In the recent case of Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 678 (Fed. Cir. 2008) (en banc), the U.S. Court of Appeals for the Federal Circuit revised the legal standard for proving infringement in a design patent lawsuit. Prior to this case, a patent holder would have to satisfy both the “ordinary observer” test and the “point of novelty” test to win the suit. The first test, the ordinary observer test, examined whether an ordinary observer, paying as much attention as a customer would, might be confused into believing the allegedly infringing design was substantially the same as the patented design. The second test, the point of novelty test, inquired whether the innovations of the patented design—the “novel” elements of the patented design that distinguished it from prior patents on similar products—were also found in the allegedly infringing design. Failure to satisfy either test would result in a court victory for the alleged infringer.
Egyptian Goddess purported to change the legal standard by dropping the point of novelty test. In actuality, however, the court did not really remove point of novelty, but instead folded it into the ordinary observer test, thereby lessening its outcome-determinative effect. Under the new wording of the ordinary observer test, a court must examine whether an ordinary observer, paying as much attention as a customer familiar with the prior art (the prior, similar patented designs), would reach the conclusion that the patented design and the accused infringing design are substantially the same. By requiring that the hypothetical ordinary observer be knowledgeable about prior patents of the same ilk, the revised ordinary observer test leaves the door open for the same sort of comparison to prior art that was mandated by the old point of novelty test. However, as a recent case from the U.S. District Court for the South District of New York makes clear, the new inquiry does not require comparison to prior art. See Wing Shing Prods. (BVI) Co., Ltd. v. Sunbeam Prods., Inc., 665 F Supp. 2d 357, 361-62 (S.D.N.Y. 2009). The Federal Circuit contemplated that such a comparison would not be necessary in cases where the patented design and accused infringing design are “plainly dissimilar.” Where the two are similar, reference to prior art will be necessary, and a court will likely engage in a similar evaluation to that performed under the old point of novelty test. Of course, the court also recognized that even in a scenario where no reference to prior art is necessary, the eye of an ordinary observer familiar with the prior patents will naturally be drawn to the aspects of a design distinguishing it from prior patents.
Nevertheless, the Federal Circuit’s revision of the patent infringement standard is good news for patent holders. As the court clarified in Crocs, Inc. v. ITC, 598 F.3d 1294 (Fed. Cir. 2010), the new test requires that courts look for “deception that arises [as] a result of the similarities in the overall design, not of similarities in ornamental features in isolation.” In other words, courts should take a broader view and compare the overall design of the patented design and the allegedly infringing design rather than placing too great an emphasis on minutiae. This means accused infringers will have less of an opportunity to prevail in court by focusing the judge’s attention on small details distinguishing the patented design and the allegedly infringing design—a strategy that often proved successful with the point of novelty test.