Federal Circuit Scraps Point of Novelty for Design Patents

I'm happy to report that the case I recently argued at the Federal Circuit resulted in new law for anticipation of design patents.  Here is the article written for Darby & Darby.  Articles have also appeared in the National Law Journal and IP 360 (subscriptions required for both).

The Court of Appeals for the Federal Circuit has changed the law of anticipation for design patents.  The so-called "point of novelty" test was recently scrapped in a case handled by Darby & Darby.  Representing Walgreens and its supplier, Darby litigator Mark P. Walters argued for the Court to bring its case law in line with another recent decision that had changed the law of design patent infringement, Egyptian Goddess v. Swisa, 543 F.3d 665 (Fed. Cir. 2008). "The Court's decision in Egyptian Goddess eliminated the point of novelty test for infringement, so it made sense that the same should happen for anticipation," Walters said.  Writing for the majority, Judge Timothy Dyk agreed, saying "[i]t has been well-established for over a century that the same test must be used for both infringement and anticipation."  The case is International Seaway Trading Corp. v. Walgreens, (2009-1237), and the patents-in-suit are U.S. Patent No. D529,263; D545,032, and D545,033.

Seattle Patent Litigation Update Fall 2009

Seeing that it has been almost a month since I last posted, I thought I needed to break the silence and provide an update on the world of Seattle patent litigation.

For my part, things have been extremely busy over the last 30 days, which included a trip back to the CAFC to argue a design patent case, one of the first that might extend the Egyptian Goddess holding into determinations of invalidity. The case is International Seaway Trading Corp. v. Walgreens (2009-1237). My panel was made up of Judge Bryson, Dyk, and Clevenger. Here is a link to the audio. On the day I argued, my colleague here at Darby's Seattle office, David Tellekson, argued National Products Inc. v. Gamber Johnson LLC (2009-1195) before a panel made up of Judges Newman, Moore, and Plager. I was able to watch David's argument live (audio link here), after which I retired to the library on the 4th floor of the Howard T. Markey National Courts building to review a few more cases and finish my outline (none of which I was able to give given the constant peppering of questions I received from the panel).

I can report the case that David argued, an appeal from a decision by Judge Jones here in the Western District of Washington, where we represented the appellee, National Products Inc, the panel summarily affirmed under Circuit Rule 36. As for my case, I'm still waiting to hear.

In other Seattle patent litigation news, there have been just four cases filed since August. They are listed below. Year to date, only 30 patent cases have been filed in the WD of WA, that is substantially less than last year at this time, there were 39 patent cases filed by by the end of October 2008.

Here is a list of the cases filed since August.

October 5, 2009
Laughing Rabbit Inc v. Stever (Judge Pechman)

October 1, 2009
Logan v. BabyPlus Company et al (Judge Robart)

September 29, 2009
Lectent LLC v. SAS Group Inc et al (Judge Leighton)

August 25, 2009
National Products, Inc v. Gamber-Johnson LLC (Judge Pechman)

Chef'n Can't Halt Sales of Trudeau's Vegetable Steamer

In a case testing the scope of a design patent after the Federal Circuit's en banc decision in Egyptian Goddess v. Swisa, local food-appliance innovator, Chef'n Corporation, was recently unsuccessful in obtaining a preliminary injunction against competitor, Trudeau Corporation of Boucherville, Quebec, Canada.

From Judge Pechman's order:

"A visual comparison of the ‘503 design and the Trudeau steamer demonstrates certain similarities, but an ordinary observer with knowledge of the prior art would not confuse the two. Both have very slightly concave center circles surrounded by wider, more concave circular brim. (See Holcomb Decl., Ex. K at 1-9.) There are, however, two striking visual distinctions between the ‘503 Patent and the Trudeau steamer. First, unlike Trudeau’s steamer which has only a flat center and one change in concavity, the ‘503 Patent possesses circumferential rings illustrating multiple degrees of concavity. The ‘503 design has two intermediate rings between the center of the steamer and the top ridge. ‘503 Patent, Fig. 4. Trudeau’s steamer, in contrast, has only one intermediate change in concavity. (Holcomb Decl., Ex. K at 6.) Second, Chef’n’s design possesses a small, depressed ring at the center of the steamer. ‘503 Patent, Figs. 1-2, 5. Trudeau’s steamer lacks any such inner circumferential ring. (Holcomb Decl., Ex. K at 5.) The Court is aware that, pursuant to Egyptian Goddess and Gorham, isolated differences are less important than “general appearance and effect.” Egyptian Goddess, Inc., 541 F.3d at 670 (quoting Gorham, 81 US at 531). The two visual distinctions the Court observes, however, are not simply isolated differences. The ‘503 design is visually more complex than the Trudeau steamer and an ordinary observer would not confuse the two."

chef%27n_order_denying_PI.pdf

CAFC Rules in Egyptian Goddess: Point of Novelty Test Gone (sort of)

The Federal Circuit issued its en banc decision today in Egyptian Goddess, Inc. v. Swisa, Inc. (2006-1562). In a decision authored by Judge Bryson, the Court thoughtfully and carefully reviewed the history of the "point of novelty test," concluding that the test in its current incarnation "is of quite recent vintage" and holding that it "should no longer be used in the analysis of a claim of design patent infringement."


While the case holding is quite clear in ridding design patent law of the point of novelty test, the opinion does not say one may ignore the prior art during an analysis of design patent infringement. On the contrary, "when the claimed and accused designs are not plainly dissimilar, resolution of the question whether the the ordinary observer would consider the two designs to be substantially similar will benefit from comparison of the claimed and accused designs with the prior art." Eliminated from the plaintiff's burden of proof in a design patent case, the point of novelty test therefore survives as a defensive doctrine, where the burden of producing prior art rests on the accused infringer. Under this new legal framework, one accused of design patent infringement is free to argue that any similarity between its device and the patented design results from prior art features or combinations and that the hypothetical ordinary observer would therefore not find the two designs "substantially the same."



What this means to a litigator like me is that a lot more design patent cases will go to the jury under the new test. Whether similarity in any given case is due to copying the prior art or due to actionable copying of the patented design is something the jury will now be asked to sort out on a more frequent basis. Score one point for trial lawyers and another for design patent holders in general.



In addition to eliminating the point of novelty test as a part of the Plaintiff's burden of proof for infringement, the opinion says that a detailed claims construction is not required, and that "the preferable course ordinarily will be for a district court not to attempt to 'construe' a design patent claim by providing a detailed verbal description of the claimed design." A district court may (in its discretion) reduce the design patent claim to a verbal or written pronouncement of scope, and the opinion gives several examples where a court might choose to do so; like where features appear in broken lines or where features have a purely utilitarian (as opposed to ornamental) purpose. The court has only one proviso "as a general matter, those courts should not treat the process of claim construction as requiring a detailed verbal description of the claimed design, as would typically be true in the case of utility patents."


So there you have it. Life just got a little easier for those owning design patents.

Amicus Briefs Filed in Egyptian Goddess v. Swisa

Amicus briefs in support of the respondent or neither party were filed earlier this week in the en banc case Egyptian Goddess v. Swisa. Calling this case "important" to the future of design patent law in the U.S. is probably a gross understatement. Here is a link to the en banc order. It could fundamentally change how design patent infringement and validity are considered, affecting wide sectors of American industry, from footwear to food. Here is a link to the AIPLA's original brief filed in support of the petition for rehearing. I was fortunate enough to have the opportunity to work with Kevin Kramer of Pillsbury Winthrop in connection with a brief we filed on behalf of the Federal Circuit bar Association.

At the bottom of this post is a link the the FCBA's brief, filed in support of neither party and arguing generally against the Panel Majority's "non-trivial advancement" test. The brief also argues for continued use of claims construction in design patent cases.

For some more information about this case, click here.

Amicus%20Brief%20of%20Federal%20Circuit%20Bar%20Association.pdf

The Art of Networking, A Seattle Patent Litigator's Perspective from the 2008 AIPLA Mid-Winter Institute in Phoenix, Arizona

I left a brutally cold Seattle early Wednesday morning for Phoenix, looking for three specific things at this year's AIPLA Mid-Winter Institute: (1) some sunshine; (2) timely, relevant, and expert information on IP; and (3) a bounty of networking opportunities. So far, my quest for sunshine continues. It poured rain for about 15 minutes today, and the temperature hovered around 50 degrees all day today and yesteday, while the sun remains obscured by some high clouds as I write this post. As for timely, expert, and relevant information on IP, I think I may have learned more by scanning my RSS reader for the latest IP news. One thing that has not disappointed is the networking opportunity here at AIPLA. What a great organization for building relationships and staying in contact with clients and fellow lawyers from around the country. AIPLA is great at putting faces to names I've heard (or read) about and at providing an opportunity to discuss (and sometimes debate/argue) key issues affecting the practice of IP law in the US and abroad. One topic that has been on my mind and provided much fodder for networking discussions is the current case on review en banc before the CAFC, Egyptian Goddess v. Swisa, Inc. As many if you already know, this is a case that may completely overhaul the law of design patent infringement. I've been working diligently with a colleague, Kevin Kramer, at Pillsbury Winthrop in Washington DC, to suggest arguments and positions to take in a possible amicus brief on behalf of the Federal Circuit Bar Association. (Both Kevin and I sit on the amicus committee for the FCBA). For some of the questions up for en banc review in the CAFC's order, there appears to be consensus among many in the IP community, while on others (like whether to do away with the "point of novelty test" for design patent infringement) disagreements abound. In any event, I can't think of a better place to be at the moment than right here at AIPLA, where I can ask questions of those lawyers working in the "trenches" of patent law, who can share real-life, practical concerns with the case and the potential implications of a shift in the law for design patent infringement.

This year's AIPLA Mid-Winter Institute is at the Arizona Biltmore hotel, a hotel whose design was inspired by the great architect Frank Lloyd Wright. I will be golfing on Saturday at one of the hotel's two golf courses. AIPLA is having a tournament in the afternoon, just before I return to Seattle.

Last night, I ran into one of the most well known and respected patent lawyers in the country, Don Martens. Don will be playing golf with us on Saturday along with another member of patent law royalty, Douglas Henderson, whom I had the pleasure of meeting last night for the first time. I've had each verify their handicaps, so there will be no "sand-bagging" at Saturday's tournament.