On Monday, September 22, 2008, the United States Court of Appeals for the Federal Circuit decided the much anticipated design patent case – Egyptian Goddess v. Torkiya.   This decision is quite important because it changes the law applicable to design patent infringement litigation, and because all of the judges of the Court heard the case together and all agreed!  It is rare for all of the judges to hear a single case, and when this happens it is called an “en banc” decision, so having a unanimous en banc decision is quite unusual.

In any event, the Federal Circuit has done away with the point of novelty test, set the new design patent infringement test as the “ordinary observer” test, explained that district courts are not obligated to issue a detailed verbal description of the design claims if it does not regard verbal elaboration as necessary or helpful, and recognized that if the accused infringer elects to rely on the comparison prior art as part of its defense against the claim of infringement, the burden of production of that prior art is on the accused infringer.

The Federal Circuit explained:

We hold that the “point of novelty” test should no longer be used in the analysis of a claim of design patent infringement. Because we reject the “point of novelty” test, we also do not adopt the “non-trivial advance” test, which is a refinement of the “point of novelty” test. Instead, in accordance with Gorham and subsequent decisions, we hold that the “ordinary observer” test should be the sole test for determining whether a design patent has been infringed. Under that test, as this court has sometimes described it, infringement will not be found unless the accused article “embod[ies] the patented design or any colorable imitation thereof.” Goodyear Tire & Rubber Co., 162 F.3d at 1116-17; see also Arminiak & Assocs., Inc. v. Saint-Gobain Calmar, Inc., 501 F.3d 1314, 1319 (Fed. Cir. 2007).

In some instances, the claimed design and the accused design will be sufficiently distinct that it will be clear without more that the patentee has not met its burden of proving the two designs would appear “substantially the same” to the ordinary observer, as required by Gorham. In other instances, when the claimed and accused designs are not plainly dissimilar, resolution of the question whether the ordinary observer would consider the two designs to be substantially the same will benefit from a comparison of the claimed and accused designs with the prior art, as in many of the cases discussed above and in the case at bar. Where there are many examples of similar prior art designs, as in a case such as Whitman Saddle, differences between the claimed and accused designs that might not be noticeable in the abstract can become significant to the hypothetical ordinary observer who is conversant with the prior art.

We emphasize that although the approach we adopt will frequently involve comparisons between the claimed design and the prior art, it is not a test for determining validity, but is designed solely as a test of infringement. Thus, as is always the case, the burden of proof as to infringement remains on the patentee. However, if the accused infringer elects to rely on the comparison prior art as part of its defense against the claim of infringement, the burden of production of that prior art is on the accused infringer. To be sure, we have stated that the burden to introduce prior art under the point of novelty test falls on the patentee. See Bernhardt, 386 F.3d at 1384. Under the ordinary observer test, however, it makes sense to impose the burden of production as to any comparison prior art on the accused infringer. The accused infringer is the party with the motivation to point out close prior art, and in particular to call to the court’s attention the prior art that an ordinary observer is most likely to regard as highlighting the differences between the claimed and accused design. Regardless of whether the accused infringer elects to present prior art that it considers pertinent to the comparison between the claimed and accused design, however, the patentee bears the ultimate burden of proof to demonstrate infringement by a preponderance of the evidence. As in our recent decision in In re Seagate Technology, LLC, we “leave it to future cases to further develop the application of this standard.” 497 F.3d 1360, 1371 (Fed. Cir. 2007) (en banc).