The Federal Circuit's newly handed down decision in Egyptian Goddess v. Swisa signals its intention to put to rest questions and notions that have plagued the courts in recent years. Within the U.S. patent system, the tests surrounding "design" patents, those patents that fall under the auspices of U.S.C. Title 35 Section 171, have often been held to similar standards as those of utility patents for most questions of validity, but not for the question of infringement. Since the mid-19th century, the courts have held to an "ordinary observer" standard for infringement. Under the standard, a design infringes a previously patented design if it "so resembles the patented design as to deceive an ordinary observer." Gorham Co. v. White, 81 U.S. 511 (1871). Through the years, however, this singular test somehow evolved into a two-part analysis involving the ordinary observer test, and a "point of novelty" test. But Egyptian Goddess has struck down this second point of novelty test, effectively reaffirming the ordinary observer test from Gorham as the standard for discerning whether a design patent has been infringed. Despite this reaffirmation of the ordinary observer test, questions regarding whether the "overall appearance," or non-specific appearance, of the design can satisfy this test have never been far from the fray.

The "ordinary observer test has stood as the standard for infringement analysis since 1871. In Gorham, the Supreme Court held that, "if in the eye of an ordinary ... two designs are substantially the same, if the resemblance is such as to deceive an observer ... the first one patented is infringed by the other." This test stood as standard until the courts became concerned about their infringement analysis and wanted to incorporate a novelty analysis into the infringement equation. The courts' concern was that a ruling of infringement should not be given unless the "novelty" of the patented design had been compromised in some form by the allegedly infringing design. Therefore, the courts created the point of novelty test.

Under that test, no matter how similar the items appear, "the accused device must appropriate the novelty in the patented device which distinguishes it from prior art" in order for infringement to exist. Sears, Roebuck & Co. v. Talge, 140 F.2d 395 (8th Cir. 1944). In other words, a new design is not novel simply if its overall appearance is only slightly different from the prior art, and in fact "'overall appearance' is not considered." Contessa Foods v. Conagra, 282 F.3d 1370 (Fed. Cir. 2002).

Reforming the Standard

Despite the Federal Circuit's adherence to the point of novelty test over the past decades, questions regarding its due place in infringement analysis have continued to exist. These questions however, have finally been put to rest, at least for the time being.

In Egyptian Goddess, the Federal Circuit examined the rightful place and purpose of the new two-part design patent infringement analysis. After examining Gorham and the related case of Smith v. Whitman Saddle, 148 U.S. 674 (1893), the Federal Circuit held that there is no place within design infringement analysis for a point of novelty test, and the only test that should be applied is the ordinary observer test. In its decision, the court, sitting en banc, stated specifically that the cases that the point of novelty test was based on "are more properly read as applying a version of the ordinary observer test in which the ordinary observer is deemed to view the differences between the patented design and the accused product in the context of the prior art." In fact, the court expressly declared its intention to overrule and replace the point of novelty test in stating that the test "should no longer be used in the analysis of a claim of design patent infringement." The court continued: "the 'ordinary observer' test should be the sole test for determining whether a design patent has been infringed." However, while the courts have erased the point of novelty test from the books, another issue remains to be concretely decided.

Overall Appearance

A separate issue that arose in light of Egyptian Goddess was whether non-specific overall appearance could satisfy the infringement tests. However, since the court has removed the point of novelty test from the infringement calculus, what remains is to discern whether overall appearance can satisfy the remaining ordinary observer test. Simply stated, if non-specific overall appearance could satisfy the infringement test, it would mean that a patentee would not have to prove that the defendant's design appropriated any specific feature or aspect of the patented design, but only appropriated the overall effect or appearance of the patented design, and thereby caused confusion in an ordinary observer. While some might suggest that this type of analysis is completely foreign to the standard infringement analysis and therefore should not be allowed, this type of analysis has been employed in a similar form in trademark infringement in the form of the "reasonably prudent consumer" test. In trademark infringement cases, the factors that the courts employ to determine infringement can be satisfied through overall appearance or "feeling" of the reasonably prudent consumer, and do not have to be whittled down to individual points of novelty appropriated. See Dreamwerks Production Group v. SKG Studios, 142 F.3d 1127 (9th Cir. 1998). For example, when determining the appropriateness of a summary judgment motion in a trademark infringement case, "it is the similarity between the overall appearance of the two products that is determinative, rather than the similarity of particular features." Sunbeam Corp. v. Equity Industries Corp., 635 F. Supp. 625 (D. Va. 1986). The Egyptian Goddess decision also lends support to the "overall appearance test satisfying the infringement standard." In Egyptian Goddess, the court reinforced its firm belief that that "infringement [will only be found if] the accused article 'embodies the patented design or any colorable imitation thereof.'" The previous inclusion, and the court's adoption, of the word "any colorable imitation" lend themselves to the concept that any imitation that confuses an "ordinary observer," even a design's non-specific overall appearance, would suffice to meet the infringement standard.

The nature of the design patent itself further demands that non-specific overall appearance be allowed to satisfy the remaining infringement test. Since the new gold standard for infringement is whether there is confusion in the mind of an ordinary observer, it would run against the grain of logic to remove one major way an ordinary observer could view patented designs. While a large amount of ink has been spilled over who is an ordinary observer and how tough the standard is to satisfy. For example, in Applied Arts Corp. v. Grand Rapids Metalcraft Corp., 67 F.2d 428 (6th Cir. 1933), the court held that an ordinary observer was "not one who has never seen [an item], but one who, though not an expert, has reasonable familiarity with such objects." Therefore, the standard adopted by the courts, and reinforced in Egyptian Goddess, leaves some wiggle room to utilize the instincts and senses of the ordinary observer and not the clear, discerning, and well-trained eye of an expert. In fact, to deny overall appearance its rightful place in infringement analysis would effectively eviscerate the design patent statutes and cause design patents as a category to be recast into a shadow of its former self. The result would be a transformation of the ordinary observer standard into more of an expert observer standard. This would run contrary to the entire purpose of the infringement standard and of the ordinary observer test. The purpose of the test is to discern whether a normal, ordinary citizen would be confused by the similarity of the products. The fact that the vast majority of the populace consists of "ordinary" people with no more expertise than that which is gained in life, illustrates how necessary it is to employ a standard that is reflective of the population as a whole, and not of a small, highly trained minority.

In the end, it becomes apparent that to disallow overall appearance to satisfy the infringement standard would run contrary to the nature of the design patent and the purpose of infringement statutes. The Federal Circuit's recent confirmation of the ordinary observer standard and overruling of the wayward point of novelty test must now be followed by a subsequent holding delineating that appropriation of the overall appearance of a design can and should constitute infringement. The courts cannot deprive the patent statutes of their intended structure and teeth. Overall appearance must be allowed to satisfy the infringement standard.

Michael Shimokaji is a partner in the law firm of Shimokaji IP, where his practice includes patent litigation. He can be reached at [email protected] Phil Gahagan is a second-year law student and Center for International and Comparative Law fellow at Whittier Law School in Costa Mesa. © 2008 Daily Journal Corporation. All rights reserved.

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