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Point of Novelty for a Design Patent Must Include a “Non-Trivial Advance” over the Prior Art

August 29, 2007

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Last Month at the Federal Circuit - September 2007

Judges: Dyk (dissenting), Archer, Moore (author)

[Appealed from: N.D. Texas, Judge Godbey]

In Egyptian Goddess, Inc. v. Swisa, Inc., No. 06-1562 (Fed. Cir. Aug. 29, 2007), the Federal Circuit affirmed the district court’s grant of SJ for noninfringement of U.S. Design Patent No. 467,389 (“the ’389 patent”), holding that there was no genuine issue of material fact as to whether the alleged infringing product utilized the point of novelty of the claimed design.

Egyptian Goddess, Inc. (“EGI”), owner of the ’389 patent drawn to a design for an ornamental nail buffer, sued Swisa, Inc. and Dror Swisa (collectively “Swisa”) in the U.S. District Court for the Northern District of Texas, alleging infringement of the ’389 patent. The district court granted SJ of noninfringement on the ground that the Swisa nail buffers did not contain the point of novelty of the patented design. Specifically, the district court stated that the only point of novelty in the ’389 patent over the prior art Nailco patent was the addition of a fourth side without a pad, which the Swisa nail buffers did not have.

On appeal, the Federal Circuit began by stating that infringement of a design patent requires satisfaction of both the ordinary observer test and the point of novelty test. The Court further noted that each of these tests is generally a matter for the fact-finder during the infringement stage of the proceedings, after the claim has been construed. Because the point of novelty test is part of the infringement determination, a patentee must assert at least a single novel design element or a combination of design elements that are individually known in the prior art. Citing to Smith v. Whitman Saddle Co., 148 U.S. 674, 682 (1893), among other cases, the Court then held that “[f]or 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.” Slip op. at 5. The Court stated that, contrary to the dissenting opinion, this requirement was not inconsistent with the decision in Lawman Armor Corp. v. Winner International, LLC, 437 F.3d 1383 (Fed. Cir. 2006), because Lawman did not reject a “non-trivial advance” requirement, but instead rejected the idea that a motivation to combine prior art references must be shown during an infringement analysis.

The Court next examined the ’389 patent and the asserted point of novelty in view of the “non-trivial advance” requirement. EGI’s asserted point of novelty included four elements: (1) an open and hollow body, (2) a square cross section, (3) raised rectangular pads, and (4) exposed corners. The Court noted that except for the square cross section, each element was disclosed in the prior art Nailco patent. Further, because there was no dispute that square cross-sectioned nail buffers were well known in the art, the Court reasoned that no reasonable juror could conclude that EGI’s asserted point of novelty was a “non-trivial advance” over the prior art and, therefore, the district court’s rejection of the asserted point of novelty was proper.

Further affirming the district court’s determination, the Court stated that only an asserted point of novelty including a fourth side without a raised pad could arguably meet the “non-trivial advance” requirement. Because there was no dispute that the Swisa buffer included pads on all four sides, and because this difference was not minor in view of the prior art, the Federal Circuit held that SJ of noninfringement was properly granted.

In a dissenting opinion, Judge Dyk criticized the majority’s departure from precedent in creating the new “non-trivial advance” requirement and the application of this requirement only to combinations of prior art design elements.

Judge Dyk enumerated five alleged flaws in the “non-trivial advance” requirement: (1) it eviscerates the presumption of validity by requiring the patentee to prove nonobviousness to establish infringement; (2) it is too narrow as applying a special test only to designs that involve a combination of design elements, and is too broad because it extends an obviousness-like test to each point of novelty, not merely the overall design; (3) it requires the Court to make a difficult determination of what is a trivial or a substantial advance over the prior art, a determination that should be left to the fact-finder; (4) it lacks support in case law because it requires a showing of nonobviousness by the patentee and the Court has never required such a showing during the point of novelty inquiry; and (5) the majority’s test is in fact contrary to several previous Federal Circuit decisions. Therefore, Judge Dyk believed the case should be addressed without reliance on the majority’s “non-trivial advance” standard.