and the prior art.