An Ugly Stepsister: CAFC Accepts En Banc Design Patent Case

PatentLawPic118Egyptian Goddess v. Swisa, Inc. (Fed. Cir. en Banc 2007)

Design patents typically play the role of the pre-ball Cinderella – hopeful but meaningless and sitting in a pile of ash.  Already devalued, recent appellate decisions have further decimated design patent values.[1]< ?xml:namespace prefix ="" o />

Infringement of a design patent requires satisfaction of both the ordinary observer test[2] and the points of novelty test[3]. In Egyptian Goddess, the patentee argued that the point of novelty of its ornamental fingernail buffer design[4] is the unique combination of four elements found in the design.[5]

In the appeal, the Federal Circuit (Judge Moore) held that a combination of known elements may serve as a point of novelty – but only if the combination represents a “non-trivial advance over the prior art.”[6]  Here, the court found the combination trivial. The Egyptian Goddess panel opinion helps clarify the recent Lawman Armor opinion. In Lawman Armor, the court held (at least) that the “overall appearance” of a design cannot serve as a “point of novelty.”[7] 

Picking up on some incongruence, Judge Dyk dissented from the Egyptian Goddess majority. Judge Dyk argued instead that the “non-trivial advance” requirement is antithetic to the notion of “points of novelty” in the same way that it would be odd to include a nonobviousness element within the requirements for novelty under 35 USC 102.  

En Banc: Now, the Federal Circuit has agreed to re-hear the case en banc.  In all likelihood, the case will be at least vacated with the point of (non-trivial) novelty test being returned to a straight novelty requirement.[8] 

A Nightmare: The law of design patents has become a nightmare of confusion and formality. Judge Moore recently stated in the oral arguments for In re Bilski that design patent law follows the same statutes as utility patents.[9] The truth is, however, that design patent law is almost wholly judge made law that varies dramatically from the Patent Statute and precedent interpreting the statute.  Thorny issues abound: How do design patents fit within the PTO’s concept of useful patentable subject matter under 35 U.S.C. § 101? Why does the patent office refuse to enter any true written claim of a new design beyond a few drawings while a court must put the claimed ‘ornamental design’ into text form during claim construction?

Hopefully, the en banc court will take this opportunity to return some sanity to design patent law – starting with a complete overhaul of the definition of design patent infringement.  Perhaps Egyptian Goddess will be remembered as the fairy godmother of design patents.

[1] See, for example, Egyptian Goddess, Inc. v. Swisa, Inc., 498 F.3d 1354 (Fed. Cir. 2007) (holding that infringement requires proof that one or more particular elements of the patented design exhibits a ‘non-trivial advance over the prior art.’); Arminak & Assocs. v. Saint-Gobain Calmar, Inc., 501 F.3d 1314 (Fed. Cir. 2007) (holding that an “ordinary observer” judging potential confusion is a corporate buyer rather than a retail customer); PHG Techs., LLC v. St. John Cos., 469 F.3d 1361 (Fed. Cir. 2006) (preliminary injunction vacated); Lawman Armor Corp. v. Winner Int’l LLC, 437 F.3d 1383 (Fed. Cir. 2006) clarified in en banc denial at 449 F.3d 1190 (Fed. Cir. 2006) (noting that the “overall appearance” of a design cannot serve as a “point of novelty.”).

[2] Satisfaction of the ordinary observer test requires proof that an “ordinary observer” would think the accused design – examined as a whole – is substantially the same as the patented design.

[3] Satisfaction of the points of novelty test requires proof that the accused device incorporates one or more of the “points of novelty” that distinguish the patented design from the prior art.  The points of novelty test is thus similar to a test of invalidity.

[4] < ?xml:namespace prefix ="" st1 />U.S. Design Patent No. 467,389.

[5] Egyptian Goddess listed the following 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.

[6] Egyptian Goddess, 498 F.3d 1354 (holding that the combination of elements here is trivial).

[7] Lawman Armor Corp., 449 F.3d 1190 (Fed. Cir. 2006).

[8] Normally, a majority of the twelve Federal Circuit judges must agree to hear a case en banc. 

[9] 35 U.S.C. § 171 provides that “provisions of this title relating to patents for inventions shall apply to patents for designs, except as otherwise provided.” 




30 thoughts on “An Ugly Stepsister: CAFC Accepts En Banc Design Patent Case

  1. 30

    I think another issue with design patents is damages – under section 289 the damages are the infringer’s profits – in many situations that award is way too high.

  2. 29

    I am just as curious as you about the answer to your second question. My fear is that the parties’ briefs might glom up the law, biased as they will be towards their respective clients, and I’m hoping the court relies more on amicus briefs for guidance.

    The en banc order link to
    lays out 3 broad questions the Court wants the parties to brief.

    I have thought a lot about question 1), and at this point believe that the point of novelty test may have outlived its usefulness. There is, however, a significant amount of legal research that needs to be done to provide a reasoned answer, and if I am called upon to write an amicus brief, it will be done. Question 2 will, of course, depend on the answer to question 1, but I don’t know anyone who likes the “non-trivial” requirement invented by the Panel in its original decision. The breadth of the sub-parts of question 2 strongly suggests that the Court really wants to wrestle this alligator to the ground. I am firmly on record regarding question 3: see “The Death of Gorham Co. v. White: Killing It Softly with Markman”, 86 Journal of The Patent and Trademark Office Society (JPTOS) 792, October, 2004. See also my amicus brief in the Arminak case on behalf of the IDSA.
    Exciting times!

  3. 27

    Egyptian Goddess v. Swisa 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, have, and are likely to, disparage design patents in their 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.

  4. 26

    Just a Patent Attorney,
    I think you’d forget your head if it wasn’t attached.
    Just admit it and you’ll feel better – – you’re a phony.
    Now go eat your cheese.

  5. 25

    Oops. Sorry, everyone. I forgot the first rule of Usenet: “Don’t feed the trolls.”

  6. 24

    Just a Patent Attorney,

    Ha, ha ha. You crack me up.

    An attorney that doesn’t know “grammer,” can’t think of an original pen name and doesn’t have a clue what pro se or per se means is either a laughing stock or an imposter; which is it? I’ll bet you are part of the rat pack.

  7. 23

    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)?

  8. 22

    “It appears you do not know the meaning of “pre se” either.”

    I know what “per se” means, how to use it properly, and also how to spell it. Looks like I got you beat 3 to 0.

  9. 21

    Just a Patent Attorney,

    “…many others that can be located by an astute researcher.”

    It appears you do not know the meaning of “pre se” either.

  10. 20

    Jaoi requested: “Please list such situations, i.e., where boards are addressing pro se situations per se.”

    Tennessee Formal Ethics Opinion 2007-F-153; Virginia State Bar Informal Ethics Opinion 1792; The Georgetown Journal of Legal Ethics, Summer 2007, by Alicia M. Farley; and many others that can be located by an astute researcher.

  11. 19

    Just a Patent Attorney,

    “Many state ethics boards are currently addressing the situation where a person consults with a lawyer, but is not the lawyer of record with the court.”

    Please list such situations, i.e., where boards are addressing pro se situations per se.

  12. 18

    Just a Patent Attorney,

    “So, with what definition, a person is pro se even if he consults with an attorney.”

    Is that even a sentence?

    “I cannot imagine why a lawyer would advise someone without being of record.”

    I don’t doubt that, but on the other hand, I’d be ashamed to admit it.
    But thank you for your candor nonetheless.

    Do you work for a big business?, or are you gainfully employed [;o}?


    PS: Does your pen name demonstrate the level of your inventiveness?

  13. 17

    According to my legal dictionary, pro se is one who represents oneself without the aid of an attorney.

    Someone who has a lawyer assist him is not, by definition, pro se. The courts typically consider a person pro se if a lawyer is not of record. So, with that definition, a person is pro se even if he consults with an attorney. Many state ethics boards are currently addressing the situation where a person consults with a lawyer, but is not the lawyer of record with the court.

    I cannot imagine why a lawyer would advise someone without being of record. I tell prospects that if they want me to re-write their patent application and file it, I will, but I will not review their draft application and give them comments with the intention that they file the application.

  14. 16

    “Gideon is just another patent lawyer who doesn’t like inventors-they’re a dime a dozen on this site.”

    He also apparently doesn’t know the meaning of “pro se.”

  15. 15

    Gideon is just another patent lawyer who doesn’t like inventors-they’re a dime a dozen on this site.

  16. 14

    Dear Gideon,

    I always thought this:

    If the non-attorney litigant files the brief, motion, whatever, under his name, it was filed pro se.

    If an attorney files for the litigant, it is not pro se.

    A pro se litigant would have to be a jackass to not have sound advice before pursuing a case pro se, sort of like an attorney representing himself.

    Please bear in mind, if it wasn’t for us inventors, there would be no need for patent attorneys, and you might have become a carpenter, which is also a noble profession.

  17. 13

    “A question for you experts from a pro se, if I may:”

    Well, if you’re asking me, an attorney, for legal advice, then you’re not pro se, are you?

    You’re kind of like my wife handing me nails as I build our beautiful deck and then, when the neighbors laud the result, she says, “yeah, we built it ourselves.”

  18. 12

    Steve M.

    You might find a search for design patents with “icon” in their titles to be interesting.

  19. 11

    A question for you experts from a pro se, if I may:

    Can design patents be obtained on websites?

    If so, have they ever been used in infringement suits?

    Thank you in advance.

  20. 10

    Confusion..caused by Moore? You mean to tell me her years of having law students prepare USA today style charts for irrelevant law review articles doesn’t make her an expert in patent law? Shocking! Not to mention, I think she was an actual associate for at least a year! This is really surprising.

  21. 9

    Perhaps it is just me, but I have a difficult time reconciling the language of 101 with 171. Because of this, I do have to wonder how engrafting an obviousness type requirement per 103 comports with 171? Utility patents must, of course, traverse the “new, useful and nobovious” requirements (what I might term NUB). Design patents must, on the other hand, traverse the requirements of “new, original and ornamental” (what I might term NOO). “New” seems pretty straightforward. “Ornamental” likewise seems pretty straightforward (i.e., not utilitarian). It is the term “original” that is perplexing.

    Some members of the CAFC appear to equate NUB with NOO for determining if a patent should issue. I seriously question this approach since it then starts to lead into the area known as point of novelty. Moreover, I do have to wonder why a point of novelty requirement needs to be engrafted into the determination. Just what is it about the “ordinary observer” that makes point of novelty an additional requirement?

    As an aside, I have found design patents quite useful in specific circumstances…but as a general rule it is not an approach that I believe offers significant protection.

  22. 8

    You’re telling me that Judge Moore has issued a decision that narrowed patent rights?


    Who would have thunk it?

  23. 7

    Didn’t you make a comment a while back that in the future, the relative importance of design patents relative to utility patents will increase?

  24. 6

    Design patents aren’t supposed to protect utility – they’re supposed to protect purely ornamental features, which is why it was ridiculous for Judge Moore to impose a non-obviousness requirement for something that’s purely ornamental. The standard here should be closer to the originality standard in copyright law, with a more stringent novelty requirement thrown in (you can’t register a design for something that’s already been published or made publicly available).

    The one aspect of design law that the US has over ROW is that US law recognizes that sometimes there’s interplay between the purely ornamental and the functional, and enables coverage for either aspect from the same application (e.g. file a utility application with drawings showing various embodiments, and if you can’t get that application allowed file a continuation that’s a design application to cover the ornamental aspects shown in those particular drawings). But there should be two different tests for the two different forms of protection. Maybe it’s time to do like ROW and divorce design registrations from utility patents.

  25. 5

    Dennis, how’d you find out about this? It seems strange that the order granting rehearing en banc isn’t on the website. IIRC, the court posted the en banc orders in the last few cases it granted and lately it’s been moving in the direction of posting more stuff on the site.

  26. 4

    I’d like to see “real” claims in design patents (i.e., like what we have in utility patents), not the silliness that we have now. The current situation moves the examination effort to the trial judge. No wonder the situation is a mess.

    But could the PTO promulgate rules sua sponte requiring real claims?

  27. 2

    “Hopefully, the en banc court will take this opportunity to return some sanity to design patent law”

    I can think of one good way.

  28. 1

    Does anyone else find the Nike brief to be disappointing? Their analysis of the panel decision’s new rule left me a bit confused (a copy of a design, as a matter of law, infringes that design, even if the design is non-novel?), and much of the remainder rehashes the dissent. Aren’t courts always going to analyze the asserted design vis-a-vis only the prior art (i.e. “in a vacuum”), if only to determine the novel aspects to be infringed?

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