Patricia Smink Rogowski April 11, 2008 Design Patent Infringement Egyptian Goddess, Inc. v. Swisa, Inc., 498 F.3d 1354 (Fed. Cir. 2007) Patricia Smink Rogowski April 11, 2008

An Ornamental Design for an Article of Manufacture Whoever invents any new, original and ornamental design for an article of manufacture may obtain a patent therefore, subject to the conditions and requirements of this title. 35 U.S.C. §171 A design patentee may recover damages under 35 U.S.C. §284 or under 35 U.S.C. §289.

“Ornamental” Design Surface ornamentation, or Configuration of goods, or both Non-Functional Features of the Design Features not hidden in normal use Gorham Mfg. Co. v. White, 81 U.S. (14 Wall.) 511, 525 (1872)(design patent for pattern on silverware handle)

Surface Ornamentation and Configuration 07/902,055 Application 29/020,787 Continuation In re Daniels, 144 F.3d 1352 (Fed. Cir. 1998)

Surface Ornamentation and Configuration Drawings provide description of invention Drawings of earlier patent disclosed the invention claimed in the later patent Leaf ornamentation did not obscure design of the leecher in the parent application In re Daniels, 144 F.3d 1352, 1456-57 (Fed. Cir. 1998)

“Article of Manufacture” Phantom representation shows type of cutting portion that may be attached to drill shank Broken line disclosure is not claimed as part of design Design may cover part of an article of manufacture In re Zahn, 617 F.2d 261, 267-69 (CCPA 1980) Ser. No. 611,034

Design Patent Infringement Two-Part Test Construe the Design Patent Claim Compare the Construed Claim to the Accused Product “Ordinary Observer” Test; and “Point of Novelty” Test Catalina Lighting, Inc. v. Lamps Plus, Inc., 295 F.3d 1277, 1286 (Fed. Cir. 2002); Contessa Food Prods., Inc. v. Conagra, Inc., 282 F.3d 1370, 1376 (Fed. Cir. 2002)

Design Claim Construction Scope of a claimed design encompasses: “its visual appearance as a whole” “the visual impression it creates” Appearance created by the ornamental, non-functional features Drawings disclose the claimed design Contessa Food Prods., Inc. v. Conagra, Inc., 282 F.3d 1370, 1376 (Fed. Cir. 2002)

“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.” Gorham Mfg. Co. v. White, 81 U.S. (14 Wall) 511, 528 (1871)

“Ordinary Observer” Test Overall appearance of the entire patented design Ordinary Observer is NOT a design expert Substantial similarity does not require Identity of Design Ornamental features are those illustrated in all of the drawings in the design patent (“all elements” rule) Features visible during “normal use” Hidden features are not considered Not limited to appearance at point of sale Contessa Food Prods., Inc. v. Conagra, Inc., 282 F.3d 1370, 1376-81 (Fed. Cir. 2002)

“Ordinary Observer” Test Bottom and Cross-Section Views US D404,612 Top and Side Views US D404,612

“Ordinary Observer” Test Federal Circuit: Although tray bottom was covered at point of sale, its features were visible during “normal use” Features of top, side and underside of accused products must be compared to design as a whole to determine infringement Patented design and accused product must be “substantially the same” to an ordinary observer Contessa Food Prods., Inc. v. Conagra, Inc., 282 F.3d 1370, 1379 and 1381 (Fed. Cir. 2002)

“Point of Novelty” Test Litton Sys., Inc. v. Whirlpool Corp., 728 F.2d 1428 (Fed. Cir. 1984): For a design patent to be infringed, no matter how similar two items look to the ordinary observer, the accused product must appropriate the novelty of the patented design that distinguishes it from the prior art.

“Point of Novelty” Test The purpose of the “points of novelty” approach: focus on those aspects of a design which render the design different from prior art designs. “New” designs frequently involve only relatively small changes in the shape, size, placement or color of elements of old designs. It is those changes in and departures from the old designs that constitute the “points of novelty” in the patented new design. Lawman Armor Corp. v. Winner Int’l, LLC, 437 F.3d 1383, 1385-86 (Fed. Cir. 2006)

“Point of Novelty” Test Point of Novelty Test can be satisfied by: Identifying the Point(s) of Novelty (Patent owner’s burden) Making contentions as to how an accused product appropriates the points of novelty Expert testimony not required Bernhardt, LLC v. Collezione Europa USA, Inc., 386 F.3d 1371, 1384-85 (Fed. Cir. 2004)

“Point of Novelty” Test 2-Color, 3-Stripe Door Frame, No Handle, Latch Release Door Handles, No Stripes, No Latch Litton Sys. Inc. v. Whirlpool Corp., 728 F.2d 1428 (Fed. Cir. 1984)

“Point of Novelty” Test Lawman identified 8 specific points of novelty for its sliding hook portion of steering wheel lock assembly, including: - Open ends of hooks face outward - Shaft includes a pattern of ridges Winner cited auto wheel lock patents that separately depicted each proposed point of novelty Lawman Armor Corp. v. Winner Int’l, LLC, 437 F.3d 1383, 1385-86 (Fed. Cir. 2006) Des. 357,621

“Point of Novelty” Test Summary Judgment of noninfringement affirmed Patents cited by Winner disclosed all 8 points of novelty Lawman identified District Court was not required to specify which patents disclosed which points of novelty Lack of motivation to combine prior art references was not relevant to infringement analysis The combination of 8 known points of novelty is not a 9th point of novelty Lawman Armor Corp. v. Winner Int’l, LLC, 437 F.3d 1383, 1385-86 (Fed. Cir. 2006)

“Point of Novelty” Test Federal Circuit issued supplemental opinion in Lawman Armor. Clarified that “a combination of design elements” can be a “point of novelty” as recognized in prior CAFC decisions such as Litton. However, “the overall appearance of a design” cannot be a point of novelty (i.e., a combination of non-novel elements may not be the point of novelty). Is Judge Newman right – are we in “unpredictable limbo”? Lawman Armor Corp. v. Winner Int’l, 449 F.3d 1190, 1192 (Fed. Cir. 2006)

“Point of Novelty” Test Quasi-invalidity test – a design patent with no points of novelty cannot be infringed Accused infringer picks off points of novelty one-by-one No need to show motivation or basis to combine references – as would be required to prove obviousness No need to meet clear and convincing evidence burden (as would be required for proving invalidity)

“Point of Novelty” Test Des. 349,080 – 6 Figures “Tire Tread” Accused Product Goodyear Tire & Rubber Co. v. Hercules Tire & Rubber Co., 162 F.3d 1113 (Fed. Cir. 1998)

“Point of Novelty” Test Ordinary observer test was not met. Ordinary trucker or fleet operator would notice differences in the designs. Point of novelty test was not met. Accused tire design lacked several of the points of novelty that had been identified by Goodyear. Goodyear Tire & Rubber Co. v. Hercules Tire & Rubber Co., 162 F.3d 1113 (Fed. Cir. 1998)

Egyptian Goddess Des. 467,389 Accused Swisa product

Egyptian Goddess Egyptian Goddess asserted combination of four elements as the point of novelty: An open and hollow body Square cross-section Raised rectangular pads Exposed corners District Court granted summary judgment of no infringement. Egyptian Goddess, Inc. v. Swisa, Inc., 2005 WL 5873510 (N.D. Tex. Dec. 14, 2005)

Egyptian Goddess Des. 467,389 Prior art: Des. 416,648

Egyptian Goddess Nail buffers with square cross-sections known in prior art. “…no reasonable juror could conclude that EGI’s asserted point of novelty constituted a non-trivial advance over the prior art.” If point of novelty included fourth side without a raised pad, that might be non-trivial advance. Swisa product had pads on all four sides. Egyptian Goddess, Inc. v. Swisa, Inc., 498 F.3d 1354, 1358 (Fed. Cir. 2007)

Egyptian Goddess Judge Dyk dissent Majority opinion departs from precedent and fashions new rule “that a combination of elements cannot constitute a point of novelty in design patent cases unless the combination constitutes a ‘non-trivial advance’ over the prior art.” Wrongly requires patentee to prove nonobviousness. Wrongly extends obviousness-like test to each point of novelty, not merely the overall design. Makes a different point of novelty test for designs that involve a combination of design elements.

Egyptian Goddess Petition for Hearing En Banc granted Fed. Cir. Opinion vacated – appeal reinstated Supplemental briefing requested

Egyptian Goddess Questions for en banc consideration: (1) Should the “point of novelty” test be a test for infringement of design patents?

Egyptian Goddess (2) If so, (a) should the court adopt the non-trivial advance test; (b) should the point of novelty test be part of the patentee’s burden on infringement or should it be an available defense; (c ) should a design patentee be permitted to divide closely related or ornamentally integrated features of the patented design to match features contained in accused design; (d) should it be permitted to find more than one “point of novelty”; (e) should the overall appearance of a design be permitted to be a point of novelty?

Egyptian Goddess (3) Should claim construction apply to design patents, and, if so, what role should that construction play in the infringement analysis?

Egyptian Goddess 16 Amicus Briefs submitted: IP Organizations: AIPLA; Fed. Cir. Bar Assn; IP; Houston IP Law Assn; IP Law Assn of Chicago; DC Bar Assn; Federation Internationale des Counseils en Propriete Industrielle (FICPI) Design Group: Industrial Designers Society of America

Egyptian Goddess Design Patent Owners: Apple; Daisy Mfg.; Electrolux; Elite Group; Ford; Monster Cable Prods.; Nike; Sensio

Egyptian Goddess Amicus AIPLA Opposes “non-triviality” requirement Places new infringement burden on design patentee to prove design patent’s point of novelty is “non-trivial advance” Design patent has presumption of validity under 35 U.S.C. §282. Patent Office already examined and concluded design was novel and nonobvious.

Egyptian Goddess Amicus AIPLA: “Requiring the point of novelty to be independently non-obvious creates a whole class of design patents which are valid because the overall design is non-obvious, but cannot be infringed because the point of novelty is not itself also independently non-obvious.” If a design patent’s novelty is too trivial, then the challenger may make an obviousness challenge. The clear and convincing evidence burden applies. The “non-triviality” requirement is a backdoor invalidity attack on design patents.

Egyptian Goddess Amicus NIKE Egyptian Goddess court failed to apply point of novelty test in manner consistent with its intended purpose. The “non-trivial advance” test lacks precedential support. The “non-trivial advance” test will cause inconsistent results on design patent infringement. Should not have different test for designs having combination of design elements as point of novelty. It is almost impossible to determine whether a single particular design feature represents a “trivial” or “substantial” advance over prior art.

Egyptian Goddess Amicus NIKE Court turns point of novelty test into a new obviousness invalidity test, changes burden of proof to preponderance of evidence, and shifts burden to patent owner. Court could find an accused product that is exact duplicate of patented design does not infringe under this test.

International Registration 1999 Geneva Act of Hague Agreement for International Registration of Industrial Designs Administered by WIPO 48 contracting states, but not US at this time 5 year initial term. Renewable for one or two more 5 year terms.

Compare Europe Community Design system (effective in 2002, now part of Hague Convention as of January 2008) Unregistered designs protected for 3 years from first disclosure in EU territory If design registered within one year of first sale or publication, it can receive 5 years of protection, renewable in 5 year increments for total of 25 years No examination; registration within 3-6 months Valid in all European Union countries European customs officials will enforce both registered and unregistered design rights at the borders

Compare Europe Two validity requirements – Novelty; and Individual character “Individual character”: overall impression of design produced on informed user differs from the overall impression produced by any design in the prior art.

Compare Europe Both design owner and accused infringer submit “prior art” designs during enforcement litigation to determine “individual character” and “novelty” “Freedom of the designer” is considered For fields with larger “design freedom,” larger differences will be necessary to avoid infringement. Expert testimony

Compare Japan Japan’s Design Law protects shape, form and external appearance of an object 15 year term from date of registration For infringement – prove identical or similar form, pattern, color or combination in the accused product. Japan restricts scope to “kind of design”, so a design registration on a component likely would not be enforceable against a manufacturer of a part or good that incorporates that component.