© 2017 Head, Johnson, Kachigian & Wilkinson, PC

  • Cassandra L. Wilkinson

Egyptian Goddess, Inc. v. Swisa, Inc.: Increased Protection for Design Patent Owners


The Federal Circuit, in Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 2008 WL 4290856 (Fed.Cir. 2008) (en banc) (No. 06-1562), recently clarified “the appropriate legal standard to be used in assessing claims of design patent infringement.” The court held “that the ‘point of novelty’ test should no longer be used in the analysis of a claim of design patent infringement.” Rather, “the ‘ordinary observer’ test should be the sole test for determining whether a design patent has been infringed.” Under the ordinary observer test, as explained in Gorham Co. v. White, 81 U.S. 511 (1871), “if, 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.” The Federal Circuit held in Arminak & Assocs., Inc. v. Saint-Gobain Calmar, Inc., 501 F.3d 1314, 1324 (Fed.Cir. 2007) that, “[i]n applying the ordinary observer test, a court is to compare the [patented design] to the accused design to determine whether ‘the designs have the same general visual appearance, such that it is likely that the purchaser [(or the ordinary observer)] would be deceived into confusing the design of the accused article with the patented design.’” “Specifically, the question to be addressed in applying the ordinary observer test is whether the ordinary observer would be deceived by the accused design because it is substantially similar to the patented design.” According to the Egyptian Goddess court, “In some instances, the claimed design and the accused design will be sufficiently distinct that it will be clear without more that the patentee has not met its burden of proving the two designs would appear “substantially the same” to the ordinary observer... In other instances, when the claimed and accused designs are not plainly dissimilar, resolution of the question whether the ordinary observer would consider the two designs to be substantially the same will benefit from a comparison of the claimed and accused designs with the prior art... Where there are many examples of prior art designs ... differences between the claimed and accused designs that might not be noticeable in the abstract can become significant to the hypothetical ordinary observer who is conversant with the prior art.” “When the differences between the claimed and accused design are viewed in light of the prior art, the attention of the hypothetical ordinary observer will be drawn to those aspects of the claimed design that differ from the prior art. And when the claimed design is close to the prior art designs, small differences between the accused design and the claimed design are likely to be important to the eye of the hypothetical ordinary observer.” Thus under the Egyptian Goddess test, the scope of infringement varies inversely with the scope of prior art. When a patented design is in a field crowded with similar prior designs, the only infringing designs will be those that are strikingly similar to the patented design yet different from the prior art. Alternatively, when the patented design stands alone as a breakthrough design, the potential variety of infringing activity actually increases. Moreover, the court ruled that the “burden of production” of relevant prior art is on the accused infringer, rather than on the patentee, as the overturned point of novelty test required. The Federal Circuit went on to consider whether trial courts should conduct claim construction in design patent cases. The court noted that “a design is better represented by an illustration ‘than it could be by any description and a description would probably not be intelligible without the illustration.’” Therefore, “the preferable course ordinarily will be for a district court not to attempt to ‘construe’ a design patent claim by providing a detailed verbal description of the claimed design.” However, in some circumstances, a court may still “find it helpful to point out … various features of the claimed design as they relate to the accused design and the prior art.” For example, in Arc’Teryk Equip., Inc. v. Westcomb Outerwear, Inc., 89 U.S.P.Q.2d 1894, 2008 WL 4838141 (D.Utah, November 4, 2008), the District Court of Utah examined a claim of design patent infringement for a curvilinear zipper on a jacket by relying upon the illustrations rather than giving a detailed description of the design. Nevertheless, the court described the two designs side by side finding the ordinary observer familiar with the prior art would not confuse the claimed and accused designs, since the claimed design gives the observer the impression of two (2) zipper sections, one straight section from the bottom of the zipper to the chest area and one diagonal section from the chest area to the collar, whereas the accused design gives the observer the impression of three (3) zipper sections, one straight section to the stomach area, one diagonal section and another straight section from the stomach area to the collar. The court then turned to the prior art, noting that the number, length and placement of the zipper sections differentiated the items and noted that the ordinary observer would view the differences between the claimed and accused designs in the number, placement and length of the diagonal sections of the zippers. Since the accused design was closer to the prior art that contained two (2) straight and one (1) diagonal sections, the court found that it did not infringe the claimed design because it did not copy the points of differentiation. It appears Egyptian Goddess broadens the potential claim scope of design patents when the invention goes well beyond the prior art, and moves away from a troublesome verbal approach to design patents to a more patentee-friendly visual approach. Thus, Egyptian Goddess strengthens the design patent as a method of protecting intellectual property rights.

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