Anticipate This!™ | Patent and Trademark Law Blog

Egyptian Goddess v. Swisa Inc.

Posted in Opinion Commentary by Jake Ward on September 25, 2008

Point of novelty test is rejected;  Infringement of a design patent requires that an ordinary observer, taking into account the prior art, would believe the accused design to be the same as the patented design.

(Fed. Cir. 2008, en banc, 06-1562)


The CAFC granted a rehearing en banc  to address the appropriate legal standard to be used in assessing claims of design patent infringement. 

Egyptian Goddess (“EGI”) originally brought suit in US District Court (N.D Tex.), alleging that Swisa had infringed EGI’s U.S. Design Patent No. 467,389 (“the ’389 patent”).  The ‘389 patent claimed a design for a nail buffer, consisting of a rectangular, hollow tube having a generally square cross-section and featuring buffer surfaces on three of its four sides.  Swisa’s product consists of a rectangular, hollow tube having a square cross-section, but featuring buffer surfaces on all four of its sides.  The district court granted the motion for summary judgment of noninfringement for Swisa, stating that the plaintiff in a design patent case must prove both: (1) that the accused device is “substantially similar” to the claimed design under what is referred to as the “ordinary observer” test; and (2) that the accused device contains “substantially the same points of novelty that distinguished the patented design from the prior art.”

EGI appealed and a panel of the CAFC affirmed.  The panel agreed with the district court that there was no issue of material fact as to whether the accused Swisa buffer “appropriates the point of novelty of the claimed design.”  The AT! analysis of the original CAFC panel opinion may be found here.

In an unanimous decision, the en banc CAFC held that the “point of novelty” test, previously used as a second and free-standing requirement for proof of design patent infringement, is inconsistent with precedent and is not needed to protect against unduly broad assertions of design patent rights.  The en banc CAFC instead applied the “ordinary observer” test first set forth in Gorham Co. v. White.  The ordinary observer test states:

[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.

Using the ordinary observer test, the CAFC concluded that no reasonable fact-finder could find that EGI met its burden of showing, by a preponderance of the evidence, that an ordinary observer, taking into account the prior art, would believe the accused design to be the same as the patented design. In concluding that a reasonable fact-finder could not find infringement in this case, the court affirmed the conclusion of the district court.


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