1. © COPYRIGHT 2007. DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. Would the Federal Circuit Rebuff Egyptian Goddess’ “Non-trivial Advance[s]”? Ranga Sourirajan, Esq. Associate, Dickstein Shapiro LLP

2. © COPYRIGHT 2007. DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. 2 Infringement of Design Patents - Overview Any “new, original and ornamental design for an article of manufacture.” 35 U.S.C. §171 Infringement action under 35 U.S.C. § § 271, 171 Burden of Proof – Patentee must prove by preponderance of evidence Two step process: (1) court must construe the claim language, Elmer v. ICC Fabricating, Inc., 67 F.3d 1571, 1577 (Fed. Cir. 1995); (2) jury must determine whether the claim encompasses the accused design by comparing the claim and the accused design employing both the “ordinary observer” test and the “point of novelty” test. Contessa Food Prods., Inc. v. Conagra, Inc., 282 F.3d 1370, 1377 (Fed. Cir. 2002) Both the “ordinary observer” and the “point of novelty” tests are undertaken after claim construction. Bernhardt, LLC v. Collezione Europa USA, Inc., 386 F.3d 1371, 1378 (Fed. Cir. 2004) Where a design contains both functional and non-functional elements, scope of the claim must be construed to identify only “non-functional aspects of an ornamental design as shown in a patent.” OddzOn Prods., Inc. v. Just Toys, Inc., 122 F.3d 1396, 1405 (Fed. Cir. 1993) Infringer may assert defenses – invalidity (obviousness, anticipation) etc. Infringer liable to the “extent of his total profit.” 35 U.S.C. § 289

3. © COPYRIGHT 2007. DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. 3 “Ordinary Observer” Test – Federal Circuit Jurisprudence “[I]n the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other.” Gorham Mfg. Co. v. White, 81 U.S. 511 (1872) The fact-finder must determine ”whether the patented design as a whole is substantially similar in appearance to the accused design.” OddzOn Prods., Inc. v. Just Toys, Inc., 122 F.3d 1396, 1405 (Fed. Cir. 1993) “To infringe[,] the accused article must appropriate the features of the patented design and its overall appearance” Hupp v. Siroflex of Am., Inc., 122 F.3d 1456, 1464 (Fed. Cir. 1997) “[P]atented and accused designs do not have to be identical... What is controlling is the appearance of the design as a whole.” Contessa Food Products, Inc. v. Conagra, Inc., 282 F.3d 1370, 1377 (Fed. Cir. 2002) In evaluating the resemblance, it is not necessary that every aspect of patented design and accused design be identical. Brooks Furniture Mfg., Inc. v. Dutailer Int’l, Inc., 393 F.3d 1378, 1383 (Fed. Cir. 2005) Court must analyze “the design as a whole from the perspective of an ordinary observer” rather than each element separately. Amini Innovation Corp. v. Anthony California, Inc., 439 F.3d 1365, 1372 (Fed. Cir. 2006)

4. © COPYRIGHT 2007. DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. 4 “Point of Novelty” Test – Federal Circuit Jurisprudence “[N]o matter how similar two items look, the accused design must appropriate the novelty in the patented device which distinguishes it from the prior art.” Litton Sys., Inc. v. Whirlpool Corp., 728 F.2d 1423, 1444 (Fed. Cir. 1984) “To consider the overall appearance of a design without regard to prior art would eviscerate the purpose of the ‘point of novelty’ approach” Winner Int’l Corp. v. Wolo Mfg. Corp., 905 F.2d 375, 376 (Fed. Cir. 1990) The point of novelty resides in the overall appearance of the combination although all of the design elements were found in the prior art. L.A. Gear v. Thom McAn Shoe Co., 988 F.2d 1117, 1126 (Fed. Cir. 1993) “[C]ollapsing of the point of novelty test into the substantial similarity test constitute[s] legal error.” Sun Hill Industries, Inc. v. Easter Unlimited, Inc., 48 F.3d 1193, 1197 (Fed. Cir. 1995) Comparison of a patented design to an accused product includes two distinct tests, the “ordinary observer” test, and the “point of novelty” test. Contessa Food Products, Inc. v. Conagra, Inc., 282 F.3d 1370, 1377 (Fed. Cir. 2002) A combination of known design elements may be a point of novelty but “the overall appearance of a design” could not be a point of novelty. Lawman Armor Corp. v. Winner Int’l, LLC, 437 F.3d 1383, 1386 (Fed. Cir. 2006), supplemental opinion on denial of rehearing, 449 F.3d 1190 (Fed. Cir. 2006)

5. © COPYRIGHT 2007. DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. 5 Egyptian Goddess v. Swisa, Inc., 498 F.3d 1354 (Fed. Cir. 2007) Facts –Pl. is owner of U.S. Design Patent No. 467,389 (D’389) on “an ornamental nail buffer” having four sides, with abrasive pads on three sides –Pl. claimed Swisa’s nail buffers infringed D‘389 patent –Swisa’s nail buffers – four sides covered with abrasive pads –Pl.’s asserted point of novelty is a combination of four elements of D’389 – (1) an open and hollow body; (2) square cross-section; (3) raised rectangular pads; and (4) exposed corners DCT Rulings –DCT’s claim construction order - “a hollow tubular frame of generally square cross section” having sides S, a length of 3S, a thickness of 0.1S, corners of the cross section being rounded –Swisa moved for SJ of invalidity and noninfringement; DCT granted SJ of noninfringement –Swisa’s nail buffers did not contain “point of novelty” of patented design; only point of novelty is the “addition of the fourth side without a pad.” D’389 Patent Prior Art

6. © COPYRIGHT 2007. DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. 6 Egyptian Goddess – Cont’d Fed. Cir. Reasoning –Point of novelty test is part of infringement analysis, burden on patentee to present its contentions as to the point of novelty –Point of novelty can be either a single novel design element or a combination of individually known elements. Lawman Fed. Cir. Holding: 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” Outcome – Affirmed Dissent (Dyk, J.) –“Non-trivial advance” requires patentee to affirmatively prove nonobviousness; conflates “the criteria for infringement and obviousness” –Test applies only to combination of design elements –Whether a design feature is a “trivial or substantial advance” is a question of fact –Stare decisis D’389 Patent Prior Art

7. © COPYRIGHT 2007. DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. 7 Egyptian Goddess – Cont’d En banc hearing order issued Nov. 26, 2007, slip copy, 2007 WL 4179111 –Should “point of novelty” be a test for infringement of a design patent? –If so Should the court adopt the non-trivial advance test? Should the test be patentee’s burden or an available defense? Should a patentee be permitted to divide closely related/ornamentally integrated features of patented design to match features in accused design? Is a finding of more than one “point of novelty” permissible? Should overall appearance of a design be permitted to be a “point of novelty”? –Should claim construction apply to design patents; if so, what role should it play?

8. © COPYRIGHT 2007. DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. 8 Gorham Mfg. Co. v. White, 81 U.S. 511 (1872) Facts –Gorham obtained a design patent in 1861 for handles of tablespoons and forks –White obtained a design patent in 1867 for handles of forks and spoons; obtained another patent in 1868 for another design –White sold spoons and forks as claimed in the two patents; Gorham sought to enjoin White from making and selling spoons and forks under either patents –Validity of Gorham’s patent unchallenged Issue: Whether White’s designs were substantially the same as Gorham’s design? Reasoning –Lower court’s infringement test - “in view of the observation of a person versed in designs in the particular trade in question” – is contrary to intent of Congress Holding: If, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other

9. © COPYRIGHT 2007. DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. 9 Federal Circuit Cases Relied on in Egyptian Goddess Litton Sys., Inc. v. Whirlpool Corp., 728 F.2d 1423 (Fed. Cir. 1984) –DCT: Litton’s utility and design patents are valid; Whirlpool’s microwave ovens infringe Litton’s patents –“For a design patent to be infringed... accused device must appropriate the novelty in the patented device which distinguishes it from the prior art” –“’point of novelty’ approach applies only to a determination of infringement; [this] court has avoided [the] approach in other contexts [-] double patenting... unobviousness” –Decision: Whirlpool ovens do not infringe the design patent; reversed Goodyear Tire & Rubber Co. v. Hercules Tire & Rubber Co., Inc., 162 F.3d 1113 (Fed. Cir. 1998) (Newman, Plager, Schall, JJ.) –Goodyear appeals DCT decision that Hercules’ “Power Trac” retread design does not infringe Goodyear’s D349,080 patent for tire tread; DCT adopted same points of novelty it relied on for obviousness determination –Goodyear argued DCT erroneously construed “tire” as truck tire and selected truck tire purchaser as the “ordinary observer” –D’080 patent not limited to truck tires; “focus is on the actual product that is presented for purchase [which] is a truck tire”; Gorham “counsels against measuring similarity of designs from viewpoint of experts” –“Similarity of overall appearance is an insufficient basis for a finding of infringement, unless the similarity embraces the points of novelty of the patented design” –DCT did not err since several significant points of novelty did not appear in accused design

10. © COPYRIGHT 2007. DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. 10 Federal Circuit Cases Relied on in Egyptian Goddess Bernhardt, LLC v. Collezione Europa USA, Inc., 386 F.3d 1371 (Fed. Cir. 2004) (Mayer, Michel, Linn, JJ.) –Bernhardt owned six design patents on furniture design –DCT: four patents invalid because of prior public use; no infringement of all six patents –Determination of the differences between patented design and prior art is not different from obviousness determinations (dicta) – Holding: Expert testimony is not required when points of novelty can be discerned from the patent, its prosecution history, cited prior art, and patentee’s contentions Lawman Armor Corp. v. Winner Int’l, LLC, 437 F.3d 1383 (Fed. Cir. 2006) (Friedman, Michel, Dyk, JJ.) –Lawman is exclusive licensee of U.S. Design Pat. No. 357,621, “the ornamental design for a sliding hook portion of a vehicle steering wheel lock assembly” –DCT: No infringement because Lawman’s asserted eight points of novelty of the patented design were disclosed in the prior art –Lawman argued that the design patent contains a ninth point of novelty – the combination in a single design of the eight non-novel points of novelty –“If combination of known elements is itself sufficient to constitute a ‘point of novelty’ it would be the rare design that would not have a point of novelty” –Supplemental Opinion: a combination of known design elements may be a point of novelty but “the overall appearance of a design” could not be a point of novelty

11. © COPYRIGHT 2007. DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. 11 Analysis Litton –“Point of novelty” test separate from the “ordinary observer” test –Court does not address combination of known design elements Goodyear –Point of novelty determinable based on the prosecution history –Recognized several significant points of novelty of a design –Although the court concluded that DCT did not err in adopting the points of novelty it used to determine nonobviousness, it did not address combination of elements Bernhardt –Relevance of expert testimony in a determination of infringement under the “point of novelty” test –Determination of the differences between patented design and prior art is not different from obviousness determinations (dicta) Lawman –Supplemental opinion clarifies that a combination of known design elements may be a point of novelty but does not address the issue any further

12. © COPYRIGHT 2007. DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. 12 Conclusion Doctrinally, Egyptian Goddess does not align with Federal Circuit’s decisions in Litton, Goodyear or Bernhardt; however, it seeks to extend supplemental opinion of Lawman. If the Federal Circuit took a doctrinal approach, it is likely to overturn the panel’s decision However, if the Federal Circuit took a normative approach, it may allow the “non-trivial advance” test as a defense