Combination Point of Novelty Must Be "Non-Trivial Advance"
There was also no dispute that nail buffers having square cross-sections were widely known in the prior art. Furthermore, the district court properly found that one prior art nail buffer design, illustrated in U.S. Design Patent No. 416,648 (the Nailco patent), shown below, contained each of these elements except that the body is triangular.
Focussing on just the point of novelty requirement ("substantial similarity" was not at issue), newest Circuit Judge Moore concluded that no reasonable juror could conclude that EGI’s asserted point of novelty constituted "a non-trivial advance over the prior art:"
The district court correctly determined that only if the point of novelty included a fourth side without a raised pad could it even arguably be a non-trivial advance over the prior art. 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. See Litton, 728 F.2d at 1444 (explaining that the differences between the claimed and accused designs must be considered in light of the differences between the prior art and the claimed design). Since the parties agree that the Swisa buffers do not contain a fourth side without a raised pad, summary judgment of noninfringement was properly granted. For this reason, the decision below is AFFIRMED.
In defending this new "non-triviality" requirement for points of novelty that are a combination of prior art elements, Judge Moore addressed the dissent with this footnote:
3. The dissent suggests that determining the point of novelty by a non-triviality test conflates infringement and validity analyses. Dissenting Op., at 2. Design patent law has already intertwined the infringement and validity tests. The infringement test at issue in this case is called the "point of novelty" test. The question is not whether the infringement and validity analyses are similar or conflated, they already are. The question is: When the patentee claims a combination of old prior art elements as its asserted point of novelty should the test be one of anticipation or obviousness? We conclude that non-triviality ought to apply—if the standard is akin to anticipation then a combination with even the most trivial difference would meet the standard.
Nontheless, in the view of dissenting Circuit Judge Dyk, there were still multiple flaws in the majority’s approach:
First, by conflating the criteria for infringement and obviousness, the test eviscerates the statutory presumption of validity by requiring the patentee to affirmatively prove nonobviousness. See 35 U.S.C. § 282 ("The burden of establishing invalidity of a patent or any claim thereof shall rest on the party asserting such invalidity."). The burden of proof on obviousness rests with the accused infringer and must be established by clear and convincing evidence. Under the majority’s test, however, the patentee would have to prove nonobviousness in order to establish infringement.
Second, the majority’s approach is at the same time too narrow and too broad. It is too narrow because it applies a special test only to designs which involve a combination of design elements. It is clear to me that a single point of novelty test must apply to all points of novelty, not just those involving combinations. That has invariably been the approach of our past cases. The majority’s approach is also too broad because it extends an obviousness-like test to each point of novelty, not merely the overall design (which is presently the sole focus of the obviousness analysis).
Third, determining whether each combination point of novelty represents a "non-trivial advance" over the prior art requires a difficult and restrictive inquiry in design patent cases. As we have previously noted, "[d]esign patents have almost no scope." In re Mann, 861 F.2d 1581, 1582 (Fed. Cir. 1988). Points of novelty in design patents are often not dramatically different from the prior art. It is difficult enough to assess whether an overall design would have been obvious; it is almost impossible to determine whether a particular design feature represents a trivial or substantial advance over the prior art. The majority appears willing to have this issue resolved on summary judgment without factfinding by a jury, thus relegating to the court the determination whether there is a non-trivial advance over the prior art, a determination which a court is ill suited to make and which it did not in fact make in this case.
Fourth, the majority’s test is devoid of support in the case law. The most that any of the cases cited by the majority can establish is that we have, in certain instances, used the results of our obviousness analysis to determine the point of novelty under the point of novelty test. But no case has come close to requiring a showing of nonobviousness as part of the point of novelty test.2 In Bernhardt, L.L.C. v. Collezione Europa USA, Inc., 386 F.3d 1371 (Fed. Cir. 2004), we considered only the question whether expert testimony was required for a party to establish infringement under the point of novelty test. In holding that such testimony was not required, the court merely observed that "[a] determination of the differences between the patented design and the prior art is not especially different from the factual determinations that district courts routinely undertake on other issues, such as obviousness." Id. (emphasis added). This statement in no way suggests—as the majority appears to believe, see Maj. Op. at 5—that the substantive inquiries on obviousness and infringement should be merged. Our decisions in Litton and Goodyear do not support the majority’s test either. Litton Sys., Inc. v. Whirlpool Corp., 728 F.2d 1423 (Fed. Cir. 1984), was a case in which, having determined that the differences between the patented design and the prior art rendered the overall design nonobvious, see Graham v. John Deere Co., 383 U.S. 1, 17 (1966), we then considered those differences to be the points of novelty. Litton, 728 F.2d at 1442, 1444. In Goodyear Tire & Rubber Co. v. Hercules Tire & Rubber Co., 162 F.3d 1113 (Fed. Cir. 1998), we held that the use of a similar approach by the district court was not clearly erroneous. Id. at 1119, 1121. It is one thing to suggest that a feature that renders a design nonobvious is also a point of novelty. It is quite another to hold that a point of novelty cannot exist unless it would also render the design nonobvious. Again, neither case establishes that there must be a showing of a non-trivial advance to find an asserted combination point of novelty.
Finally, the majority’s test is in fact contrary to several of our cases. In Lawman Armor Corp. v. Winner International, LLC, 437 F.3d 1383 (Fed. Cir. 2006), we rejected applying an obviousness analysis to the determination of infringement. Id. at 1385. We stated explicitly that "[w]hether there is any suggestion to combine prior art references may be relevant in a validity inquiry to determine obviousness . . . but has no place in the infringement issue in this case." Id. Other cases have treated the questions of novelty and obviousness in design cases as separate inquiries. Thus in In re Leslie, 547 F.2d 116 (CCPA 1977), our predecessor court distinguished situations "where the novelty of the design is at issue" from situations "where, as here, the issue is one of obviousness." Id. at 120; see also In re Blum, 374 F.2d 904, 908 (CCPA 1967) (although design had "an appearance which is novel in the strictest sense of the word, the rejection here is not for want of novelty but for obviousness"). I would address this case without reliance on the majority’s incorrect "non-trivial advance" standard.
I respectfully dissent.