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Combination of Old Elements Does Not Satisfy the “Point of Novelty” Test in Determining Infringement of a Design Patent

February 21, 2006

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Last Month at the Federal Circuit - March 2006

Judges: Michel, Friedman (author), Dyk

In Lawman Armor Corp. v. Winner International, LLC, No. 05-1253 (Fed. Cir. Feb. 22, 2006), the Federal Circuit upheld a SJ of noninfringement of Lawman Armor Corporation’s (“Lawman”) patent for the ornamental design for a portion of a vehicle steering wheel lock assembly.

Lawman was the exclusive licensee of U.S. Design Patent No. Des. 357,621 (“the ’621 patent”). The ’621 patent claims “[t]he ornamental design for a sliding hook portion of a vehicle steering wheel lock assembly, as shown and described.” Lawman sued Winner International, LLC and Winner Holding LLC (collectively “Winner”) in the Eastern District of Pennsylvania for infringement of the ’621 patent. Winner moved for SJ of noninfringement. In opposition, Lawman specified eight “points of novelty” in the patented design. In response, Winner simply listed Lawman’s “points of novelty” and cited to automobile wheel lock patents that depicted the alleged “points of novelty.” The district court held that Lawman’s “points of novelty” were found in the prior art and that no material issue of fact exists regarding the “point of novelty” test. Therefore, the district court granted Winner SJ of noninfringement.

The Federal Circuit affirmed, explaining that to show infringement, a design patent holder must satisfy two separate tests: (a) the “ordinary observer” test, and (b) the “point of novelty” test. The “ordinary observer” test requires comparison of the two designs from the viewpoint of the ordinary observer to “determine whether the patented design as a whole is substantially the same as the accused design.” Slip op. at 3. Under the “point of novelty” test, a court must determine whether “the accused device . . . appropriate[s] the novelty in the patented device which distinguishes it from the prior art.” Id.

Lawman did not challenge the district court’s finding that each of the points of novelty was present in the prior art. Instead, Lawman argued that the district court failed to make sufficient findings as to the scope and content of the prior art and also failed to determine the “points of novelty” of the patent. The Federal Circuit rejected these arguments, concluding that each of the eight points of novelty specified by Lawman was present in the prior art and the district court was not required to make more detailed findings.

Lawman further argued that there was no suggestion to combine the prior art references and that the combination in a single design of the eight points of novelty is itself a point of novelty. The Court rejected these arguments, concluding that “[w]hether there is any suggestion to combine prior art references may be relevant in a validity inquiry to determine obviousness. . . . It has no place in the infringement issue in this case.” Id. at 5. The purpose of the points of novelty approach is to focus on the aspects of a design that renders it different from prior designs. The Court noted that “[i]f the combination of old elements shown in the prior art is itself sufficient to constitute a ‘point of novelty’ of a new design, it would be the rare design that would not have a point of novelty.” Id. at 5-6. Thus, because all of the points of novelty of the ’621 patent were present in the prior art, the Court affirmed the SJ of noninfringement.