Egyptian Goddess v. Swisa

United States Court of Appeals for the Federal Circuit

2006-1562

EGYPTIAN GODDESS, INC.,

Plaintiff-Appellant,

and

ADI TORKIYA,

Third Party Defendant,

v.

SWISA, INC. and DROR SWISA,

Defendants/Third Party Plaintiffs-
Appellees.

Robert G. Oake, Jr., Oake Law Office, of Allen, Texas, argued for plaintiff-appellant.

Frederick Linton Medlin, Kirkpatrick & Lockhart Preston Gates Ellis LLP, of Dallas,
Texas, argued for defendants/third party plaintiffs-appellees. With him on the brief was
Linda G. Moore. Of counsel was Jeffrey L. Snow, of Boston, Massachusetts.

F. David LaRiviere, LaRiviere, Grubman & Payne LLP, of Monterey, California, for
amicus curiae Monster Cable Products, Inc.

William Dunnegan, Dunnegan LLC, of New York, New York, for amicus curiae
Industrial Designers Society of America. With him on the brief was Nikitas E. Nicolakis.

Edward D. Manzo, Cook, Alex, McFarron, Manzo, Cummings & Meher, Ltd., of
Chicago, Illinois, for amici curiae Elite Group, Inc., et al.

Kevin T. Kramer, Pillsbury Winthrop Shaw Pittman LLP, of Washington, DC, for
amicus curiae Federal Circuit Bar Association. With him on the brief were Edward R.
Reines, Federal Circuit Bar Association, of Washington, DC, and Mark P. Walters, Darby &
Darby, of Seattle, Washington.

George M. Sirilla, Pillsbury Winthrop Shaw Pittman LLP, of McLean, Virginia, for
amicus curiae Daisy Manufacturing Company, Inc. With him on the brief was Stephanie F.
Goeller, of Washington, DC.
 Frank A. Angileri, Brooks Kushman P.C., of Southfield, Michigan, for amicus curiae
Ford Global Technologies, LLC. With him on the brief was Marc Lorelli.

Christopher J. McGeehan, Greer, Burns & Crain, Ltd., of Chicago, Illinois, for amicus
curiae Intellectural Property Law Association of Chicago.

Vandana Koelsch, Howrey LLP, of Washington, DC, for amicus curiae Bar
Association of the District of Columbia.

Tracy-Gene G. Durkin, Sterne, Kessler, Goldstein & Fox P.L.L.C., of Washington,
DC, for amicus curiae Intellectual Property Owners Association. With her on the brief was
David K.S. Cornwell. Of counsel on the brief were Steven W. Miller, The Procter & Gamble
Company, of Cincinnati, Ohio, and Richard F. Phillips, Exxon Mobil Corporation, of
Houston, Texas. Of counsel was Herbert C. Wamsley, Intellectual Property Owners
Association, of Washington, DC.

William T. Fryer, III, of Bethesda, Maryland, for amicus curiae Professor William T.
Fryer, III.

Christopher J. Renk, Banner & Witcoff, Ltd., of Chicago, Illinois, for amici curiae
Electrolux Home Products, Inc., et al. With him on the brief were Erik S. Maurer, of
Chicago, Illinois, and Robert S. Katz, of Washington, DC. Of counsel was Christopher B.
Roth.

Christopher V. Carani, McAndrews, Held & Malloy, Ltd., of Chicago, Illinois, for
amicus curiae American Intellectual Property Law Association. With him on the brief was
James Pooley, Morrison & Foerster LLP, of Palo Alto, California.

Perry J. Saidman, Saidman DesignLaw Group, of Silver Springs, Maryland, for
amicus curiae Apple Inc.

Alan L. Barry, Bell, Boyd & Lloyd LLP, of Chicago, Illinois, for amici curiae LKQ
Corporation, et al. With him on the brief were Heather A. Boice and Brian J. Arnold.

Valerie K. Friedrich, Baker & McKenzie LLP, of Houston, Texas, for amicus curiae
Houston Intellectual Property Law Association.

Appealed from: United States District Court for the Northern District of Texas

Judge David C. Godbey
 United States Court of Appeals for the Federal Circuit

2006-1562

EGYPTIAN GODDESS, INC.,

Plaintiff-Appellant,
and

ADI TORKIYA,

Third Party Defendant,

v.

SWISA, INC. and DROR SWISA,

Defendants/Third Party Plaintiffs-
Appellees.

Appeal from the United States District Court for the Northern District of Texas
in case no. 3:03-CV-0594, Judge David C. Godbey.

___________________________

DECIDED: September 22, 2008
___________________________

Before MICHEL, Chief Judge, and NEWMAN, ARCHER, MAYER, LOURIE, RADER,
SCHALL, BRYSON, GAJARSA, LINN, DYK, PROST, and MOORE, Circuit Judges.

BRYSON, Circuit Judge.

We granted rehearing en banc in this design patent case to address the

appropriate legal standard to be used in assessing claims of design patent infringement.

Appellant Egyptian Goddess, Inc., (“EGI”) brought this action in the United States

District Court for the Northern District of Texas, alleging that Swisa, Inc., and Dror Swisa

(collectively, “Swisa”) had infringed EGI’s U.S. Design Patent No. 467,389 (“the ’389
patent”). The 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 accused 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 first issued an order construing the claim of the ’389 patent. In

so doing, the district court sought to describe in words the design set forth in Figure 1 of

the patent, which is depicted below:

Upon study of the claimed design, the court described it as follows:

A hollow tubular frame of generally square cross section, where the
square has sides of length S, the frame has a length of approximately 3S,
and the frame has a thickness of approximately T = 0.1S; the corners of
the cross section are rounded, with the outer corner of the cross section
rounded on a 90 degree radius of approximately 1.25T, and the inner
corner of the cross section rounded on a 90 degree radius of
approximately 0.25T; and with rectangular abrasive pads of thickness T
affixed to three of the sides of the frame, covering the flat portion of the
sides while leaving the curved radius uncovered, with the fourth side of the
frame bare.

In the same order, the district court ruled that “Swisa has not shown that the

appearance of the Buffer Patent is dictated by its utilitarian purpose.” The court

therefore held that the patent is not invalid on the ground that the design was governed

2006-1562 2
solely by function. Egyptian Goddess, Inc. v. Swisa, Inc., Civil Action No. 3:03-CV-

0594-N (N.D. Tex. Mar. 4, 2005), citing Seiko Epson Corp. v. Nu-Kote Int’l, Inc., 190

F.3d 1360, 1368 (Fed. Cir. 1999).

Swisa then moved for summary judgment of noninfringement. The district court

granted the motion. Citing precedent of this court, the district court stated 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.” Egyptian Goddess,

Inc. v. Swisa, Inc., Civil Action No. 3:03-CV-0594-N (N.D. Tex. Dec. 14, 2005), citing

Goodyear Tire & Rubber Co. v. Hercules Tire & Rubber Co., 162 F.3d 1113 (Fed. Cir.

1998). After comparing the claimed design and the accused product, the court held that

Swisa’s allegedly infringing product did not incorporate the “point of novelty” of the ’389

patent, which the court identified as “a fourth, bare side to the buffer.”

The district court noted that the parties disagreed as to the points of novelty in

the ’389 patent. EGI identified four elements in its design, and for each element it

identified prior art that did not embody that element. EGI therefore contended that the

point of novelty of the ’389 patent is the combination of those four elements. The district

court, however, declined to address the question whether the point of novelty could be

found in the combination of elements not present in various prior art references,

because the court found that a single prior art reference, United States Design Patent

No. 416,648 (“the Nailco patent”), contained all but one of the elements of the ’389

design. The court described the Nailco Patent as disclosing “a nail buffer with an open

2006-1562 3
and hollow body, raised rectangular pads, and open corners.” The only element of the

’389 patent design that was not present in the Nailco patent, according to the district

court, was “the addition of the fourth side without a pad, thereby transforming the

equilateral triangular cross-section into a square.” Because the Swisa product does not

incorporate the point of novelty of the ’389 patent—a fourth side without a pad—the

court concluded that there was no infringement.

EGI appealed, and a panel of this court 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.” Egyptian Goddess, Inc.

v. Swisa, Inc., 498 F.3d 1354, 1355 (Fed. Cir. 2007). In reaching that conclusion, the

panel stated that the point of novelty in a patented design “can be either a single novel

design element or a combination of elements that are individually known in the prior art.”

Id. at 1357. The panel added, however, that in order 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.” Id.

The panel noted that EGI’s asserted point of novelty was a combination of four of

the claimed design’s elements: (1) an open and hollow body, (2) a square cross-section,

(3) raised rectangular buffer pads, and (4) exposed corners. The panel agreed with the

district court’s observation that the Nailco prior art patent contained each of those

elements except that the body was triangular, rather than square, in cross-section. 498

F.3d at 1358. In light of the prior art, the panel determined that “no reasonable juror

could conclude that EGI’s asserted point of novelty constituted a non-trivial advance

over the prior art.” Id.

2006-1562 4
 The panel further observed that the various design elements of the claimed

design “were each individually disclosed in the prior art.” 498 F.3d at 1358. The Swisa

buffers, the panel noted, have raised, abrasive pads on all four sides, not just on three

of the four sides, as in the claimed design, in which the fourth side is bare. The panel

then concluded that “[w]hen considering the prior art in the nail buffer field, this

difference between the accused design and the patented design cannot be considered

minor.” Id. The panel therefore concluded that summary judgment was appropriate.

The dissenting judge would not have adopted the “non-trivial advance” test as a

way of ascertaining whether a particular feature of the claimed design constituted a

point of novelty for infringement purposes. In the view of the dissenting judge, the “non-

trivial advance” test was inconsistent with and unsupported by prior precedent; it

conflated the criteria for infringement and obviousness; it applied only to designs that

involved combinations of design elements; and it improperly focused on the

obviousness of each point of novelty, rather than the obviousness of the overall design.

498 F.3d at 1359-60 (Dyk, J., dissenting).

This court granted rehearing en banc and asked the parties to address several

questions, including whether the “point of novelty” test should continue to be used as a

test for infringement of a design patent; whether the court should adopt the “non-trivial

advance test” as a means of determining whether a particular design feature qualifies

as a point of novelty; how the point of novelty test should be administered, particularly

when numerous features of the design differ from certain prior art designs; and whether

district courts should perform formal claim construction in design patent cases.

I

2006-1562 5
 The starting point for any discussion of the law of design patents is the Supreme

Court’s decision in Gorham Co. v. White, 81 U.S. 511 (1871). That case involved a

design patent for the handles of tablespoons and forks. In its analysis of claim

infringement, the Court stated that the test of identity of design “must be sameness of

appearance, and mere difference of lines in the drawing or sketch . . . or slight

variances in configuration . . . will not destroy the substantial identity.” Id. at 526-27.

Identity of appearance, the Court explained, or “sameness of effect upon the eye, is the

main test of substantial identity of design”; the two need not be the same “to the eye of

an expert,” because if that were the test, “[t]here never could be piracy of a patented

design, for human ingenuity has never yet produced a design, in all its details, exactly

like another, so like, that an expert could not distinguish them.” Id. at 527.

The Gorham Court then set forth the test that has been cited in many subsequent

cases: “[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.” 81 U.S. at 528. In the case before it,

the Court concluded that “whatever differences there may be between the plaintiffs’

design and those of the defendant in details of ornament, they are still the same in

general appearance and effect, so much alike that in the market and with purchasers

they would pass for the same thing—so much alike that even persons in the trade would

be in danger of being deceived.” Id. at 531.

Since the decision in Gorham, the test articulated by the Court in that case has

been referred to as the “ordinary observer” test and has been recognized by lower

2006-1562 6
courts, including both of this court’s predecessors, as the proper standard for

determining design patent infringement. See, e.g., Blumcraft of Pittsburgh v. United

States, 372 F.2d 1014, 1016 (Ct. Cl. 1967); In re Dubois, 262 F.2d 88, 91 (CCPA 1958).

However, in a series of cases tracing their origins to Litton Systems, Inc. v. Whirlpool

Corp., 728 F.2d 1423 (Fed. Cir. 1984), this court has held that proof of similarity under

the ordinary observer test is not enough to establish design patent infringement.

Rather, the court has stated that the accused design must also appropriate the novelty

of the claimed design in order to be deemed infringing. The court in Litton Systems

wrote as follows:

For a design patent to be infringed . . . 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.” That is, even
though the court compares two items through the eyes of the ordinary
observer, it must nevertheless, to find infringement, attribute their similarity
to the novelty which distinguishes the patented device from the prior art.

Litton Systems, 728 F.2d at 1444 (citations omitted). After identifying the combination

of features in the design that it considered novel, the court in Litton Systems held that

the accused design had none of those features and therefore did not infringe. Id.

In a number of cases decided after Litton Systems, this court has interpreted the

language quoted above to require that the test for design patent infringement consider

both the perspective of the ordinary observer and the particular novelty in the claimed

design. See, e.g., Bernhardt, L.L.C. v. Collezione Europa USA, Inc., 386 F.3d 1371,

1383 (Fed. Cir. 2004); Contessa Food Prods., Inc. v. Conagra, Inc., 282 F.3d 1370,

1377 (Fed. Cir. 2002); Unidynamics Corp. v. Automatic Prods. Int’l, Inc., 157 F.3d 1311,

1323-24 (Fed. Cir. 1998); Oakley, Inc. v. Int’l Tropic-Cal., Inc., 923 F.2d 167, 169 (Fed.

2006-1562 7
Cir. 1991); Avia Group Int’l, Inc. v. L.A. Gear Cal., Inc., 853 F.2d 1557, 1565 (Fed. Cir.

1988).

The extent to which the point of novelty test has been a separate test has not

always been clear in this court’s case law. In cases decided shortly after Litton, the

court described the ordinary observer test and the point of novelty test as “conjunctive.”

See L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 1125 (Fed. Cir. 1993);

Shelcore, Inc. v. Durham Indus., Inc., 745 F.2d 621, 628 n.16 (Fed. Cir. 1984). It has

not been until much more recently that this court has described the ordinary observer

and point of novelty tests as “two distinct tests” and has stated that “[t]he merger of the

point of novelty test and the ordinary observer test is legal error.” Unidynamics Corp.,

157 F.3d at 1323-24; see also Lawman Armor Corp. v. Winner Int’l, LLC, 437 F.3d

1383, 1384 (Fed. Cir. 2006); Contessa Food Prods., Inc., 282 F.3d at 1377; Sun Hill

Indus., Inc. v. Easter Unlimited, Inc., 48 F.3d 1193, 1197 (Fed. Cir. 1995).

Regardless of the differences in the way it has been characterized, the point of

novelty test has proved reasonably easy to apply in simple cases in which the claimed

design is based on a single prior art reference and departs from that reference in a

single respect. In such cases, it is a simple matter to identify the point of novelty and to

determine whether the accused design has appropriated the point of novelty, as

opposed to copying those aspects of the claimed design that were already in the prior

art. However, the point of novelty test has proved more difficult to apply where the

claimed design has numerous features that can be considered points of novelty, or

where multiple prior art references are in issue and the claimed design consists of a

combination of features, each of which could be found in one or more of the prior art

2006-1562 8
designs. In particular, applying the point of novelty test where multiple features and

multiple prior art references are in play has led to disagreement over whether

combinations of features, or the overall appearance of a design, can constitute the point

of novelty of the claimed design. Compare Lawman Armor Corp. v. Winner Int’l, LLC,

449 F.3d 1190 (Fed. Cir. 2006) (supplemental opinion on petition for rehearing), with

Lawman Armor Corp. v. Winner Int’l, LLC, 449 F.3d 1192 (Fed. Cir. 2006) (Newman, J.,

dissenting from denial of rehearing en banc). In light of the questions surrounding the

status and application of the point of novelty test, we use this case as a vehicle for

reconsidering the place of the point of novelty test in design patent law generally.

II

EGI argues that this court should no longer recognize the point of novelty test as

a second part of the test for design patent infringement, distinct from the ordinary

observer test established in Gorham. Instead of requiring the fact-finder to identify one

or more points of novelty in the patented design and then determining whether the

accused design has appropriated some or all of those points of novelty, EGI contends

that the ordinary observer test can fulfill the purposes for which the point of novelty test

was designed, but with less risk of confusion. As long as the ordinary observer test

focuses on the “appearance that distinguishes the patented design from the prior art,”

EGI contends that it will enable the fact-finder to address the proper inquiry, i.e.,

whether an ordinary observer, familiar with the prior art, would be deceived into thinking

that the accused design was the same as the patented design. Relatedly, EGI argues

that if the ordinary observer test is performed from the perspective of an ordinary

observer who is familiar with the prior art, there is no need for a separate “non-trivial

2006-1562 9
advance” test, because the attention of an ordinary observer familiar with prior art

designs will naturally be drawn to the features of the claimed and accused designs that

render them distinct from the prior art.

Several of the amici make essentially the same point, referring to the proper

approach as calling for a three-way visual comparison between the patented design, the

accused design, and the closest prior art. The amici point out that courts, including this

one, have on occasion applied that approach in design patent cases, without identifying

it as a separate test. See, e.g., Brief of Amicus Curiae Apple, Inc., at 19 (citing, inter

alia, Elmer v. ICC Fabricating, Inc., 67 F.3d 1571 (Fed. Cir., 1995); Braun, Inc. v.

Dynamics Corp. of Am., 975 F.2d 815 (Fed Cir. 1992); and Bergstrom v. Sears,

Roebuck & Co., 496 F. Supp. 476 (D. Minn. 1980)).

Swisa counters that this court may not, and should not, abandon the point of

novelty test. According to Swisa, the point of novelty test was adopted by the Supreme

Court in Smith v. Whitman Saddle Co., 148 U.S. 674 (1893). Swisa interprets that case

as dictating the use of the point of novelty test as a second and distinct test for design

patent infringement, separate from the ordinary observer test set forth in Gorham.

Swisa contends that the subsequent decisions of this court and others applying the

point of novelty test are soundly based on Whitman Saddle, and that we cannot depart

from that test without disregarding that governing Supreme Court precedent as well as

intervening precedent from other courts of appeals.

We disagree with Swisa’s submission. A close reading of Whitman Saddle and

subsequent authorities indicates that the Supreme Court did not adopt a separate point

of novelty test for design patent infringement cases. In fact, a study of the development

2006-1562 10
of design patent law in the years after Gorham shows that the point of novelty test, in its

current form, is of quite recent vintage. After a review of those authorities, which we

examine in some detail below, we conclude that the point of novelty test, as a second

and free-standing requirement for proof of design patent infringement, is inconsistent

with the ordinary observer test laid down in Gorham, is not mandated by Whitman

Saddle or precedent from other courts, and is not needed to protect against unduly

broad assertions of design patent rights.

Whitman Saddle involved a patent on a design for a saddle. The Court began by

reciting the requirements for obtaining patent protection for a design. The Court

emphasized the importance of “invention” to the patentability of a design. It stated,

“Mere mechanical skill is insufficient. There must be something akin to genius, an effort

of the brain as well as the hand. The adaptation of old devices or forms to new

purposes, however convenient, useful, or beautiful they may be in their new role, is not

invention.” 148 U.S. at 679. The Court then explained (id.):

The exercise of the inventive or originative faculty is required, and a
person cannot be permitted to select an existing form, and simply put it to
a new use, any more than he can be permitted to take a patent for the
mere double use of a machine. If, however, the selection and adaptation
of an existing form is more than the exercise of the imitative faculty, and
the result is in effect a new creation, the design may be patentable.

In the case before it, the Court characterized the patented saddle design as a

combination of elements from two saddle designs that were well known in the art. The

Court explained that the patented design consisted of a combination of the front half of

the so-called Granger saddle and the back end of the so-called Jenifer saddle. The

design differed from a simple combination of the two known saddles, according to the

2006-1562 11
Court, only in that the front end of the design had “a nearly perpendicular drop of some

inches at the rear of the pommel,” unlike in the Granger saddle. Id. at 680.

Although the trial court, sitting in equity, concluded that the design was

patentable, the Supreme Court disagreed. The Court wrote, “Nothing more was done in

this instance (except as hereafter noted) than to put the two halves of these saddles

together in the exercise of the ordinary skill of workmen of the trade, and in the way and

manner ordinarily done.” 148 U.S. at 681. The Court noted that there was a difference

between the pommel of the designed saddle and the pommel of the Granger saddle,

and it added that the “shape of the front end being old, the sharp drop of the pommel at

the rear seems to constitute what was new and to be material.” Id. at 682. That

feature, however, was not present in the defendants’ saddle. The Court then concluded

with the following remarks (id.):

If, therefore, this drop were material to the design, and rendered it
patentable as a complete and integral whole, there was no infringement.
As before said, the design of the patent had two features of difference as
compared with the Granger saddle, one the cantle, the other the drop; and
unless there was infringement as to the latter there was none at all, since
the saddle design of the patent does not otherwise differ from the old
saddle with the old cantle added, an addition frequently made. Moreover,
that difference was so marked that in our judgment the defendant’s saddle
could not be mistaken for the saddle of the complainant.

Because Whitman Saddle was an action in equity, the Court did not distinguish

sharply between its analysis of patentability and its discussion of infringement. Within

the same passage, the Court moved from stating that it could not agree with the trial

court that the design in issue was patentable to the conclusion that if the design were

patentable because of the drop at the rear of the pommel, there was no infringement.

Nothing in the Court’s opinion suggested that it was fashioning a separate point of

2006-1562 12
novelty test for infringement. The point the Court was making was that, viewed in light

of the similarities between the prior art and the patented design, the accused design did

not contain the single feature that would have made it appear distinctively similar to the

patented design rather than like the numerous prior art designs. For that reason, the

Court held, the accused design did not infringe.

Subsequent cases applied that principle, interpreting the ordinary observer test of

Gorham to require that the perspective of the ordinary observer be informed by a

comparison of the patented design and the accused design in light of the prior art, so as

to enable the fact-finder to determine whether the accused design had appropriated the

inventiveness of the patented design. For example, two cases decided in the wake of

Whitman Saddle shed light on the Supreme Court’s analysis in Whitman Saddle and

illustrate the application of the ordinary observer test in light of the prior art.

In the first of those cases, Bevin Brothers Manufacturing Co. v. Starr Brothers

Bell Co., 114 F. 362 (C.C.D. Conn. 1902), the patent drawing showed an oblate

spheroid and neck, and the claim covered “a bell as herein shown and described.”

Sitting in equity, the court addressed both validity and infringement, noting that the test

of identity on both issues “is the eye of the ordinary observer.” Id. at 363. After noting

that the patented form was commonly found in a variety of prior art structures, the court

held that the “defense of want of patentable novelty is sustained.” Id. As for

infringement, the court again consulted particular objects in the prior art having a similar

shape, including a door knob, and concluded that “[t]he shape of the defendant’s bell

differs from plaintiff’s more widely than plaintiff’s differs from the door knob, and

therefore defendants’ construction does not infringe the patent.” Id. Thus, the court’s

2006-1562 13
approach, like that of the Supreme Court in Whitman Saddle, did not employ a point of

novelty test, but invoked the ordinary observer test in which the observer was

comparing the patented and accused designs in the context of similar designs found in

the prior art.

The second case, Zidell v. Dexter, 262 F. 145 (9th Cir. 1920), cited Whitman

Saddle for the proposition that under the ordinary observer standard, a patented design

that consists “only of bringing together old elements with slight modifications of form” is

not infringed by “another who uses the same elements with his own variations of

form . . . if his design is distinguishable by the ordinary observer from the patented

design.” Id. at 146. The court emphasized the importance of similar prior art designs to

the determination of infringement under the ordinary observer test:

The evidence shows that at and prior to the conception of this design
there were in use and on sale very many similar garments, with variations
in design so slight as to leave to the ordinary observer the impression of a
very general resemblance, and we must assume that to womankind, who
are the purchasers in the main of this class of garment, these various
coincident forms of garments were known, and whether such purchasers
would be deceived into taking the garments which are alleged to infringe
for a garment of the patented design would necessarily depend largely
upon that general knowledge.

Id. at 147.

Some years later, the Sixth Circuit addressed a similar issue in a case involving a

design patent on a combination ash tray and electric lighter. Applied Arts Corp. v.

Grand Rapids Metalcraft Corp., 67 F.2d 428 (6th Cir. 1933). The district court found

infringement by two of the defendant’s designs upon finding that the resemblance

between the patented design and the accused design was such as to deceive the

ordinary observer. In analyzing the case, the court addressed the question whether the

2006-1562 14
ordinary observer test of Gorham was in conflict with the principle that “similitude of

appearance is to be judged by the scope of the patent in relation to the prior art.” Id. at

429.

The court explained that the ordinary observer of the Gorham test was not one

“who has never seen an ash tray or a cigar lighter, but one who, though not an expert,

has reasonable familiarity with such objects,” and is capable of assessing the similarity

of the patented and accused designs in light of the similar objects in the prior art. 67

F.2d at 430. Viewing the ordinary observer test in that manner, the court stated:

[W]hile there is some similarity between the patented and alleged
infringing designs, which without consideration of the prior art might seem
important, yet such similarity as is due to common external configuration is
no greater, if as great, between the patented and challenged designs as
between the former and the designs of the prior art.

Id. After noting the similarities between the patented design and the prior art designs,

the court concluded that the differences between the two “are no greater than those that

exist between the patented design and the alleged infringing designs.” Accordingly, the

court concluded, assuming the patent to be valid “it is quite clear it is entitled to a very

limited interpretation and that so limited the defendant’s designs do not infringe.” Id.

The court ruled that while it was aware that similarity “is not to be determined by making

too close an analysis of detail,” nonetheless, “where in a crowded art the composite of

differences presents a different impression to the eye of the average observer (as

above defined), infringement will not be found.” Id.

That precedent was followed by the Eighth Circuit in Sears, Roebuck & Co. v.

Talge, 140 F.2d 395 (8th Cir. 1944). The district court in that case held that the

defendant’s home fruit juicer infringed the plaintiff’s patents on fruit juicer designs. The

2006-1562 15
court stated that the test for design patent infringement involves two elements: (1) “the

identity of appearance, or sameness of effect as a whole upon the eye of an ordinary

purchaser must be such as to deceive him, inducing him to purchase one, supposing it

to be the other” and (2) “the accused device must appropriate the novelty in the

patented device which distinguishes it from the prior art.” Id. at 395-96. To make the

latter determination, the court explained, “requires a comparison of the features of the

patented designs with the prior art and with the accused design.” Id. at 396. By

examining the prior art fruit juicers, the court was able to identify the “novel elements

embodied in the [patented] design.” The court then determined that there was no

identity of appearance with respect to those elements between the claimed designs and

the accused products. Id.

The Sears, Roebuck and Applied Arts cases, in turn, became the principal

precedents relied upon by this court in the seminal Litton Systems case to which this

court’s precedents dealing with the point of novelty test trace their origin. In Litton

Systems, as in Sears, Roebuck, the court identified the Gorham ordinary observer test

as the starting point for design patent infringement. Quoting from Sears, Roebuck, the

Litton court added, however, 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.’” 728 F.2d at 1444. That is, the court added, after comparing two items

through the eyes of the ordinary observer, the court must, to find infringement, “attribute

their similarity to the novelty which distinguishes the patented device from the prior art.”

Id. The court then referred to that second test as the point of novelty approach, and that

2006-1562 16
tag has been applied to the second part of the design patent infringement test ever

since.

In analyzing the claim of infringement, the court in Litton Systems focused on

what it characterized as the novelty of the patent in suit, i.e., “the combination on a

microwave oven’s exterior of a three-stripe door frame, a door without a handle, and a

latch release lever on the control panel.” Significantly, however, the court quoted from

the Applied Arts case and stated that the degree of similarity between the accused

design and the patented design had to be assessed in light of the designs in the prior

art. The court noted that where, as in the case before it, “a field is crowded with many

references relating to the design of the same type of appliance, we must construe the

range of equivalents very narrowly.” 728 F.2d at 1444. Accordingly, the court held that

the scope of protection of the patent in that case was limited to “a narrow range” that did

not include the accused design. Id.

As noted, this court has cited Litton Systems for the proposition that the point of

novelty test is separate from the ordinary observer test and requires the patentee to

point out the point of novelty in the claimed design that has been appropriated by the

accused design. We think, however, that Litton and the predecessor cases on which it

relied 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. 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

2006-1562 17
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. It was

for that reason that the Supreme Court in Whitman Saddle focused on the one feature

of the patented saddle design that departed from the prior art—the sharp drop at the

rear of the pommel. To an observer familiar with the multitude of prior art saddle

designs, including the design incorporating the Granger pommel and the Jenifer cantle,

“an addition frequently made,” 148 U.S. at 682, the sharp drop at the rear of the pommel

would be important to the overall appearance of the design and would serve to

distinguish the accused design, which did not possess that feature, from the claimed

design.

The same can be said of the courts’ analysis in Bevin Brothers, Zidell, Applied

Arts, and Sears, Roebuck. In Bevin Brothers and Zidell, the courts emphasized that the

defendant’s product would appear different from the plaintiff’s protected design to an

ordinary observer aware of the great number of closely similar prior art designs. In

Applied Arts, the accused ash tray would not appear to be the same as the claimed ash

tray as long as “similitude of appearance is . . . judged by the scope of the patent in

relation to the prior art.” 67 F.2d at 429. And in Sears, Roebuck, the court concluded

that the accused fruit juicer would not appear similar to the claimed design if the fact-

finder performed the required “comparison of the features of the patented designs with

the prior art and with the accused design.” 140 F.2d at 396.

Not only is this approach consistent with the precedents discussed above, but it

makes sense as a matter of logic as well. Particularly in close cases, it can be difficult

to answer the question whether one thing is like another without being given a frame of

2006-1562 18
reference. The context in which the claimed and accused designs are compared, i.e.,

the background prior art, provides such a frame of reference and is therefore often

useful in the process of comparison. Where the frame of reference consists of

numerous similar prior art designs, those designs can highlight the distinctions between

the claimed design and the accused design as viewed by the ordinary observer.

Applying the ordinary observer test with reference to prior art designs also avoids

some of the problems created by the separate point of novelty test. One such problem

is that the point of novelty test has proved difficult to apply in cases in which there are

several different features that can be argued to be points of novelty in the claimed

design. In such cases, the outcome of the case can turn on which of the several

candidate points of novelty the court or fact-finder focuses on. The attention of the court

may therefore be focused on whether the accused design has appropriated a single

specified feature of the claimed design, rather than on the proper inquiry, i.e., whether

the accused design has appropriated the claimed design as a whole. See Amini

Innovation Corp. v. Anthony Cal., Inc., 439 F.3d 1365, 1370-71 (Fed. Cir. 2006);

Keystone Retaining Wall Sys., Inc. v. Westrock, Inc., 997 F.2d 1444, 1450 (Fed. Cir.

1993); Braun Inc., 975 F.2d at 820.

In addition, the more novel the design, and the more points of novelty that are

identified, the more opportunities there are for a defendant to argue that its design does

not infringe because it does not copy all of the points of novelty, even though it may

copy most of them and even though it may give the overall appearance of being

identical to the claimed design. In such cases, a test that asks how an ordinary

observer with knowledge of the prior art designs would view the differences between the

2006-1562 19
claimed and accused designs is likely to produce results more in line with the purposes

of design patent protection.

This court has characterized the purpose of the point of novelty test as being “to

focus on those aspects of a design which render the design different from prior art

designs.” Sun Hill Indus., Inc., 48 F.3d at 1197, quoting Winner Int’l Corp. v. Wolo Mfg.

Corp., 905 F.2d 375, 376 (Fed. Cir. 1990). That purpose can be equally well served,

however, by applying the ordinary observer test through the eyes of an observer familiar

with the prior art. If the accused design has copied a particular feature of the claimed

design that departs conspicuously from the prior art, the accused design is naturally

more likely to be regarded as deceptively similar to the claimed design, and thus

infringing. At the same time, unlike the point of novelty test, the ordinary observer test

does not present the risk of assigning exaggerated importance to small differences

between the claimed and accused designs relating to an insignificant feature simply

because that feature can be characterized as a point of novelty.

This approach also has the advantage of avoiding the debate over the extent to

which a combination of old design features can serve as a point of novelty under the

point of novelty test. An ordinary observer, comparing the claimed and accused

designs in light of the prior art, will attach importance to differences between the

claimed design and the prior art depending on the overall effect of those differences on

the design. If the claimed design consists of a combination of old features that creates

an appearance deceptively similar to the accused design, even to an observer familiar

with similar prior art designs, a finding of infringement would be justified. Otherwise,

infringement would not be found.

2006-1562 20
 One function that has been served by the point of novelty test, according to

Swisa and its supporting amici, is to cabin unduly broad assertions of design patent

scope by ensuring that a design that merely embodies or is substantially similar to prior

art designs is not found to infringe. Again, however, we believe that the preferable way

to achieve that purpose is to do so directly, by relying on the ordinary observer test,

conducted in light of the prior art. Our rejection of the point of novelty test does not

mean, of course, that the differences between the claimed design and prior art designs

are irrelevant. To the contrary, examining the novel features of the claimed design can

be an important component of the comparison of the claimed design with the accused

design and the prior art. But the comparison of the designs, including the examination

of any novel features, must be conducted as part of the ordinary observer test, not as

part of a separate test focusing on particular points of novelty that are designated only

in the course of litigation.

On the basis of the foregoing analysis, we hold that the “point of novelty” test

should no longer be used in the analysis of a claim of design patent infringement.

Because we reject the “point of novelty” test, we also do not adopt the “non-trivial

advance” test, which is a refinement of the “point of novelty” test. Instead, in

accordance with Gorham and subsequent decisions, we hold that the “ordinary

observer” test should be the sole test for determining whether a design patent has been

infringed. Under that test, as this court has sometimes described it, infringement will not

be found unless the accused article “embod[ies] the patented design or any colorable

imitation thereof.” Goodyear Tire & Rubber Co., 162 F.3d at 1116-17; see also

2006-1562 21
Arminiak & Assocs., Inc. v. Saint-Gobain Calmar, Inc., 501 F.3d 1314, 1319 (Fed. Cir.

2007).

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,

as required by Gorham. 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, as in many of the cases discussed

above and in the case at bar. Where there are many examples of similar prior art

designs, as in a case such as Whitman Saddle, 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.

We emphasize that although the approach we adopt will frequently involve

comparisons between the claimed design and the prior art, it is not a test for

determining validity, but is designed solely as a test of infringement. Thus, as is always

the case, the burden of proof as to infringement remains on the patentee. However, if

the accused infringer elects to rely on the comparison prior art as part of its defense

against the claim of infringement, the burden of production of that prior art is on the

accused infringer. To be sure, we have stated that the burden to introduce prior art

under the point of novelty test falls on the patentee. See Bernhardt, 386 F.3d at 1384.

Under the ordinary observer test, however, it makes sense to impose the burden of

production as to any comparison prior art on the accused infringer. The accused

2006-1562 22
infringer is the party with the motivation to point out close prior art, and in particular to

call to the court’s attention the prior art that an ordinary observer is most likely to regard

as highlighting the differences between the claimed and accused design. Regardless of

whether the accused infringer elects to present prior art that it considers pertinent to the

comparison between the claimed and accused design, however, the patentee bears the

ultimate burden of proof to demonstrate infringement by a preponderance of the

evidence. As in our recent decision in In re Seagate Technology, LLC, we “leave it to

future cases to further develop the application of this standard.” 497 F.3d 1360, 1371

(Fed. Cir. 2007) (en banc).

III

One of the issues raised by this court in its order granting en banc review was

whether trial courts should conduct claim construction in design patent cases. While

this court has held that trial courts have a duty to conduct claim construction in design

patent cases, as in utility patent cases, see Elmer, 67 F.3d at 1577, the court has not

prescribed any particular form that the claim construction must take. To the contrary,

the court has recognized that design patents “typically are claimed as shown in

drawings,” and that claim construction “is adapted accordingly.” Arminiak & Assocs.,

Inc., 501 F.3d at 1319; see also Goodyear Tire & Rubber Co., 162 F.3d at 1116. For

that reason, this court has not required that the trial court attempt to provide a detailed

verbal description of the claimed design, as is typically done in the case of utility

patents. See Contessa Food Prods., Inc., 282 F.3d at 1377 (approving district court’s

2006-1562 23
construction of the asserted claim as meaning “a tray of a certain design as shown in

Figures 1-3”). 1

As the Supreme Court has recognized, 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.” Dobson v. Dornan, 118 U.S. 10, 14 (1886). The

Patent and Trademark Office has made the same observation. Manual of Patent

Examining Procedure § 1503.01 (8th ed. 2006) (“[A]s a rule the illustration in the

drawing views is its own best description.”). Given the recognized difficulties entailed in

trying to describe a design in words, 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.

With that said, it is important to emphasize that a district court’s decision

regarding the level of detail to be used in describing the claimed design is a matter

within the court’s discretion, and absent a showing of prejudice, the court’s decision to

issue a relatively detailed claim construction will not be reversible error. At the same

time, it should be clear that the court is not obligated to issue a detailed verbal

description of the design if it does not regard verbal elaboration as necessary or helpful.

In addition, in deciding whether to attempt a verbal description of the claimed design,

1
This court has required that in determining obviousness, a district court must
attempt to “translate [the] visual descriptions into words” in order to communicate the
reasoning behind the court’s decision and to enable “the parties and appellate
courts . . . to discern the internal reasoning employed by the trial court.” Durling v.
Spectrum Furniture Co., 101 F.3d 100, 102 (Fed. Cir. 1996). Requiring such an
explanation of a legal ruling as to invalidity is quite different from requiring an elaborate
verbal claim construction to guide the finder of fact in conducting the infringement
inquiry.

2006-1562 24
the court should recognize the risks entailed in such a description, such as the risk of

placing undue emphasis on particular features of the design and the risk that a finder of

fact will focus on each individual described feature in the verbal description rather than

on the design as a whole. In this case, for example, the district court came up with a

detailed verbal description of the claimed design. We see no inaccuracy in the court’s

description, and neither party has pointed to any prejudice resulting from the court’s

interpretation. Yet it is not clear that the considerable effort needed to fashion the

verbal description contributed enough to the process of analyzing the case to justify the

effort.

While it may be unwise to attempt a full description of the claimed design, a court

may find it helpful to point out, either for a jury or in the case of a bench trial by way of

describing the court’s own analysis, various features of the claimed design as they

relate to the accused design and the prior art. In a case such as this one, for example,

there would be nothing wrong with the court pointing out to a jury that in the patented

design only three sides have buffers attached, while in the accused product (and in the

three-sided Nailco patent), all of the sides have buffers attached. It would similarly be

permissible for the court to point out that, for example, although the Falley Buffer Block

has four sides, it is not hollow, unlike the design of the ’389 patent, the Nailco patent,

and the accused Swisa product.

Apart from attempting to provide a verbal description of the design, a trial court

can usefully guide the finder of fact by addressing a number of other issues that bear on

the scope of the claim. Those include such matters as describing the role of particular

conventions in design patent drafting, such as the role of broken lines, see 37 C.F.R. §

2006-1562 25
1.152; assessing and describing the effect of any representations that may have been

made in the course of the prosecution history, see Goodyear Tire & Rubber Co., 162

F.3d at 1116; and distinguishing between those features of the claimed design that are

ornamental and those that are purely functional, see Oddzon Prods., Inc. v. Just Toys,

Inc., 122 F.3d 1396, 1405 (Fed. Cir. 1997) (“Where a design contains both functional

and non-functional elements, the scope of the claim must be construed in order to

identify the non-functional aspects of the design as shown in the patent.”).

Providing an appropriate measure of guidance to a jury without crossing the line

and unduly invading the jury’s fact-finding process is a task that trial courts are very

much accustomed to, and any attempt by an appellate court to guide that process in

detail is likely to do more harm than good. We therefore leave the question of verbal

characterization of the claimed designs to the discretion of trial judges, with the proviso

that as a general matter, those courts should not treat the process of claim construction

as requiring a detailed verbal description of the claimed design, as would typically be

true in the case of utility patents.

IV

We now turn to the facts of this case. It is agreed that the general shape of the

accused nail buffer at issue in this case is the same as that of the patented buffer

design. The difference between the two is that the accused buffer has raised buffing

pads on all four sides, while the patented buffer has buffing pads on only three sides.

The two closest prior art nail buffers before the court were the Falley nail buffer, which

has a solid, rectangular cross section with slightly raised buffers on all sides, and the

Nailco patent, which shows a nail buffer design having a triangular shape and a hollow

2006-1562 26
cross section, and in which raised buffing pads are located on all three sides. The four

nail buffers are pictured below:

Falley Buffer Block Nailco Patent Swisa Buffer ’389 patent

The question before this court under the standard we have set forth above is

whether an ordinary observer, familiar with the prior art Falley and Nailco designs,

would be deceived into believing the Swisa buffer is the same as the patented buffer.

EGI argues that such an observer would notice a difference between the prior art and

the ’389 patent, consisting of “the hollow tube that is square in cross section and that

has raised pads with exposed gaps at the corners.” To support that contention, EGI

invokes the declaration of its expert witness, Kathleen Eaton. After viewing the

patented, accused, and Nailco buffers, Ms. Eaton concluded that the patented and

accused designs would “confuse an ordinary observer into purchasing the accused

buffer thinking it to be the patented buffer design.” She reached that conclusion, she

explained, because “the substantially similar appearance [between the accused and

patented designs] results from both designs having a hollow tube, square in cross

section and rectangular in length, with multiple raised rectangular pads mounted on the

sides, and that do not cover the corners of the tube.” While recognizing that the

accused buffer has pads on all four sides and that the claimed design has buffer pads

on only three sides, she stated that “I do not believe that, to an ordinary observer and

purchaser of nail buffers, the presence of one more buffer pad[s] greatly alters the

2006-1562 27
ornamental effect and appearance of the whole design as compared to the whole

patented design.”

Swisa counters that the ’389 patent closely tracks the design of the Nailco nail

buffer, except that it “add[s] a fourth side without an abrasive pad, resulting in square

ends.” In light of the close prior art buffers, including a number having square cross-

sections, Swisa argues that an ordinary observer would notice the difference between

the claimed and accused designs. To support that contention, Swisa cites the

declaration of its expert, Steve Falley. Mr. Falley addressed the differences among the

prior art designs, the accused design, and patented design, and he concluded that

you could simply add to the Nailco Buffer a fourth side without an abrasive
on it. This merely takes the Nailco Buffer to the block shape of the original
Falley Buffer Block, while keeping the hollow aspect of the Nailco Buffer.
As there had already been on the market for a long time 3-way buffer
blocks that had no abrasive on one side, it was also obvious after the
Nailco Buffer that you could have a three way hollow buffer that had four
sides but with no abrasive on one side.

Mr. Falley added that “four-way” nail buffers having four different abrasive surfaces

have been made since 1985, and that four-sided “buffer blocks” have been on the

market since 1987. He pointed to catalogs showing three-sided and four-sided buffer

blocks that have been offered for sale since at least 1994, and in light of his knowledge

of the industry, he stated that the “number of sides with abrasive surface on them would

be important to purchasers because it determines whether a buffer is a “three way

buffer” or a “four way buffer.” Accordingly, he concluded:

The difference between a buffer with abrasive on three sides—a
“three-way buffer”—and a buffer with abrasive on four sides—a “four-way
buffer”—is immediately apparent to any consumer used to buying nail
buffers. Even if such a consumer did not have a preference for either
three-way or four-way buffers (although they almost always do), they
would at a glance be able to tell that a buffer with abrasive on only three

2006-1562 28
 sides had abrasive on three sides, and was a three-way buffer, while a
buffer with abrasive on four sides had abrasive on all four sides, and was
a four-way buffer. I cannot imagine consumers would buy buffers with
abrasive on four sides thinking that they were buying buffers with abrasive
on three sides.

The problem with Ms. Eaton’s declaration is that she characterized the accused

and patented designs as similar because they both have square cross sections and

“multiple” raised buffer pads, without directly acknowledging that the patented design

has three pads while the accused design has four, one on each side. She also failed to

address the fact that the design of the Nailco patent is identical to the accused device

except that the Nailco design has three sides rather than four. Thus, she could as

easily have said that the Nailco buffer design “is like the accused design because both

designs have a hollow tube, have multiple rectangular sides with raised rectangular

pads mounted on each side that do not cover the corners of the tube,” in which case the

Nailco prior art buffer would be seen to closely resemble the accused design. Nothing

about Ms. Eaton’s declaration explains why an ordinary observer would regard the

accused design as being closer to the claimed design than to the Nailco prior art patent.

In fact, Ms. Eaton’s reference to the prior art buffers is limited to the single, and

conclusory, comment that an ordinary observer and purchaser of nail buffers would

consider the patented design and the accused buffer to be substantially similar,

“particularly in light of other nail buffers, such as a solid block buffer and the hollow

triangular Nailco buffer.”

In light of the similarity of the prior art buffers to the accused buffer, we conclude

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

2006-1562 29
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, we

reach the same conclusion that the district court reached, and for many of the same

reasons. Although we do so by using the ordinary observer test as informed by the

prior art, rather than by applying the point of novelty test, our analysis largely tracks that

of the district court. After analyzing the Nailco patent and the claimed design, as they

related to the accused design, the district court concluded that “in the context of nail

buffers, a fourth side without a pad is not substantially the same as a fourth side with a

pad.” While the district court focused on the differences in the particular feature at issue

rather than the effect of those differences on the appearance of the design as a whole,

we are satisfied that the difference on which the district court focused is important,

viewed in the context of the prior art.

Finally, although we do not adopt the “non-trivial advance” test employed by the

panel in this case, we note that our analysis under the ordinary observer test is parallel

to the panel’s approach in an essential respect. The panel focused on viewing the

difference between the claimed and accused designs in light of the prior art, as we do.

The panel wrote: “The Swisa buffers have raised, abrasive pads on all four sides.

When considering the prior art in the nail buffer field, this difference between the

accused design and the patented design cannot be considered minor.” 498 F.3d at

1358. That point captures the essence of the rationale of our decision today, even

though the panel decision employed a different analytical approach. For the foregoing

reasons, we sustain the district court’s entry of summary judgment of no infringement,

but we do so under the ordinary observer test in the form that we have adopted, and

2006-1562 30
without using the point of novelty test that we have disapproved. In the language used

by the Supreme Court in Gorham, 81 U.S. at 528, we hold that the accused design

could not reasonably be viewed as so similar to the claimed design that a purchaser

familiar with the prior art would be deceived by the similarity between the claimed and

accused designs, “inducing him to purchase one supposing it to be the other.”

AFFIRMED.

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