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Design patents are obtained to protect the ornamental design, or appearance, of a particular object of manufacture, asopposed to the more common utility patents that protect useful products, processes, or compositions of matter. An appropriate test for infringement on a design patent has been refined over the years, though with difficulty due to the aesthetic nature of a design. 

In 1872, Gorham v. White established the main test that has governed design patent infringement since. Called the “ordinary observer test”, it basically states that if an ordinary observer finds a design to be similar enough to another to cause the observer to purchase it supposing it were the other, that design is infringing. However, due to difficulty of application, the federal circuit added a second test required for infringement, called the “point of novelty test” in 1984 with Litton Systems, Inc. v. Whirlpool Corp. This required that the accused device must contain substantially the same points of novelty as that of the patented design that distinguished it from the prior art.

Egyptian Goddess, Inc. v. Swisa, Inc.

The efficacy of this two-pronged test was brought into question in 2008 when the federal circuit court reviewed Egyptian Goddess, Inc. v. Swisa, Inc. Egyptian Goddess, Inc. contended that Swisa, Inc. infringed on their patent for a nail buffer design.

The case initially went to trial before the U.S, District Court for the Northern District of Texas, which found non-infringement by Swisa. The court stated that the patent holder must pass both the ordinary observer test and the points of novelty test, and concluded Swisa’s allegedly infringing product did not incorporate the point of novelty of the patented product, namely, the fourth bare side to the nail buffer.

Upon re-hearing the case, the federal circuit court addressed several questions to the parties, including whether the point of novelty test should continue to be used as a test for infringement of a design patent and how the point of novelty test should be administered, particularly when numerous features of the design differ from certain prior art designs.

The federal circuit court unanimously held the point of novelty test should no longer be used in the analysis of a claim of design patent infringement and the ordinary observer test should be the sole test for determining whether a design patent has been infringed on. The decision recognized that the point of novelty test was unnecessary because prior art can be considered as part of the ordinary observer test, and set forth the test used for design patent infringement today.

Application of the Ordinary Observer Test

The ordinary observer test discusses situations when the claimed design and the accused design will be sufficiently distinct or not plainly dissimilar. In instances where the claimed design and the accused design are sufficiently distinct, the patent owner has not met its burden of proving the two designs would appear ‘substantially the same” to the ordinary observer. Where the claimed design and accused design are not plainly dissimilar, a court will compare the claimed design and accused design with the prior art.

In design patent infringement cases, courts place the burden of proof on the patent owner to prove infringement. However, if the accused infringer relies on the comparison to prior art as part of its defense, courts will place the burden of producing such prior art on the accused infringer.

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