Egyptian Goddess, Inc. v. Swisa, Inc.: A Dramatic Change in the Law of Design Patents?

The University of New Hampshire Law Review Volume 8 Number 1 Pierce Law Review Article 6 December 2009 Egyptian Goddess, Inc. v. Swisa, Inc.: A Dramatic Change in the Law of Design Patents? Evan Szarenski Franklin Pierce Law Center, Concord, NH Follow this and additional works at: https://scholars.unh.edu/unh_lr Part of the Intellectual Property Law Commons, and the Technology and Innovation Commons Repository Citation Evan Szarenski, Egyptian Goddess, Inc. v. Swisa, Inc.: A Dramatic Change in the Law of Design Patents?, 8 Pierce L. Rev. 89 (2009), available at http://scholars.unh.edu/unh_lr/vol8/iss1/6 This Notes is brought to you for free and open access by the University of New Hampshire – School of Law at University of New Hampshire Scholars' Repository. It has been accepted for inclusion in The University of New Hampshire Law Review by an authorized editor of University of New Hampshire Scholars' Repository. For more information, please contact . File: Szarenski Final v.3.doc Created on: 1/24/10 7:12 PM Last Printed: 1/24/10 7:12 PM Egyptian Goddess, Inc. v. Swisa, Inc.: A Dramatic Change in the Law of Design Patents? EVAN SZARENSKI ∗ TABLE OF CONTENTS I.   INTRODUCTION ...................................................................................89   II.   BACKGROUND ....................................................................................90   III.     ORIGIN OF THE ORDINARY OBSERVER ...............................................92   IV.   THE PATH TO POINT OF NOVELTY ......................................................95   V.   LITTON SYSTEMS AND ITS AFTERMATH .............................................100   VI.   EGYPTIAN GODDESS V. SWISA ............................................................102   A.   District Court .............................................................................102   B.   Panel Hearing ............................................................................104   C.   En Banc ......................................................................................105   VII. THE EFFECT OF THE ABOLITION OF THE POINT-OF-NOVELTY TEST 108 A.   Post-Egyptian Goddess..............................................................109   B.   Pre-Egyptian Goddess ...............................................................113   VIII.  CONCLUSION ....................................................................................116   I. INTRODUCTION On September 22, 2008, the Federal Circuit, sitting en banc, handed down the most important decision in design patent law in nearly twenty-five years.1 Egyptian Goddess, Inc. v. Swisa, Inc. ∗ J.D. Candidate, Franklin Pierce Law Center (2010); B.S.E., Electrical Engineering, University of Michigan, magna cum laude (2006). This note was the winning entry in the third annual Pierce Law Student Symposium writing competition. The author would like to thank Pierce Law Review members Elizabeth Lahey, Wallace Young, and Paul Smith for their feedback. 1. See Perry J. Saidman, Egyptian Goddess Exposed!, 90 J. PAT. & TRADEMARK OFF. SOC’Y 859, 885 (2008) [hereinafter Exposed!] (“Egyptian Goddess represents a sea change in the law . . . .”); Rebecca L. Hanovice, ‘Egyptian Goddess’ Revises Design Patent Analysis: Federal Circuit Disposed of the Long-Standing ‘Point of 89 File: Szarenski Final v.3.doc 90 Created on: 1/24/10 7:12 PM PIERCE LAW REVIEW Last Printed: 1/24/10 7:12 PM Vol. 8, No. 1 (Egyptian Goddess III)2 abolished the point-of-novelty test first set out in Sears, Roebuck & Co. v. Talge3 and adopted by the Federal Circuit in Litton Systems, Inc. v. Whirlpool Corp.4 The point-ofnovelty test required patent holders to prove that an accused design appropriated the element which sets the patented design apart from the prior art—in addition to the ordinary-observer standard’s requirement of having substantially the same appearance—in order to prove infringement.5 The point-of-novelty test proved difficult to apply and often rendered valid design patents unenforceable.6 Additionally, the test had no basis in Supreme Court precedent.7 In place of the rigid point-ofnovelty test, the Federal Circuit announced a more malleable ordinary-observer standard that gives factfinders more leeway in evaluating infringement.8 Egyptian Goddess has been hailed as a major victory for owners of design patents, but this Note argues that the actual effect will be much more muted. After giving an overview of design patents, this Note will analyze the cases that preceded the Federal Circuit’s adoption of the point-of-novelty test in Litton Systems. Additionally, this Note will discuss some of the cases decided during the reign of the point-ofnovelty test to demonstrate the problems inherent in it. After covering Egyptian Goddess in depth, the Note will then argue that Egyptian Goddess’s effect will be limited. II. BACKGROUND The U.S. Constitution grants Congress the power “[t]o promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respecNovelty’ Test, NAT’L L.J. (N.Y., N.Y.), Dec. 1, 2008, at S3 (“This is a wake-up call . . . .”). 2. 543 F.3d 665 (Fed. Cir. 2008). 3. 140 F.2d 395 (8th Cir. 1944). 4. 728 F.2d 1423 (Fed. Cir. 1984). 5. See id. at 1444. 6. See infra notes 109–13 and accompanying text. 7. See Egyptian Goddess III, 543 F.3d at 672. 8. See id. at 678. File: Szarenski Final v.3.doc 2009 Created on: 1/24/10 7:12 PM Last Printed: 1/24/10 7:12 PM A DRAMATIC CHANGE IN THE LAW OF DESIGN PATENTS? 91 tive Writings and Discoveries.”9 Congress first explicitly provided patent protection for designs in 1842.10 Currently, design patents are available for “any new, original and ornamental design for an article of manufacture.”11 In general, design patents are governed by the same statutory provisions as utility patents.12 Notably, design patents have terms of fourteen years from the date of granting,13 and, in an infringement action, patentees have available an additional remedy vis-a-vis utility patents.14 Design patents cover only the ornamental features of a design. Generally, these ornamental features consist of one or both of (1) “a design for an ornament, impression, print, or picture applied to or embodied in an article of manufacture” or (2) “a design for the shape or configuration of an article of manufacture.”15 Unlike utility patents, design patents are generally not accompanied by verbal claims.16 Rather, each design patent can only contain a single claim, represented by drawings.17 9. U.S. CONST. art. I, § 8, cl. 8. 10. See Act of Aug. 29, 1842, ch. 263, 5 Stat. 543 (“[A]ny citizen or citizens . . . who by his, her, or their own industry, genius, efforts, and expense, may have invented or produced any new and original design for a manufacture . . . may make application in writing to the Commissioner of Patents . . . and the Commi (...truncated)