Under the Federal Circuit’s decision in Lawman Armor Corp. v. Winner International LLC, 77 USPQ2d 2017 (Fed. Cir. 2006), the Federal Circuit affirmed the district court’s holding that Winner (Defendant) did not infringe U.S. Patent No. Des. 357,621 because various patents that Winner cited collectively but not individually disclosed each of Lawman’s (Plaintiff) points of novelty.

To determine infringement of a design patent claim, the court must apply the “ordinary observer’ test and the ‘points of novelty’ test. Both prongs must be met for there to be infringement. In Lawman Armor Corp., the district court held that there were questions of fact as to the ordinary observer test that precludes summary judgment under the ‘ordinary observer test,’ but granted summary judgement under the ‘points of novelty’ test.

Lawman had specified eight ‘points of novelty” that allegedly distinguished the patented design from the prior art. Winner listed various prior art patents that collectively but not individually disclosed the eight ‘points of novelty.’ The district court held that Winner did not infringe the ’621 patent. Lawman attempted to argue that the combination of the old elements was a point of novelty. The Federal Circuit rejected Lawman’s contention that the combination of old elements is a point of novelty.

My Comment: The Lawman Court appears to imply to that the ’621 patent cannot be infringed by anyone. If a competitor were to manufacture an identical product incorporating all of Lawman’s patented design, then the competitor would merely have to put forth the same prior art patents that Winner put forth to avoid infringement.

Judge Markey once said that “virtually all inventions are ‘combinations,’ and … every invention is formed of ‘old’ elements … Only God works from nothing. Man must work with old elements.”

Did this decision greatly diminish the value of design patents?