Design Patent Law: The New Ordinary Observer Test

Sofpoool LLC v. Intex Recreation Corppic-31.jpg . (Fed. Cir. 2009)(Nonprecedential)

In Egyptian Goddess, an en banc Federal Circuit eliminated the points of novelty test as a separate requisite test of infringement of a design patent. Rather, the court held that design patent infringement should be determined based on the “ordinary observer test” — a test that originated in the 19th century Gorham case.

In Sofpool, a pre-Egyptian Goddess District Court asked a jury to determine infringement based on both the points of novelty test and the ordinary observer test. As expected in essentially all point of novelty cases, the jury returned a verdict of noninfringement.

On appeal, the Federal Circuit vacated. The interesting portion of this opinion stems from the patent holder’s request that the appellate court issue a judgment of infringement. During trial, Intex admitted that its design might infringe under the ordinary observer test. The Federal Circuit disregarded that admission and broke from tradition by noting that Egyptian Goddess created a “new” ordinary observer test. Thus, the prior admission does not satisfy the new test.

Sofpool argues that it “is entitled to an instruction on remand that the ’817 patent is infringed, because both Intex’s expert and its attorney conceded that the accused design satisfied the ordinary observer test.” We disagree. Although Intex acknowledged that its oval pool might infringe the ’817 patent under the ordinary observer test as it existed prior to Egyptian Goddess, Intex has never conceded that its oval pool infringes under this court’s newly articulated ordinary observer standard.

Attorneys will need to work-out how this decision meshes with the statement in Egyptian Goddess that the court was reviving the Gorham test:

From Egyptian Goddess: [I]n accordance with Gorham and subsequent decisions, we hold that the “ordinary observer” test should be the sole test for determining whether a design patent has been infringed.

If anything, Egyptian Goddess changed the Gorham test by stating that similar prior art may be used to “highlight[] the differences between the claimed and accused design.”

11 thoughts on “Design Patent Law: The New Ordinary Observer Test

  1. 11

    Gorham v. White was decided by the United States Supreme Court in 1871. It set forth the ordinary observer test for design patent infringement. Since then, neither the Supreme Court, nor Congress has modified the test. In Sofpool v. Intex, however, the Federal Circuit states that its decision in Egyptian Goddess set forth a “newly articulated ordinary observer standard.” (emphasize “newly”). Query: How far can the Federal Circuit modify Gorham without running afoul of it?

    I don’t have room here to elaborate, but if one is interested, you can check out the follwoing article: Christopher V. Carani, The New “Extra-Ordinary” Observer Test for Design Patent Infringement – On a Crash Course With Gorham v. White, 8 J.Marshall Rev. Intell. Prop. L. 354 (2009).

    A .pdf of the article can be found here: link to

  2. 10

    Well Mr Saidman, the jurisprudence on scope of the right, in European Registered Design law, is all pretty raw, since we’ve had our pan-European Registered Design Right for just a few years only, but it still might be of some use to you. One snag, we in Europe don’t do claims, in our Design Patents.

  3. 9

    >>What comes after, and infringes, would have anticipated, if it had come before<< The International Seaway design patent case from Florida (Jan. 2009) applied this "maxim" (from an 1889 US Supreme Court case) by using the Egyptian Goddess infringement test to hold a patented design invalid for anticipation. It was easy to say that this "maxim" didn't make sense in the pre-Egyptian world, due to the point of novelty test, but it might make sense now since the infringement test is "substantially the same". The question might be how does the court take into account the prior art in deciding anticipation. I think this case may be heading to the Federal Circuit.

  4. 8

    Great question. Looking forward to reading answers. Has always seemed to me that the age-old English principle:

    What comes after, and infringes, would have anticipated, if it had come before

    should work equally well, whether for design patents or utility patents, and in any jurisdiction. Trouble is, it eliminates the DoE, and requires a court to give a claim just one meaning, that applies definitively and equally, to both infringement and validity. For most jurisdictions, that’s too tough.

  5. 7

    So here is a question, what is the standard for anticipation after Egyptian Goddess? According to Bernhardt, L.L.C. v. Collezione Europa USA, Inc., 386 F.3d 1371, 1378 (Fed. Cir. 2004) (and many other cases), the tests for infringement and anticipation are the same. Yet Egyptian Goddess stated that “We emphasize that although the approach we adopt will frequently involve comparisons between the claimed design and the prior art, it is not a test for determining validity, but is designed solely as a test of infringement.”

    So if the point of novelty test alive and well for anticipation analysis?

  6. 6

    Coincidentally, “Egyptian Goddess” is also the street name of the substance that Michael R. Thomas loads into his water pipe (nicknamed “The Fountain of Invention”) during his four day “invention sessions” (the only invention sessions of significance, arguably).

    *disclaimer: This post is for humor purposes only. In actuality, I have no idea what Michael R. Thomas has named his bong.

  7. 5

    choose the word that does not fit:
    Malcolm Mooney

  8. 4

    You know what is an interesting non-patent IP topic? Trademark tarnishment. One of the worst concepts in all IP law is the idea that you have the right to control ideas about your trademark that exist in other people’s minds.

    If you’ve personally been slandered or libeled, sure, go ahead and sue. But if there’s no confusion between what your trademark represents and what I’m doing with it, tough beans. Just because you don’t think it’s funny doesn’t mean that I feel the same way. And that’s really the only difference between parody and tarnishment, isn’t it?

  9. 3

    Design patents? So boring I can barely keep my easooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooooo

  10. 2

    Egyptian Goddess is such a nice name for a precedential decision. I’m mesmerized…

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