On November 26, 2007, the Federal Circuit granted en banc review of the decision in Egyptian Goddess, Inc. v. Swisa, Inc. The case involved a design patent for an "ornamental nail buffer," which EGI claimed to be infringed by Swisa. Swisa moved for summary judgement on the grounds that Swisa's nail buffers did not contain the point of novelty of the patented design. The District Court granted summary judgment; the CAFC upheld the holding, stating that : "the point of novelty must include features of the claimed design that distinguish it from the prior art. Additionally, 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."
The CAFC has now requested both parties to file briefs on the following issues:
- Should "point of novelty" be a test for infringement of design patent?
- If so, (a) should the court adopt the non-trivial advance test adopted by the panel majority in this case; (b) should the point of novelty test be part of the patentee's burden on infringement or should it be an available defense; (c) should a design patentee, in defining a point of novelty, be permitted to divide closely related or, ornamentally integrated features of the patented design to match features contained in an accused design; (d) should it be permissible to find more than one "point of novelty" in a patented design; and (e) should the overall appearance of a design be permitted to be a point of novelty?
- Should claim construction apply to design patents, and, if so, what role should that construction play in the infringement analysis?
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