Egyptian Goddess v. Swisa (en banc 2008)

Egyptian Goddess v. Swisa (en banc 2008)

More than a handful of studies and articles have discussed how the rise in patent law power parallels the founding and evolution of the Court of Appeals for the Federal Circuit (CAFC).  Those articles gloss over the CAFC’s negative impact on design patent law. Today, design patent law is in the weakest and most confused state since before the Supreme Court’s landmark 1871 decision of Gorham v. White. (Although, the law is admittedly more uniform now than it was pre-CAFC).

Through its en banc rehearing of Egyptian Goddess, the CAFC now has the opportunity to change course and breathe new life into this languishing area of intellectual property.

In Gorham, the Supreme Court created the test governing design patent infringement. The so-called ordinary observer test considers whether an ordinary purchaser of the claimed product, “giving such attention as a purchaser usually gives” would consider that “two designs are substantially the same.”  Later, cases recognized a problem with this simple formulation — finding that the ordinary observer test could potentially capture prior-art designs as infringing.  In response, the CAFC added an additional “points of novelty” test that requires a showing that accused devices appropriate the specific novel features of a patented design.

To many, this points-of-novelty requirement and the apparent rule requiring transform the design-patent picture claims into paragraph form as unduly limiting the potential scope of a design patent. The requirements are also seen by some as unnecessary because of the parallel validity requirements of novelty and nonobviousness. Two additional points-of-novelty test issues that raise ire are whether the design as a whole can be a point of novelty and whether the points of novelty can include “trivial” points.

The en banc appeal will focus on three separate questions:

  1. Should “point of novelty” be a test for infringement of a design patent? 
  2. 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 (Fed. Cir. 2006).
  3. Should claim construction apply to design patents, and, if so, what role should that construction play in the infringement analysis? See Elmer v. ICC (Fed. Cir. 1995).

Now, the plaintiff, Egyptian Goddess along with its amici have filed opening briefs in the case. (Attached below). Swisa’s opposition will arrive in a few weeks.   

Points of Novelty: Several of the briefs dismiss the points-of-novelty test as unnecessary in light of the validity requirements of novelty and nonobviousness.  That suggestion is ultimately unworkable because of a disconnect between a strict ordinary observer test of infringement and the obviousness test of invalidity. This disconnect would potentially allow a finding that a prior art design infringes a valid design patent. (Obviousness is in the eye of PHOSITA at the time of the invention while ordinary observer infringement is in the eye of an ordinary purchaser at the time of purchase).  The points-of-novelty approach is, however, seriously flawed — it is an odd process akin to separating a painting into various individual components and then making a list of those components that have never been used before. In most cases, the final list has little relation to the patented design. (This process is further facilitated by an overzealous Markman process).

The better approach is suggested in the AIPLA and Apple briefs. The ordinary observer test should necessarily include some consideration of the prior art, but that consideration should be at the level of the ordinary observer in a three-way visual comparison test.  Thus, in the Braun case (below), the accused design would be found to infringe if the ordinary observer finds it substantially the same as the patented design and more similar to the patented design than to the prior art.


Academics are Out: It is notable that for this important case, only one academic (Professor Fryer of Baltimore) filed an amicus brief. Perry Saidman’s brief for Apple was the only brief citing a law review article, and it cited one by Perry Saidman.  Saidman also cited a Patently-O comment made by Chris Carini (author of the AIPLA brief).

30 thoughts on “Egyptian Goddess v. Swisa (en banc 2008)

  1. 30

    Link from this thread, Feb. 18, 08
    “A device that copies the utilitarian or functional features of a patented design is not an infringement unless the ornamental aspects are also copied”. A very smart judge came to this conclusion…also, the scope of a design patent is just what I thought…ELUSUVE, not my word.. this court case…Lee v. Dayton Hudson. Just as I thought- a very gray area… but I do love that quote…very uplifting.

  2. 29

    For clarification. I used the word ‘function’… could have used ‘mechanical ability’ also. Of course, I didn’t claim a function, that’s improper. I claimed a method of using as independent claim no. 3 after apparatus claim recitation independent’s 1 and 2… which BTW are totally different from the design patent( if it was claimed.) I believe I did it correctly… obviousness, of course is a different animal altogether… a crapshoot, is all. My method claim will surely help. It is totally novel… well, so are the apparatus claims, for that matter. Trying to project reasoning for this or that is not easy. I only meant a design patent as inferior for functionality protection- hopefully it has zero protection.

  3. 28

    “And properly drafted design patents are very effective in preventing that.”

    emphasis on the “s” in the word “patents” — typically a product can be carved up into discrete patentable design elements that provide much broader and better patent protection than a single patent that shows every element and is likely not be infringed by a skillful knock-off artist

  4. 27

    “I claim the functionality of a mechanical manufactured device … the thing looks like my invention at first glance. Upon closer inspection, many differences and improvements …”

    Joe, you might want to get some professional assistance if this invention is important to you. First, your suggestion that you’re claiming “functionality” makes me a little nervous. Ignoring “means-plus” claims for the moment, you should be claiming either structure (for machines, manufactures, and compositions of matter) or process steps, or both (in separate claims, of course). NOT functionality.

    If you claim a structure, it is possible that a design patent could anticipate your claim. However if your statement “upon closer inspection, many differences and improvements” is correct (and those differences are in your claims), then there shouldn’t be any problem with anticipation.

    If you claim a method, I can’t conceive of a situation where a design patent would anticipate your claim.

    In either case, a design patent could possibly be used in combination with somethign else to render your claims obvious.

    “if what Mr. Saidman said is true, that one could claim the functionality of a mechanical device with a cheap-ass design patent …”

    What Mr. Saidman says is certainly true. But he didn’t say that you can “claim the functionality” of a mechanical device with a design patent. You “claim” the appearance, which might, in some very limited circumstances, prevent others from making a device having the same functionality. But those circumstances are very limited. The “lowly” design patent (which isn’t “lowly” at all) is great for some things, but makes an extremely poor substitute for a utility patent.

  5. 26

    Mr. Bloom hits it dead nuts center. I claim the functionality of a mechanical manufactured device (I’ve had 10 working models made by a machine shop- given them to certain mechanics I trust for an evaluation. Everyone is impressed) and I could care less about the picture in the design patent aforementioned… bad design,highly unlikely to function correctly but here’s the kicker…the thing looks like my invention at first glance. Upon closer inspection, many differences and improvements, not to mention a two piece embodiment claimed by myself are apparent hopefully to someone skilled in the art. I read on this blog a while back whereas someone stated that a design patent cannot claim exclusionary function unto a design patent. I wonder if that is true and if that fact is written as a statute in the MPEP or wherever. One thing I must state however, if what Mr. Saidman said is true, that one could claim the functionality of a mechanical device with a cheap-ass design patent, then it doesn’t take a rocket scientist to ascertain that the lowly design patent is the way to go for quick(less pendency time) and inexpensive patent protection ( free functionality… don’t even have to claim it… best kept secret of the whole U.S.patent system. You don’t have to be a rocket scientist, thinking from that perspective, that exclusionality in this method has got to be an absurdity.

  6. 25

    “‘design patents are usually easy to design around’ – This is a common misleading shibboleth. It’s true, but who wants to ‘design around’ a patented design?”

    Perry, I think my comment was appropriate (“easy to design around”) in its context, where we were discussing whether a design patent would protect the functional aspects inherent in the design. In that context, the answer to your question (“Who wants to design around?”) is: Someone who wants the functionality inherent in the design but who doesn’t care about the design. Thus, if the first public disclosure of a fork was in a design patent, I might very well be interested in making a fork that looked enough different to avoid design patent infringement.

  7. 24

    I’ll touch it. If the prior design patent discloses a product that your utility patent claim reads on, it anticipates that claim. The design patented product can also be used in combination with other prior art to render your claim obvious. The product claimed in the design patent has structure that is plain for all to see . It can also have a function that is inherent in the disclosed structure. It is what it is, and for many products one doesn’t need a rocket scientist to interpret it.

  8. 23

    No one will touch the question of whether a second inventor can claim the function of their invention and be successful after a design patent on a similiar in shape device has been granted previously. No claims to infringe or even read upon, one drawing with different elevations as the claim vs a well laid out utility patent application claiming two embodiments plus a method claim. You have a drawing to look at and think… well, what does it do except look differently(unfortunately, at first glance, somewhat like my invention. the only patent in the whole USPTO database that has a resemblance and its a low protection design patent). I know it can and will be cited as prior art but I can’t fathom how it could be deemed as anticipitory, the fact that it contains no text… its a picture. This must be a gray area.

  9. 22

    “design patents are usually easy to design around”

    This is a common misleading shibboleth. It’s true, but who wants to “design around” a patented design? Nobody. If properly drafted, a design patent protects the appearance of a product or a significant (dare I say novel?) visual feature thereof. If you want to design a product or portion thereof having another appearance, go right ahead – and congratulations, you’ve ‘designed-around’ the design patent. Knock-off artists, the primary target of most companies who obtain design patents, don’t want to ‘design around’ a patented design, they want to copy it as closely as they possibly can. And properly drafted design patents are very effective in preventing that.

  10. 21

    “are we effectively promoting them by trying to shoe-horn them into the utility patent model?”


  11. 20

    “according to you, you get the function of the device without even claiming the function ( or possibly not realizing its there).”

    Yes… Although “getting” the function simply means that you can prevent others from making objects that infringe the design patent, and, as has been discussed at length on this forum, infringement of a design patent is a different ballgame than utility patent infringement.

    So, if you come up with an ornamental design for a shovel, where the points of novelty happen to embody a shape that’s particularly effective for cutting the heads off moles, then yes, you get to prevent people from making shovels that look like yours. Is that “getting” the function?

    That said, design patents are usually easy to design around.

  12. 19

    MPEP 2125: drawings and pictures can be anticipatory prior art if they show the claimed structure.

    Design patents do not claim functional features, they claim the ornamental features. I think, though I have never tried, that a design application could claim priority from a utility application and vice versa. Though nowadays, you probably wouldn’t want to claim priority for your utility from a design b/c you’d be limited to the one disclosed embodiment.

  13. 18

    The fact that the later filed utility patent application has apparatus and function claims that cannot read on the preissued design patent ( has no written claims- 1 ornamental drawing as claimed, similiar in overall shape only and having substantial differences once closely observed) would seem to indicate novelty to me. If what you say is true, maybe the best kept secret of the total U.S patent system is to seek a design patent on a manufactured article which has a lower pendancy wait, much cheaper and less paperwork… and according to you, you get the function of the device without even claiming the function ( or possibly not realizing its there). I’m not buying it. It makes no sense thinking from that perspective. Obvious… possibly…anticipitory, I don’t see how. Different animals.

  14. 17

    “… can a design patent be anticipitory in nature and be cited by such by an examiner unto a utility patent application of a similiar shaped apparatus?”


    “It would seem as though the second inventor should have the right to patent the functionality of their invention since the design patent inventor didn’t realize the function or opted for a design patent for the simplicity of them being granted.”

    You can patent a new use for an old device, provided it’s not obvious. Of course, you can’t patent a previously unknown advantage of an old device, where the use is not new (or is obvious).

  15. 16

    If an inventor was granted a design patent on an implement or tool because of its shape and didn’t realize because of the shape it changes the dynamics of its use. could another inventor acquire a utility patent on a similiar shaped implement or tool claiming the functionality of that invention? Or to put it another way, can a design patent be anticipitory in nature and be cited by such by an examiner unto a utility patent application of a similiar shaped apparatus? It would seem as though the second inventor should have the right to patent the functionality of their invention since the design patent inventor didn’t realize the function or opted for a design patent for the simplicity of them being granted. And does the design patent holder have protection only for the drawings contained in the design patent?

  16. 15

    Mr. Carani,

    Merely FYI, I had read the amicus brief you authored for the AIPLA prior to my above post. While the illustrated examples do aid in understanding the conundrum faced by those tasked with ascertaining if a design patent has been infringed, it seems to me that they still beg questions such as “What must one do during prosecution to convincingly assert that a claimed design sufficiently distinguishes over the prior art such that the award of a design patent is appropriate?”, “May multiple design elements be considered in the context of a design sufficient that a divisonal requirement is entirely appropriate?”, etc.

    One difficulty that is immediately apparent is that there seems to be an underlying premise that utility and design application are and should be subject to the same rules in as used in utility applications. Is this even a realistic and meaningful approach, or should another approach be employed given the nature of what it is that a design patent is intended to protect in the first place?

    I ask these, without reference to a host of other questions omitted for the sake of brevity, simply to explore the issue of whether or not a design “patent” and utility “patent” are sufficiently related that somewhat similar rules should even apply during the course of prosecution? Utility patents, of course, must distinguish over the prior art, and subsequent infringement is measured as between the accused “device” and the patented “device”. The test proferred that design patent infringement should be ascertained in part by reference to the prior art obviously differs from utility patent infringement analysis, a test that significantly departs from utility patent norms.

    In the final analysis, I am left wondering if perhaps Title 35 should be amended to “de-link” design patents from utility patents, or if perhaps a separate statute altogether independent of all the requirements associated with utility patents would more effectively promote the interests of those engaged in the field/art of industrial design? I well recognize the critical importance of industrial designs and their relationship to the sale of goods bearing such designs. My questions are really nothing more than are we effectively promoting them by trying to shoe-horn them into the utility patent model?

  17. 14


    I’m definitely not an expert on design patents (in fact, far from it). But the AIPLA Amicus Brief is a masterful exposition of the issues and problems with the “point of novelty” test, including addressing what the en banc panel needs to grapple with if it does affirm this test, including, for example, the problematical “advance in the art” aspect and who has the burden in proving this aspect. The additional questions posed by the Brief, if the en banc panel grapples with them (they ought to), suggest yet even more clearly why the “point of novelty” test is unworkable and that the Gorham “substantial similarity” test is all that’s needed (or should be needed) in assessing the infringement of design patents. A very nice Brief, and which clearly states the issues so that this en banc panel can hopefully understand what’s wrong with the “point of novelty” test, including potentially eviscerating the invention “as a whole” concept of 35 USC 103 which also applies to patented designs. Good work.

  18. 13

    To anon: Design patents were added to the patent regime in the mid-19th century. Patent Act of 1842, 5 Stat. and 12 Statute of 186. 35 USCA 171 is the current statute governing design patents.
    Trademarks are source identifiers,and generally are marks or symbols; this is not the function of design patents. Copyright protection is very limited because of its idea/expression dichotomy, among other things: see Brandir International v. Cascade Pacific Lumber, 834 F.2d 1142, which discusses both (c) and TM for an innovative, award-winning, sculptural bicycle rack, which could not be protected w/ (c).

  19. 12

    Mr. Carani,

    Your comments underscore what I have always understood to be the applicable test for determining whether or not infringement of a design patent exists, i.e., that of the “ordinary observer”. What I have always had difficulty understanding is how the “point of novelty” test even came into being and why it was deemed necessary. As noted is the original post leading to this thread, apparently a “glitch” in the “ordinary observer” test necessitated the “point of novelty” test. Perhaps I am missing something, but logic suggests to me that if a design patent is capable of capturing prior art, then would this not suggest that the patent was issued in error and should be deemed invalid? Might you be able to elaborate?

  20. 11

    While I concur with RAM’s historical analysis, I disagree with the notion that Whitman Saddle provides the concept of a point of novelty test, and especially not the concept of a point of novelty test as articulated by the CAFC today. Significantly, the Whitman Saddle Court confirmed that the Court’s Gorham test (laid down two decades earlier) was the test for design patent infringement. The issue before the Whitman Saddle Court was how to resolve situations where the Gorham “substantial similarity” test, with its built in “equivalence”, encompassed an accused design that was merely practicing the prior art. To prevent an unfair finding of infringement under such circumstances, the Whitman Saddle Court applied the well-established principle that one cannot encompass by way of equivalents what one could not have patented. In other words, inasmuch as one could not have patented a prior art design, infringement should not lie where an accused design is merely practicing such prior art design. Whitman Saddle does not call for a separate and distinct point of novelty test. In my opinion, it is not mere oversight that for over 100 years the Supreme Court Whitman Saddle opinion has not been interpreted by the judiciary as representing a seperate and distinct point of novelty test.

    -Chris Carani

  21. 10

    Off topic, but not having any exposure to design patents I have never understood why they are worthy of patent protection in the first place. If they are merely ornamental designs why not use copyright or trademark protection? And if they are ornamental how are they “useful” under 101?

  22. 9

    RAM — Good comment. I agree that the CAFC did not create its point-of-novelty test out of whole cloth. The underlying concern associated with the test does go back more than a century as you suggest. However, the Whitman Saddle conception is not the CAFC’s point-of-novelty test. Instead, that test discussed a feature that “rendered [the design] patentable.”

    I believe that SWISA and its amici will discuss the Whitman Saddle case and will provide a good founding for debate.


  23. 8

    RAM — Good comment. I agree that the CAFC did not create its point-of-novelty test out of whole cloth. The underlying concern associated with the test does go back more than a century as you suggest. However, the Whitman Saddle conception is not the CAFC’s point-of-novelty test. Instead, that test discussed a feature that “rendered [the design] patentable.”

    I believe that SWISA and its amici will discuss the Whitman Saddle case and will provide a good founding for debate.


  24. 7

    Hi Dennis:

    Historically, the CAFC was not the court to come up with the concept of the “point of novelty.” That was effectively done by the Supreme Court in Smith v. Whitman Saddle Co., 148 U.S. 674, 682, 13 S. Ct. 768, 771 (1893).

    The following quote from that case, shows the SCT ruling that the accused design had to have the features of the claimed design that were not in the prior art and were material to getting the claim allowed: “The shape of the front being old, the sharp drop of the pommel at the rear seems to constitute what was new and to be material [to the patented design]. Now, the saddles of the defendants, while they have the slight curved drop at the rear of the pommel, similar to the Granger [prior art] saddle, do not have the accentuated drop of the patent . . . If, therefore, this drop were material to the design, and rendered it patentable as a complete and integral whole, there was no infringement. As before said, the design of the patent had two features of difference as compared with the Granger saddle, one the cantle, the other the drop; and unless there was infringement as to the latter there was none at all, since the saddle design of the patent does not otherwise differ from the old saddle with the old cantle added . . .” Id.

    The Smith court, did not identify its test as a “point of novelty” test, but the court held that if the features of the ornamental design that were different from the prior art and material to patentability were not in the accused design, there was no infringement.

    The Smith case got virtually overlooked by modern courts. When the CAFC announced its forumulation of the point of novelty test in Litton Sys., Inc. v. Whirlpool Corp., 728 F.2d 1423, 1444 (Fed. Cir. 1984), it relied on a 1944 case from the 8th Circuit. Thereafter, whenever the CAFC referenced the “point of novelty” test it cited Litton. I believe it was not until late last year that the CAFC finally cited Smith in an opinion addessing design patent issues.

    It seems therefore, that the CAFC does not have a blank slate to write on, but must give due consideration and deference to Smith and probably will have to use that case as a baseline for how to account for the novel features of a claimed design when assessing design patent infringement. Whether this is done through “claim construction” or some other procedural mechanism such as a separate infringement test is probably open to debate.

  25. 6

    “Some of the others are ok, but I was expecting more from the amici.”

    I thought Nike’s brief was fairly confusing and at times milquetoast. These might be symptoms of a “sexy issue pile-on.”

  26. 5

    what’s up with that IPO brief?!

    the citechecking is pitiful and it doesn’t even have a certificate of interest (FC Rule 47.4).

    Some of the others are ok, but I was expecting more from the amici.

  27. 4

    The replacement parts’ shapes have functionality (that is, other shaped parts wouldn’t fit) then maybe I would be sympathetic. However, most of the time, the shape is optional and the replacement parts could be made, but they’d just look ugly and out of place. That’s precisely the subject matter design patents were meant to cover.

  28. 3

    The most important design patenting issue from an economic impact viewpoint relates to design patents on replacement parts. In particular, whether or not automobile manufacturers can use design patent protection to become the only valid source [and thus charge higher prices] for tens of millions of replacement fenders, bumpers, tail lights, etc. Even internal [not visable to end-purchasors] machine parts (that no one would consider attractive) have been design-patented in the U.S. and Europe.
    Another important design patent issue, in the U.S., is the widespread use for many years of design patents by “invention promotion companies” to cheat thousands of individuals out of tens of millions of dollars of their life savings, misleading them into thinking they are getting real, rather than mere ornamental, patent protection.

  29. 2

    Well now here’s a funny thing. Americans make no attempt to protect their designs by registrations outside USA, because they perceive such registrations to lack any potency. Quite the opposite with utility patents, where they keep the great polyglot European translation industry running, while the likes of Toyota Motor do German and nothing else. Design rights are (it seems) more potent in Europe and Asia than in USA, with a scope of protection commensurate with the size of the step forward achieved by the protected design. So maybe the CAFC banc is intending to achieve also for USA a commensurate scope of protection, and make US design patents again the “most powerful” in the world, like US utility patents are? Is there no limit to the capabilities the CAFC and SCOTUS have, to implement such reforms as Congress should be doing?

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