Anticipate This!™ | Patent and Trademark Law Blog

Egyptian Goddess, Inc., et al. v. Swisa, Inc., et al.

Posted in Opinion Commentary by Jake Ward on September 5, 2007

For a combination of individually known elements to constitute a point of novelty for design patent infringement purposes, the combination must be a non-trivial advance over the prior art.   

(Fed. Cir. 2007, 06-1562)


Egyptian Goddess (EGI) argued that the district court’s (N.D. Tex) summary judgment of noninfringement of U.S. Design Pat. No. 467,389 (the D’389 patent) was improper.  On appeal, the CAFC disagreed with EGI and affirmed the summary judgment.

The D’389 patent covered an ornamental nail buffer (see above).  Swisa  was sued by EGI, claiming that Swisa nail buffers infringed the D’389 patent.  The district court granted summary judgment on the ground that the Swisa nail buffers did not contain the point of novelty of the patented design; namely, the addition of a fourth side without a pad.

There are two distinct requirements for establishing design patent infringement, namely:

1)  The ordinary observer test – requires that “in the eye of an ordinary observer, giving such attention as a purchaser usually gives, [the] two designs are substantially the same . . . the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other.” Gorham Co. v. White, 81 U.S. (14 Wall.) 511, 528 (1871).

2)  The point of novelty test – requires that “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.’” Litton Sys., Inc. v. Whirlpool Corp., 728 F.2d 1423, 1444 (Fed. Cir. 1984) (citing Sears, Roebuck & Co. v. Talge, 140 F.2d 395, 396 (8th Cir. 1944)).

The CAFC recited that “[t]he point of novelty must include features of the claimed design that distinguish it from the prior art.  Additionally, for a combination of individually known design elements to constitute a point of novelty, the combination must be a non-trivial advance over the prior art.  EGI’s asserted point of novelty is a combination of four elements: 1) an open and hollow body, 2) a square cross-section, 3) raised rectangular pads, and 4) exposed corners.

Neither EGI nor Swisa disputed that the referenced prior art to the D’389 design contained all the elements of the D’389 design, except for the fact that the body was triangular rather than square in cross-section (see below) . 


There was also no dispute that nail buffers with square cross-sections were widely known in the prior art.   In light of this, the CAFC held that no reasonable juror could conclude that EGI’s asserted point of novelty constituted a non-trivial advance over the prior art.  Furthermore, even if the point of novelty were to include a fourth side without a raised pad, as found by the district court, the Swisa buffers had pads on all four sides.  The CAFC concluded that this is not a minor difference from the D’389 design.  Accordingly, the summary judgment of noninfringement was properly granted.


Circuit Judge Dyk dissents, stating: 

. . . [B]y conflating the criteria for infringement and obviousness, the [new] test eviscerates the statutory presumption of validity by requiring the patentee to affirmatively prove nonobviousness. . . . Under the majority’s test . . . the patentee would have to prove nonobviousness in order to establish infringement.

2 Responses

Subscribe to comments with RSS.

  1. Rob Ireland said, on October 9, 2007 at 2:46 pm

    One small step for the knock-off artist, one giant fall for the legitimate patent holder.

  2. DD said, on July 14, 2011 at 10:42 pm

    Many would agree that, a legitmate patent holder is entitled to what he/she deserves… a clearly definited scope ecompassing what is actually invented, and not any more than that.

Leave a Reply

Fill in your details below or click an icon to log in: Logo

You are commenting using your account. Log Out /  Change )

Google photo

You are commenting using your Google account. Log Out /  Change )

Twitter picture

You are commenting using your Twitter account. Log Out /  Change )

Facebook photo

You are commenting using your Facebook account. Log Out /  Change )

Connecting to %s

%d bloggers like this: