In a recent Federal Circuit decision involving massage device designs, Chief Judge Kimberly Moore’s dissent highlighted the challenges with subjectivity and comparing design patents.
The chief judge said her panel mates wrongly upheld a February 2 summary judgment of noninfringement, arguing the court has focused on product differences rather than the overall similarity required in design patent analysis and unintentionally changed its 2008 en banc decision in Egyptian Goddess Inc. v. Swisa.
Finnegan partner Beth Ferrill told Law360 that the Federal Circuit’s interpretation of Egyptian Goddess has drifted over time. “There is language in Egyptian Goddess that suggests that that consideration of prior art is only important when the two designs are not plainly dissimilar. Then over time, that not plainly dissimilar language has become the standard for a motion to dismiss.”
Beth emphasized the lack of clarity around what “plainly dissimilar” means and the resulting inconsistencies across district courts. She also agreed with Judge Moore’s analogy comparing design patent analysis to a “spot the difference” puzzle, noting: "The worst copycats are going to copy everything exactly, but the reality is most of them are more sophisticated than that. They are going to copy certain elements, but not other elements. Even with those types of changes, it is still possible for a modified design to fall within the overall visual impression of a claimed design. But if you are playing the spot the difference game, you will get distracted by the differences, and I think fail to see the similarities."
Beth noted that unlike utility patent owners, design patent owners unfortunately cannot assert the doctrine of equivalents. “The doctrine of equivalents gives us a little bit of wiggle room when something isn’t lining up exactly the same, but has the same function, way [or] result.” A strict substantial‑similarity test, she warned, “really is robbing the [design] patent owner of claim scope that they were awarded by the patent office.”
