Federal Circuit Strengthens Design Patents by Making It Easier to Prove Infringement

Major changes in U.S. design patent law are upon us with the Federal Circuit Court of Appeals en banc decision in Egyptian Goddess, Inc. v. Swisa, Inc. (September 22, 2008). The case stems from claims of infringement by Egyptian Goddess relating to their nail buffing product line.

In the Egyptian Goddess case, the Federal Circuit Court of Appeals upheld the district court’s finding of non-infringement by the defendant (Swisa). Nevertheless, the en banc panel of judges plainly chartered new law by doing away with the “points of novelty” test as one of the steps necessary to prove design patent infringement. The court clearly stated that the only test necessary was the “ordinary observer” test which has existed since the Gorham Co. v. White decision was handed down by the Supreme Court in 1871.

“In Gorham v. White, the Supreme Court articulated the ordinary observer test used for determining infringement of a design patent, which essentially is this: infringement of a design patent occurs when the accused design would deceive an ordinary observer, giving such attention as a purchaser usually gives, into thinking that it was the patented design,” says Boyle Fredrickson Atty. Michael Griggs. “In Egyptian Goddess v. Swisa, the Federal Circuit reiterated that that test has not changed at all over the years and is in fact the only test necessary for proving design patent infringement.”

“No matter whom the ‘ordinary observer’ may be, it is important to make sure that good broad claims are presented when filing a design patent application.”

Michael Griggs
Boyle Fredrickson

Although the Federal Court was clear in its holding that the ordinary observer test is the sole test for proving infringement, the analysis can be complicated by uncertainty surrounding the identification of the “ordinary observer.” Some argue that the ordinary observer is the end user or consumer. Others claim that it’s the supplier or first customer. And some believe that an ordinary observer refers to those having average experience in that particular field, industry or knowledge base.

The Federal Circuit did address the characterization of the “ordinary observer” in Arminak & Associates, Inc. v. Saint-Gobain Calmar, Inc. There, a threejudge panel said that the ordinary observer was, in fact, a buyer having a good deal of expertise in that particular field (purchasing spray bottle actuators) and able to make a reasonably discerning decision. “No matter whom the ‘ordinary observer’ may be, it is important to make sure that good broad claims are presented when filing a design patent application,” says Griggs. “Merely filing detailed drawings of the commercial embodiment is simply not good enough.” When drafting any patent application, whether it be design or utility, great care must be taken to analyze the prior art and then claim the unique features that differentiate the invention from the prior art. Including more features and more lines in your design patent drawings may unnecessarily limit your protection when it comes to applying the “ordinary observer” test in a design patent infringement situation.

For further information on this subject, please
contact your Boyle Fredrickson attorney or
Michael Griggs at 414-225-9755.