Design Patent Fails Point of Novelty Test
According to Senior Circuit Judge Friedman,
In comparing a design patent claim to the accused design to determine infringement, a court must apply "two distinct tests, both of which must be satisfied in order to find infringement: (a) the ‘ordinary observer’ test, and (b) the ‘point of novelty’ test." Contessa Food Prods., Inc. v. Conagra, Inc., 282 F.3d 1370, 1377 (Fed. Cir. 2002). See Unidynamics Corp. v. Automatic Prods. Int’l, Ltd., 157 F.3d 1311, 1323 (Fed. Cir. 1998). 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." Tropicana Prods., Inc. v. Land O’ Lakes, Inc., 286 F. Supp. 2d 343, 345 (D. Del. 2003) (citing Braun Inc. v. Dynamics Corp. of Am., 975 F.2d 815, 820 (Fed. Cir. 1992)). 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." Litton Sys., Inc. v. Whirlpool Corp., 728 F.2d 1423, 1444 (Fed. Cir. 1984), (quoting Sears, Roebuck & Co. v. Talge, 140 F.2d 395, 396 (8th Cir. 1944)). See generally Bernhardt, L.L.C. v. Collezione Europa USA, Inc., 386 F.3d 1371, 1384 (Fed. Cir. 2004) (discussing the required showing for the "point of novelty" test). . . .
We have examined the patents that Winner cited and conclude that they
disclose the eight "points of novelty" that Lawman specified. The district court
was not required to make the more detailed rulings or findings that Lawman
apparently seeks, or to specify which particular patents disclosed each of the
eight points of novelty.
Lawman stresses that there is no "suggestion to combine visual elements in
the alleged prior art to achieve the ‘621 patent." Whether there is any
suggestion to combine prior art references may be relevant in a validity inquiry
to determine obviousness. Litton, 728 F.2d at 1444. It has no place in the
infringement issue in this case. Id.
What Lawman’s contention comes down to is that the D’621 patent contains a
ninth "point of novelty," namely, the combination in a single design of the
eight non-novel "points of novelty" it embodies. This argument is inconsistent
with, and would seriously undermine, the rationale of the "points of novelty"
. . . If 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. The practical effect of
Lawman’s theory would be virtually to eliminate the significance of the "points
of novelty" test in determining infringement of design patents, and to provide
patent protection for designs that in fact involve no significant changes from
the prior art. Id. ("To consider the overall appearance of a design without
regard to prior art would eviscerate the purpose of the ‘point of novelty’
approach, which is to focus on those aspects of a design which render the design
different from prior art designs.").
Lawman seeks support for its argument in our decision in Litton Systems v.
Whirlpool, 728 F.2d 1423. That decision does not aid Lawman.
In Litton we reversed a district court’s finding of infringement of a design
patent because of a trial court’s "failure to apply the correct legal standard
of infringement in design patent cases." Id. at 1444. This court explained that
under the "points of novelty" test, "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." Id. Litton did not hold that the
combination of several points of novelty was itself a point of novelty, but
rather held that there were several points of novelty in the patented design,
none of which was found in the accused design. Lawman’s argument would stand the
"points of novelty" test on its head, and defeat its purpose.