Egyptian Goddess, Inc. v. Swisa, Inc.
543 F.3d 665 (2008)
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Rule of Law:
The sole test for determining design patent infringement is the 'ordinary observer' test. This test asks whether an ordinary observer, familiar with the prior art designs, would be deceived into purchasing the accused product believing it to be the patented design.
Facts:
- Egyptian Goddess, Inc. (EGI) holds U.S. Design Patent No. 467,389 for a nail buffer.
- The patented design consists of a rectangular, hollow tube with a square cross-section.
- The patented design features abrasive buffer surfaces on three of its four sides, leaving the fourth side bare.
- Swisa, Inc. manufactured and sold its own nail buffer.
- Swisa's nail buffer is also a rectangular, hollow tube with a square cross-section.
- Swisa's buffer features abrasive surfaces on all four of its sides.
- Relevant prior art included the 'Nailco patent' for a hollow, three-sided triangular buffer with pads on all sides, and the 'Falley Buffer Block,' a solid, four-sided buffer with pads on all four sides.
Procedural Posture:
- Egyptian Goddess, Inc. sued Swisa, Inc. in the U.S. District Court for the Northern District of Texas for design patent infringement.
- The district court, applying the 'point of novelty' test, granted summary judgment of noninfringement to Swisa.
- Egyptian Goddess, Inc., as appellant, appealed to the U.S. Court of Appeals for the Federal Circuit, where Swisa, Inc. was the appellee.
- A three-judge panel of the Federal Circuit affirmed the district court's judgment.
- The Federal Circuit granted Egyptian Goddess, Inc.'s petition for rehearing en banc to reconsider the legal standard for design patent infringement.
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Issue:
Is the 'ordinary observer' test, informed by the prior art, the sole test for determining design patent infringement, thereby eliminating the separate 'point of novelty' test?
Opinions:
Majority - Bryson, Circuit Judge
Yes. The sole test for determining whether a design patent has been infringed is the 'ordinary observer' test. The court explicitly discards the two-part infringement analysis that required a separate 'point of novelty' test. The court reasoned that the 'point of novelty' test, which required identifying the specific novel features of a design and checking if the accused product appropriated them, was a confusing and problematic judicial creation not mandated by Supreme Court precedent like Gorham Co. v. White. The court held that the purpose of the 'point of novelty' test—to prevent patentees from claiming infringement based on features already in the prior art—is better served by applying the original 'ordinary observer' test from the perspective of an observer who is familiar with the prior art. This contextual comparison allows the fact-finder to properly assess the significance of the differences between the designs. Applying this revised standard, the court concluded that an ordinary observer familiar with the prior art Nailco and Falley buffers would not be deceived into believing Swisa's four-sided buffer was the same as EGI's patented three-sided buffer, and therefore there was no infringement.
Analysis:
This landmark en banc decision significantly simplified design patent infringement litigation by collapsing the cumbersome two-part test into a single, unified standard. By eliminating the separate 'point of novelty' test, the Federal Circuit shifted the infringement inquiry from a piecemeal, feature-by-feature analysis to a holistic comparison of the designs' overall visual appearance. This change streamlines litigation and realigns Federal Circuit jurisprudence with the original Supreme Court precedent in Gorham. Future cases will now focus on the impression a design makes on an ordinary observer who is knowledgeable about the relevant prior art, making the scope of prior art a critical element in infringement disputes.
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