Design Patents: Symmetry Requires Elimination of Points-of-Novelty Test for Anticipation

International Seaway Trading Corp v. Walgreens Corp (Fed. Cir. 2009)

The laws of anticipation and infringement are often considered as a symmetric pair. In its classic statement on point, the Supreme Court proclaimed “[t]hat which infringes, if later, would anticipate, if earlier.” Peters v. Active Mfg. Co., 129 U.S. 530, 537 (1889)

Design Patent Infringement: In the 2008 en banc Egyptian Goddess decision, the Federal Circuit eliminated the ‘points-of-novelty’ test from the infringement analysis. Infringement of a design patent is now proven by showing that an “an ordinary observer, giving such attention as a purchaser usually gives” would find the accused design “substantially the same” as the patented design. Egyptian Goddess, 543 F.3d 665, 670 (Fed. Cir. 2008)(en banc). Egyptian Goddess has been seen as boon for design patent because infringement is now easier to prove.

Design Patent Anticipation: If the Egyptian Goddess decision made it easier to prove infringement of a design patent, the rubric of symmetry indicates that the law of anticipation should also change to make it easier to invalidate a design patent. In particular, in this case Walgreens successfully argued that the points-of-novelty test for novelty should be eliminated.

Prior to the present decision, a design patent would be considered invalid as anticipated if it failed both the points-of-novelty and the ordinary observer tests of novelty. Under the points-of-novelty test, the declared “points-of-novelty” of a patented design are compared with the closest prior art reference to determine whether those same design elements are found in the prior art. Under the ordinary observer test the patented design was compared with the alleged anticipatory reference to determine whether an ordinary observer would find the two “substantially the same.”

Based on the en banc elimination of the points-of-novelty test for infringement analyses, the Federal Circuit here also eliminated the points-of-novelty test from the anticipation analysis.

Writing in Dissent, Judge Clevenger agreed with the elimination of the points-of-novelty test, but disagreed with details of the majority opinion. Namely, Judge Clevenger warned against conducting the ordinary observer test by “dissection of a design as a whole into its component pieces.”

As recognized by the majority, the ordinary observer test requires assessment of the designs as a whole. . . . I agree that the differences in the inner sole designs are to be assessed as part of the anticipation inquiry. But the differences in the inner sole designs must be appreciated in conjunction with all of the design differences. This is so especially with regard to the differing number and arrangement of the circular openings on the upper of the clogs. . . . The effect of the summation of all the design differences is what counts, not the comparison of differences one by one, isolated from each other. Such an approach invites the problems we sought to eliminate by rejecting the “point of novelty” test. . . . Partial judgments of anticipation on segments of a design prohibit assessment of designs as a whole, in violation of long-standing law, starting with Gorham.


17 thoughts on “Design Patents: Symmetry Requires Elimination of Points-of-Novelty Test for Anticipation

  1. 17


    Although I neither seek nor desire status as a “guru” of any kind, I do stand behind what I said before about the functionality issue, which is critically important, but which few have written about.

    It so happens that I am currently representing a client with these very issues, and am drafting a paper on its behalf. Client confidentiality concerns prevent me from presenting a more thorough explanation of my position in this forum, at the moment.

  2. 16


    I now interpret Perry’s silence as an acknowledgement of his defeat.

    I’m disappointed, I thought some good could come of the discussion. I had hoped to draw him out of hiding on the issue, but for some reason he hasn’t risen to the bait.

    Obviously he believes this forum to be worthwhile, given his frequency of contribution.

    I’ve never known an attorney who ceased discussion when he believed himself to be correct, no matter the importance of the issue.

    The only solution is that he no longer believes himself to have been correct. So much for his design patent guru status (one last attempt).

  3. 14

    Not necessarily. If the components appeared in two figures, one would still be required to consider the design as a whole. Of course, your point is well taken that if the combined design components all appear in one figure, then the relative visual impact of them, together and individually, can be more easily assessed.

  4. 13


    As a practical matter, admittedly you have to consider the individual components in the design. But in finally resolving the validity of the design patent, isn’t it highly relevant that the combined design components (e.g., insole and outer sole components) appear in one figure of the design patent in suit (as well as the alleged anticipatory design patent) in the International Seaway case?

  5. 12

    Well, it’s hard to come down on one side or the other regarding “dissection” of a design. Most will agree that it’s the design as a whole that controls. But how is the trier of fact supposed to analyze the design as a whole without speaking of its individual components, as a practical matter? The ultimate determination is appropriately subjective, and normally takes into account the visual impact of the various components on the design as a whole, although this is more often than not unstated. The problem the court found in International Seaway was that the lower court discounted entirely the visual appearance of the insole, so they had to send it back, because the insole is part of the overall design.

  6. 11


    I’ll defer to your judgment about the proper standard for anticipation for design patents. What has me truly aghast is what Judge Clevenger noted in his dissent (see my post above) about how the majority of the panel allowed the design to be dissected, even though the dissected components (insole and outer sole) appear in the same figure in the respective design patents (the one in suit and the one alleged to be anticipatory).

  7. 8

    As some have noted, the court has made it easier to invalidate a design patent under section 102 by using the ordinary observer test.

    The Federal Circuit’s discussion of anticipation in International Seaway is misguided.

    Previously, the Federal Circuit has interpreted the 1889 Peters v. Active “maxim” in a utility patent case to mean that a product “which would LITERALLY infringe if later in time anticipates if earlier”. In other words, the maxim is limited to literal infringement situations, which makes perfect sense, since if a claim reads on each element of a product to establish literal infringement, and that product were prior art, then it would anticipate the claim. If you had to bring in the doctrine of equivalents to that infringement/anticipation analysis, the situation would get muddied, indeed.

    Since Gorham v White, and by extension Egyptian Goddess, are not tests for literal infringement, they cannot be used to test for design patent anticipation. Gorham and Egyptian, by their very language (“substantially the same”) set forth tests for infringement by equivalents – the Federal Circuit some years ago in Lee v. Dayton-Hudson affirmed that Gorham subsumes the doctrine of equivalents for designs.

    There is Federal Circuit case law that quite properly holds that design patent anticipation requires a showing that a single prior art reference is “identical in all material respects” to the claimed design, see Hupp v. Siroflex. To the extent that Door Master and Bernhardt and now International Seaway have strayed from that analysis, by not limiting Peters v. Active to cases of literal infringement as was done in utility patent cases, they are in error.

  8. 7

    Regarding anticipation, International Seaway would have turned out the same way under this standard. There was no need to make new law.

    Is the law here really “new”? Seems like the logical extension of Egyptian Goddess.

    Imagine if the allegedly infringing designs in Gorham were prior art – they would be held anticipatory, even though they weren’t exactly the same.

    If they are considered “infringing” even though they aren’t exactly the same, then I don’t see what the problem is.

    Let’s just admit it: design patent law in this country is deeply broken at every level. The Federal Circuit is going to try and fix it and, as with patent law, folks who enjoy procuring design patents and asserting them against their competitors (or against deep-pocketed targets) are going to be in for a rough ride. Good luck to these folks if the PTO actually starts examining design patents.

  9. 5

    This case is nonsense, and I hope it gets appealed en banc or to the Supreme Court, namely because it blurs anticipation and obviousness. 

    Anticipation, under Hupp v. Siroflex, required substantial identity.  This was a good standard, because it was analogous to the 4 corners rule for utility anticipation: all elements of the claimed design must be within a single prior art reference.  Regarding anticipation, International Seaway would have turned out the same way under this standard.  There was no need to make new law.

    Obviousness, under In re Rosen, requires a primary reference that is basically the same as the claimed design, being modified by analogous art. 

    Introducing EG/Gorham’s Ordinary Observer into an anticipation is ridiculous because it it allows an unskilled eye to assume two things to be the same, even though the reference does not actually disclose the claimed design.  Thus, under International Seaway, a piece of prior art might anticipate under 102, but not render obvious under 103. 

    Imagine if the allegedly infringing designs in Gorham were prior art – they would be held anticipatory, even though they weren’t exactly the same.  However, they might not render the claim obvious under 103, because a PHOSITA would be able to tell the difference between the two, and would require a secondary reference that disclosed the differences (Thinking of obviousness, I hope they don’t take the dicta on 103 to heart in the future).

    Truly bizarre.

  10. 4

    I agree with Judge Clevenger that the majority went too far in discounting the impact of the outer sole of the design in determining patentability, i.e., improperly dissected the design v. properly treating the design as whole. As you can plainly see in FIG. 6 of each of the respective design patents, the insole and outer sole features appear together; that suggests the design of the insole and outer sole should likewise be treated together for the purpose of determining patentability.

  11. 3

    Certainly the correct result, although Judge Clevenger is even more correct.

    Fortunately for design patent applicants, the chances of the PTO rigorously and properly applying Walgreens to examination of design patents is zero, at least in the near term. The farce of design patent “examination” will continue for some time.

  12. 2

    Dennis thank you so much for the reference to the “classic” SCOTUS statement in 1889 that:

    That which infringes if later would anticipate if earlier.

    So so simple and elegant.

    But beyond comprehension in Germany, where a District Court does infringement and a Federal Court does validity.

    Does anybody know the “Claim as Angora Cat” story told by Professor Mario Franzosi? In the DC, the long-haired cat makes itself look double its normal size by causing all its hair to stand on end, and so succeeds in getting its injunction against the infringer. Later, it carefully gets itself soaking wet, so as to appear tiny, ready for its defence in Munich against all those prior art attackers.

    Don’t go down that road in America, will you?

  13. 1

    Like a bee to a flower, Perry Saidman will no doubt be here soon.

    So Perry, I’m still waiting for your promised defense of your preference for the view expressed by Newman in her dissent in the PHG Tech’s case.

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