Last year in Egyptian Goddess, the Federal Circuit ruled that the point of novelty test should no longer be used as the test for infringement of design patents. Instead, the ordinary observer test should be used. In that case, the court left open the question of which test should be used to determine validity of a design patent.
Last week, the Federal Circuit determined in International Seaway Trading Corp. v. Walgreens Corp. that only the ordinary observer test should be used for determination of invalidity of a design patent as well. Thus, it appears that the point of novelty test has been eliminated completely.
Previously, the tests for design patent invalidity and infringement had included both the ordinary observer test and the point of novelty test. In applying the ordinary observer test, the court would compare the patented design with the accused device to determine infringement, and the patented design to the prior art reference to determine validity.
In applying the point of novelty test for infringement, the court would determine whether the accused design appropriated the points of novelty of the patented design. To determine the points of novelty, the patented design was compared to the prior art. For validity, the court would compare the patented design with the prior art reference to determine whether the patented design appropriated the points of novelty of the prior art reference.
In Egyptian Goddess, the Federal Circuit abandoned the point of novelty test for design patent infringement and held that the ordinary observer test is the sole test for design patent infringement. The ordinary observer was “deemed to view the differences between the patented design and the accused product in the context of the prior art.” The court determined that the two tests sometimes lead to conflicting results.
In International Seaway, the Federal Circuit held that for the same reason that the point of novelty test was no long applicable for infringement determinations, the sole test for anticipation in design patent cases is the ordinary observer test. The Federal Circuit did remand the case to the district court because it misapplied the ordinary observer test in this case.