Design Patents: Novelty Requires “Non-Trivial Advance Over The Prior Art”

PatentLawPic024Egyptian Goddess v. Swisa (Fed. Cir. 2007)

Judge Moore in the Majority: Egyptian Goddess owns a design patent covering an ornamental fingernail buffer design. (U.S. Design Patent No. 467,389). As is standard for design patents, the patent claims “the ornamental design … as shown and described.”

Design patent infringement requires proof of two separate infringement tests:

Satisfaction of the ordinary observer test requires proof that an “ordinary observer” would think the accused design as a whole is substantially the same as the patented design — thus creating some customer confusion.

Satisfaction of the points of novelty test requires proof that the accused device incorporates the “points of novelty” that distinguish the patented design from the prior art.

The real hurdle for most patent owners is the points of novelty test. Here, Egyptian Goddess listed four points of novelty — (1) an open hollow body; (2) square cross-section; (3) raised rectangular pads; and (4) exposed corners. Each of these elements are found in the prior art and thus do not server as individual points of novelty.

The combination of elements may also serve as a point of novelty. However, according to this court, a combination of known elements may only serve as a point of novelty if the combination is a “non-trivial advance over the prior art.”  This is a further clarification of the recent Lawman Armor decision.

Here, the court agreed that the combination of the various elements was trivial – and thus that the combination could not serve as a point of novelty. Consequently, the patent is not infringed.

Interestingly, there is one point of novelty that might not be found in the prior art — a fourth side without raised rectangular pads. However, that point of novelty could not be used in the infringement analysis because all four sides of the accused Swisa product included raised pads. (This example is useful for thinking about the difference between the point of novelty test of infringement and the tests for invalidity based on anticipation and obvousness.)

Judge Dyk dissents: Judge Dyk argues that the concept of a ‘non-trivial advance’ is antithetic to the notion of ‘points of novelty’ — essentially creating a new obviousness test.

 

24 thoughts on “Design Patents: Novelty Requires “Non-Trivial Advance Over The Prior Art”

  1. 23

    >>If trade dress is dead and if recent design patent cases (like this one) hold, what’s left?< < Well, I agree that the Supremes in TrafFix and Wal-Mart put the practical kibosh on trade dress for product design. Copyrights might work in limited situations. And while design patents are effectively the only game in town for protecting industrial designs, I think we do need something better, e.g., http://www.protectdesigns.org

  2. 22

    >>Why bother filing on designs if they are so unlikely to stand up to challenge in court?<< The design patents that don't stand up in court are primarily those that are thoughtlessly drafted and prosecuted. The good ones (careful consideration of prior art & competitor's products, broad claims, judicious use of broken lines, IDS compliance, etc.) don't get challenged, they get respected. There is, unfortunately, no way to measure how many companies don't knock-off a product because it is protected by a valid, well-drafted design patent.

  3. 21

    >>it is ALWAYS possible to design around a valid design patent.<< No more, and no less, than it is always possible to design around a valid utility patent, unless, of course, your goal is to make, use or sell the patented invention.

  4. 20

    Unless your only goal is to copy a patented design, it is ALWAYS possible to design around a valid design patent. And I included the word “valid” because, if the product truly cannot be designed in any other manner than that claimed in the design patent, that design patent is more than likely invalid.

  5. 19

    This extraordinary opinion certainly does highlight certain Design patent complexities, but it goes perilously much deeper than that:

    From the dissenting opinion – – this opinion most certainly should have prevailed:
    “In my view, the majority opinion departs from our precedent in fashioning a 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.”

    The majority opinion is an example of a two-timing Judge team-of-two hijacking precedent.

    (I’m afraid to ask,) how did this overreaching team leader get appointed anyway? The team leader just don’t like patents, not even design patents. Doesn’t the team leader know that making new law is the purview of the legislature?, at least that’s what the Constitution says*, or, at a minimum, overruling their own precedence takes a full panel?

    Didn’t we clarify this type of thing last week in association with the August 20th Patently-O thread, “In re Seagate Technology”? Typically, an en banc panel may over turn precedent, not a three Judge panel, and especially not a two Judge panel when there is a strong, sagacious and sane dissent. Are more (pun intended) than two Judges inviting an en banc review?, or is it only the audacious team of two? I’m afraid to ask, but, does anybody know what’s going on on the east side of the President’s Park?

    *
    “The Congress shall have Power … To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries;”

  6. 18

    “trade dress is now dead” Is it? If trade dress is dead and if recent design patent cases (like this one) hold, what’s left? Why bother filing on designs if they are so unlikely to stand up to challenge in court? Is it ever not possible to design around a design patent?

  7. 17

    “Well so much for cheap: these guys went all they up to the Federal Circuit with this ridiculous box!”

    Of course, I meant cheap to obtain. Nothing is cheap to litigate — although the all-too-often summary judgment of non-infringement sure helps to keep costs down!

  8. 16

    I do both utilities and less frequently design apps. Done properly, design apps require considerable thought and are, in fact, likely to be rejected if illustrated properly (viz. phantom lines for unclaimed structure, etc.).

    It’s a fascinating area and given that trade dress is now dead (thankfully) the only real scheme of protection available for industrial design.

  9. 15

    Patent attorneys who prepare utility applications should focus on their day job, and not attempt skilled patent preparation required by design patent attorneys.

  10. 14

    Perry- Keep these animals in-line. Design patents work great when properly prepared. Maybe an en banc hearing and decision will finally clean up this area of law.

  11. 13

    If your design patent applications have never been rejected, it means that (as with utility patents) your claims are too damn narrow. I have several cases pending before the BPAI, and one going up to the Fed Cir, on ex parte rejections. Sloppy preparation and prosecution = sloppy patent coverage. The main problem with design patents is that most utility patent attorneys do not take them seriously (I know, I used to be there), and do not put any thought into their preparation and prosecution, so they wind up with garbage design patents that they then complain about and make fun of. Garbage in = garbage out. And, the design patents that you read about in court decisions are usually the ones that were sloppily obtained because they give the accused infringer so many things to defend with. The good design patents are not litigated to court decisions because, guess what, they work to stop the knock-offs.

  12. 12

    [“They are relatively cheap and, absent new & non-obvious utility, design protection is all they can hope for.”

    Well so much for cheap: these guys went all they up to the Federal Circuit with this ridiculous box!

    It seems to me that in the case where you can’t get a solid patent, the money would be better spent on advertising and promoting the company’s trademark, good will, etc.]

    About 7 – 8% of my company’s patents are design patents (we are a manufacturer). We would not litigate on any of them, barring some extraordinary circumstances. But a lot of my competitors don’t know that. Design patents are cheap enough to be an I.P. version of mosquito repellent. Infringer repellent.

    And in addition to being cheap, I’ve never heard of one being rejected. Are they even examined?

  13. 11

    >>Since June 1, 2007, 122 patents have been issued to Nike. All but 10 were design patents. Those fools.<< Yes, I quite agree. Why would Nike waste so much money getting those 10 utility patents when its relatively inexpensive 112 design patents will be much more effective in preventing knock-offs?

  14. 10

    “Mooney needs to find another occupation. He seems to loathe patents, patentees, and patent lawyers.”

    I only loathe the bad ones.

    I think I’ve reiterated this obvious position at least a dozen times now but some folks have a real tough time with such subtleties.

    It’s as if I said that Schindler’s List is a bad movie and some guy responds that I’m a movie-hating, anti-popcorn Nazi.

    Whatever.

  15. 9

    Mooney needs to find another occupation. He seems to loathe patents, patentees, and patent lawyers. Except his own wonderful, magnificently inventive biotechies.

  16. 8

    Since June 1, 2007, 122 patents have been issued to Nike. All but 10 were design patents. Those fools.

  17. 7

    Thank you Perry. I was hoping that you would respond here about this rather extraordinary opinion.

  18. 6

    Hear hear:
    “Judge Dyk pretty much nailed it in his dissent.”
    That’s what I thought, but I had little ability to put it so succinctly.
    Thank you Mr. Saidman.
    All the best,

  19. 5

    I will resist the very tempting urge to respond to the previous rants by turning to the merits of this case. The Federal Circuit has in effect converted the point of novelty test into a point of non-obviousness test, greatly elevating the standard required for proving infringement of a design patent. No longer is it sufficient if the accused device contains your point of novelty. Now, in order for a finding of infringement, that point of novelty must be “non-trivial”, akin to non-obvious, over the prior art. And if your point of novelty is deemed “trivial” (i.e., obvious), then you lose. Under the guise of a defense to infringement (the point of novelty test), the infringer has a back-door attack on validity with a lower burden of proof and without any safeguards, e.g., secondary considerations. That is, the point of novelty is supposed to represent the reason the design patent was granted in the first place; courts have deemed it unfair if that point of novelty is not present in the accused device in order to find infringement. Rather than attack the validity of the patent, the infringer can now lie back and say “your point of novelty is trivial”, and avoid infringement even if that point of novelty is found in the accused device (as it was in this case). It harms no one if a point of novelty is indeed trivial, i.e., the scope of the design patent is narrow, because presumably it would be easy to design around a trivial point of novelty. In this case, the defendant didn’t, but escaped infringement anyway. This is the first design patent decision I have seen that uses the words “non-trivial advance” which seems to have been pulled from thin air by the court. I expect that the patentee will be petitioning for rehearing en banc. Between this decision, and the Lawman & PHG decisions earlier this year, the court cannot screw up design patent jurisprudence much more than they have. Judge Dyk pretty much nailed it in his dissent.

  20. 4

    “They are relatively cheap and, absent new & non-obvious utility, design protection is all they can hope for.”

    Well so much for cheap: these guys went all they up to the Federal Circuit with this ridiculous box!

    It seems to me that in the case where you can’t get a solid patent, the money would be better spent on advertising and promoting the company’s trademark, good will, etc.

    If it’s really about shoving “patent pending” in everybody’s face, there are cheap ways of doing that without being “dishonest per se.” And there are surely plenty of agents out there willing to file on anything and everything you put in front of them.

    What I don’t understand is why companies interested in playing the
    “patent pending” game actually pay money to *prosecute* those filings.

  21. 3

    Malcolm,
    Use to be the mere mention of a US Patent meant something.
    My first patent was a Design Patent. Look where it got me.

  22. 2

    MM: They are relatively cheap and, absent new & non-obvious utility, design protection is all they can hope for. It’s not uncommon for some companies to seek design patent protection for simple mechanical inventions in such circumstances.

  23. 1

    I would like to know why companies waste money on garbage design patents like the one above.

    Seriously.

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