The parties are requested to file briefs that should address the following questions:
- Should “point of novelty” be a test for infringement of design patent?
- If so, (a) should the court adopt the non-trivial advance test adopted by the panel majority in this case; (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, in defining a point of novelty, be permitted to divide closely related or, ornamentally integrated features of the patented design to match features contained in an accused design; (d) should it be permissible to find more than one “point of novelty” in a patented design; and (e) should the overall appearance of a design be permitted to be a point of novelty? See Lawman Armor Corp. v. Winner Int’l, LLC, 449 F.3d 1190 (Fed. Cir. 2006).
- Should claim construction apply to design patents, and, if so, what role should that construction play in the infringement analysis? See Elmer v. ICC Fabricating, Inc., 67 F.3d 1571, 1577 (Fed. Cir. 1995).
Appellant (Egyptian Goddess) has its opening brief due around January 24, 2008. Amicus briefs must either be granted “leave of the court” or consent of both parties. Fed. R. App. Proc. R. 29(a).
Perry,
Thanks for speaking your mind on this case. As one who has done only utility patent cases (as far as I can remember), I respect your thoughts, and especially find them illuminating on a subject I know little about (and am willing to admit it). I look forward to seeing the Amicus brief you write (or help write). I can only hope and pray that the en banc Federal Circuit will read it carefully and heed you sage advice, wisdom and legal knowledge in this area that many in the patent bar (and especially the Federal Circuit) know little about.
This will be the most significant design patent decision in the modern era, since the questions posed by the Court go to the core of design patent jurisprudence. The en banc Order is clearly a call for help by the Court to resolve central issues in this most perplexing area of the law (and I say this knowing that my utility patent brethren, in their understandable ignorance, are likely to disparage design patents in subsequent posts; as usual, they know not what they do, nor what they speak of). The fear and reality is that the Court is populated with jurists who day in and out decide mostly utility patent cases. The good news is that our sqeaky wheel is getting the grease; the Court apparently wants to resolve, once and for all, the issues that we have been bombarding them with, via Amicus briefs, over the past 2 years (Lawman, PHG, Egyptian Goddess, Arminak). For the Court to question the very existence of the point of novelty test is startling, since it has been part of the case law for almost 100 years. Particularly interesting is that the Court posits question 3, since neither party challenged the district court’s claim construction. However, this issue has been raised in numerous other amicus briefs and articles, and one can only suppose that the Court is giving the design patent bar (such that it is) this one en banc shot at correcting all the design patent ills that we have been ranting and raving about these past several years. The challenges, and opportunities, are enormous. I plan to write, or at least participate in writing, an amicus brief.
Dennis, will you post links of the parties’ briefs before the original Fed Cir panel and before the en banc panel? If not, does anyone know where these are accessible (not available through PACER or LEXIS)?
Thanks.
Dennis,
It would be nice to get Perry Saidman’s views on the questions before the en banc court in Egyptian Goddess. What Perry says about design protection is always sage advice
I file a design patent once in a while, and before I do so I always tell my client that the protection a design patent will afford is “extremely limited.” I feel it is unethical not to make this clear to the client.
Unfortunately, it seems like eventually I will have to make the same disclosure before filing a utility patent as well.
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