Egyptian Goddess v. Swisa: What is the 'Point'?

Northwestern Journal of Technology and Intellectual Property Volume 8 Issue 1 Fall Article 6 Fall 2009 Egyptian Goddess v. Swisa: What is the 'Point'? A.C. Dike Recommended Citation A.C. Dike, Egyptian Goddess v. Swisa: What is the 'Point'?, 8 Nw. J. Tech. & Intell. Prop. 116 (2009). https://scholarlycommons.law.northwestern.edu/njtip/vol8/iss1/6 This Note is brought to you for free and open access by Northwestern Pritzker School of Law Scholarly Commons. It has been accepted for inclusion in Northwestern Journal of Technology and Intellectual Property by an authorized editor of Northwestern Pritzker School of Law Scholarly Commons. N O R T H W E S T E R N JOURNAL OF TECHNOLOGY AND INTELLECTUAL PROPERTY Egyptian Goddess v. Swisa: What is the ‘Point’? A.C. Dike Fall 2009 © 2009 by Northwestern University School of Law Northwestern Journal of Technology and Intellectual Property VOL. 8, NO. 1 Copyright 2009 by Northwestern University School of Law Northwestern Journal of Technology and Intellectual Property Volume 8, Number 1 (Fall 2009) Egyptian Goddess v. Swisa: What is the ‘Point’? By A.C. Dike * I. INTRODUCTION ¶1 ¶2 ¶3 The Federal Circuit’s decision in Egyptian Goddess, Inc. v. Swisa, Inc. 1 has and will continue to hinder patentees from protecting and enforcing valid design patents against potential infringers. In Egyptian Goddess, the Federal Circuit addressed the appropriate legal standard for assessing the claims of a design patent in an infringement action. The en banc appeal focused on several questions, including “whether the ‘point of novelty’ test should continue to be used as a test for infringement of a design patent; whether the court should adopt the ‘non-trivial advance test’ as a means of determining whether a particular design feature qualifies as a point of novelty; how the point of novelty test should be administered . . . and whether district courts should perform formal claim construction in design patent cases.” 2 In a unanimous decision, the Federal Circuit held that the point of novelty test is “inconsistent with the ordinary observer test and is not needed to protect against unduly broad assertions of design patent rights.” 3 Part II of this Comment will provide a historical perspective of the current design patent infringement analysis. Part III of this Comment will outline the procedural history of Egyptian Goddess I & II. Part IV of this Comment analyzes the court’s determination that the best course for design patent jurisprudence is the new ordinary observer approach, which encompasses certain aspects of the point of novelty test. Lastly, Part V of this Comment will analyze and explain the potential implications that may result from the Federal Circuit’s decision in Egyptian Goddess and its newly created design patent infringement standard. In summary, although the Federal Circuit may argue that it was justified in abrogating the point of novelty test and cautioning against the verbalization of design patent claims during claim construction, the court failed to suggest an alternate test or provide sufficient guidance to the lower courts in cases where a claimed design and an accused design are not plainly dissimilar. Consequently, the Federal Circuit’s decision merely provides additional ambiguity to the already mired precedent for determining design patent infringement. * J.D. Candidate 2010, Northwestern University School of Law. 1 Egyptian Goddess, Inc. v. Swisa, Inc. (Egyptian Goddess II), 543 F.3d 665 (Fed. Cir. 2008). 2 Id. at 670. 3 Id. at 672. 116 Vol. 8:1] A.C. Dike II. DESIGN PATENTS A. ¶4 Gorham’s Ordinary Observer The United States Patent and Trademark Office (USPTO) grants a design patent for any new, original, and ornamental design for articles of manufacture. 4 A design patent protects only the appearance of the article and cannot be dictated solely by functional considerations because “function and structure fall under the realm of utility patent[s].” 5 The seminal case and starting point for any discussion regarding design patent law is the Supreme Court’s decision in Gorham Co. v. White. 6 That case involved the infringement of a design patent for patterns on the handles of knives, forks, and spoons. In its infringement analysis, the Court concluded that because “sameness of effect upon the eye, is the main test of substantial identity of design, the only remaining question . . . is, whether it is essential that the appearance should be the same to the eye of an expert.” 7 The Gorham Court then set forth what has since been recognized as the “ordinary observer” test: [I]f, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other. 8 Thus, the Gorham test of design patent infringement essentially determines whether an ordinary observer, who is considered a potential purchaser of the product at issue, is likely to be misled. B. ¶5 The Point of Novelty and Its Progeny Although the Gorham court recognized the ordinary observer test as the proper standard for determining design patent infringement, a series of Federal Circuit cases have relied on Litton Systems, Inc. v. Whirlpool Corp. 9 when holding that proof of similarity under the ordinary observer test is insufficient to establish design patent infringement. 10 In Litton, Whirlpool challenged the validity of a Litton design patent for a microwave oven on the basis that the claimed design was obvious in view of a combination of prior art references. 11 In its infringement analysis, the Litton court acknowledged that an accused design must also appropriate the novelty of the claimed design, stating in part: 4 35 U.S.C. § 171 (2006) (“Whoever invents any new, original, and ornamental design for an article of manufacture may obtain a patent therefor, subject to the conditions and requirements of this title.”). 5 MANUAL OF PATENT EXAMINING PROCEDURE § 1503.01 (2008) (“The functional and/or structural features stressed by applicant in the papers are of no concern in design cases, and are neither permitted nor required.”). 6 Gorham Co. v. White, 81 U.S. 511 (1871). 7 Id. at 527. 8 Id. at 528. 9 728 F.2d 1423 (Fed. Cir. 1984). 10 Egyptian Goddess, Inc. v. Swisa, Inc. (Egyptian Goddess II), 543 F.3d 665, 670 (Fed. Cir. 2008). 11 Litton, 728 F.2d at 1436. 117 NORTHWESTERN JOURNAL OF TECHNOLOGY AND INTELLECTUAL PROPERTY [2009 For a design patent to be infringed . . . no matter how similar two items look, “the accused device must appropriate the novelty in the patented device which distinguishes it from the prior art.” That is, even though the court compares two items through the eyes of the ordinary observer, it must nevertheless, to find infringement, attribute their similarity to the novelty which distinguishe (...truncated)