In March 2003, beauty products company Egyptian Goddess, Inc sued competitor Dror Swisa in the northern district of Texas, alleging infringement of its US design patent (number 467,389) for an "ornamental nail buffer" design. The district court granted Swisa summary judgment of non-infringement, asserting that Egyptian Goddess had failed to satisfy its burden under the standard "point of novelty" test for design patent infringement cases.
That test, established by a 1984 Federal Circuit case, Litton Systems Inc v Whirlpool Corp, said that plaintiffs in design patent infringement cases must prove that an accused design "appropriate[s] the novelty in the patented device which distinguishes it from the prior art".
Since the only point of novelty distinguishing Egyptian Goddess' nail buffer from the prior art was the addition of a fourth side without a pad, a feature that Swisa's product did not include, the district court said that Swisa's design was not infringing.
Egyptian Goddess then appealed to the CAFC, and a majority of the Court affirmed the decision in August of 2007. However, the majority opinion also included a controversial new step for determining the point of novelty.
In its decision, the Court said: "For a combination of individually known design elements to constitute a point of novelty, the combination must be a non-trivial advance over the prior art."
This new standard of non-triviality has elicited concern from many members of the patent community, who feel that it places an unfair burden on design patentees.
They argue that, since non-obviousness must already be established during the patent application process, and a patent is presumed valid once issued, the patentee should not have to re-establish validity during an infringement suit.
In his dissenting opinion, Judge Timothy Dyk said: "By conflating the criteria for infringement and obviousness, the test eviscerates the statutory presumption of validity by requiring the patentee to affirmatively prove nonobviousness".
In November of 2007, the CAFC granted a request to rehear the case en banc, in other words by all 12 judges, to consider several key questions.
First, the Court will ask whether the "point of novelty" test should be used to determine infringement. Second, if the point of novelty test should be used, the Court will consider how that test should be administered, including whether the "non-trivial advance" test should be maintained. Lastly, the Court will ask what role, if any, claim construction should play in a design patent infringement analysis.
In its amicus brief, the American Intellectual Property Law Association said: "The Non-Triviality Requirement establishes an incorrect legal standard that will foment unnecessary litigation, and thus should be eliminated.... The new Non-Triviality Requirement improperly places a new infringement burden on a design patentee to prove that an issued design patent's point of novelty, if comprised of a combination of known elements, is a 'non-trivial advance over the prior art'."
Monday's en banc hearing will mark the Court of Appeals' second in a matter of weeks. On May 8, all 12 Federal Circuit judges heard arguments in In re Bilski, in which the Court debated the proper test for determining what constitutes patentable subject matter, specifically with respect to business method patents.
Check back with Managing IP for updates on today's hearing.
