Bernhardt v. Collezione Europa (Fed. Cir. 2004) (04-1024).
Bernhardt sued low cost furniture dealer Collezione for infringement of six design patents. The district court, however, held that several of patents were invalid under 102(b) for prior public use. Specifically, the court found that Bernhardt’s disclosure of the designs at a Pre-Market exhibition rendered the patents invalid. In addition, the court found that Collezione’s products did not infringe the patents.
On appeal, the Federal Circuit vacated and remanded:
I. Public use analysis for a design patent requires substantially similar appearance in the eyes of ordinary user as compared to the claimed designs or their points of novelty.
While the court concluded that each of Bernhardt’s furniture pieces … were “similar to” the furniture design “shown in” each of Bernhard’s design patents, the analysis does not discuss or explain whether the furniture designs actually displayed at Pre-Market were substantially similar in appearance in the eyes of an ordinary observer to the claimed designs or appropriated the points of novelty of the patented designs. Only after making these determinations could the district court properly assess whether an invalidating public use within the scope of § 102(b) had occurred.
II. Witness testimony is not required to establish infringement of design patent.
The court apparently did not consider the evidence actually introduced—the design patents, their prosecution histories, and the cited prior art—from which Bernhardt’s proposed points of novelty and contentions regarding how Collezione’s accused designs appropriated Bernhardt’s proposed points of novelty might have been discerned. Because the district court incorrectly required Bernhardt to explain its points of novelty through the testimony of a witness, and concluded, based on the absence of such testimony, that Bernhardt failed to prove that Collezione had appropriated the novel ornamental features of the patents-in-suit, we vacate the district court’s judgement of non-infringement, and remand the infringement issue to the district court for further proceedings consistent with this opinion.