The following case involved a copycat footwear that looked similar but not identical to Crocs.  The copycat footwear was being sold by quite a few companies.  Crocs had a design patent directed toward their footwear and sued these companies.  Design patents protect the ornamental look of a product.  Design patents do not prevent others from incorporating or copying a utilitarian function – that is the function of a utility patent.  Fortunately for Crocs, recent cases have broadened the scope of protection afforded by a design patent.  Crocs was ultimately successful in obtaining a judgement of infringement against at least some of the eleven companies.

The present case clarifies the new standard of design patent infringement which is the ordinary observer” test.  Under this test, infringement exist if the ordinary observer, familiar with the prior art designs, would be deceived into believing that the accused product is the same as the patented design.  The Court emphasized that the test looks to the overall design and does not place undue emphasis on details. In comparing the accused product and the patented design, the Court conducted a side by side comparison and looked to the overall effects of the patented design.  For example, in the present case, one of the overall effects of the of the patented design that helped the Court to decide that the copycat footwear infringed the design patent is that the patented design created a focal point through the convergence of multiple major design lines and curves which was incorporated into the copycat footwear.  The Court held that despite minor differences between the accused product and the patented design, the accused copycat footwear still infringed Crocs’ design patent.  Crocs, Inc. v. ITC, 2008-1596 (Fed. Cir. Feb. 24, 2010).

Should you have any questions, please feel free to contact me.

A design invention was at issue in Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 666 (Fed. Cir. 2008) (en banc). Egyptian Goddess, Inc., (“EGI”), the patent owner of a new design for nail buffers, accused Swisa, Inc. (“SI”) of infringing its design patent. The court of appeals for patent matters reviewed the various tests used to determine design patent infringement. These tests include the “ordinary observer”, the “points of novelty” and the “non-trivial advance” tests. The court identified various problems with applying the “points of novelty” test, and rejected both the “points of novelty” test and the “non-trivial advance” test which is a refinement of the “points of novelty” test.

The court held that the “ordinary observer” test is the sole test for determining whether a design patent is infringed. Under the “ordinary observer” test, the patented design is compared to the allegedly infringing design to determine whether the patented design and the allegedly infringing design are so similar that a purchaser familiar with prior designs would be deceived inducing him to purchase one supposing it to be the other.

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?