Nirav Bhatt is an LLM candidate at Osgoode Hall Law School.

The test for determining the validity of design patents should be the “ordinary observer test” and not the “point of novelty”. The US Court of Appeals for the Federal circuit (CAFC) in the recent case of International Seaway Trading Corp. v. Walgreens Corporation ruled that the ordinary observer test should be used solely for determination of invalidity of a design patent.  Thus, it appears that the point of novelty test has been eliminated completely. Previously, IP Osgoode reported on the test for design patent infringement from the perspective of an ordinary observer in the case of Egyptian Goddess, Inc. v. Swisa, Inc.

In the past, the usual practice for the courts had been to assess both the ordinary observer test and the point of novelty test for design patent invalidity and infringement. In applying the ordinary observer test, the court would compare the patented design with the accused device to determine infringement, and the patented design to the prior art reference to determine validity. But it was seen in Egyptian Goddess, that the CAFC discarded the point of novelty test for design patent infringement and held that the ordinary observer test is the sole test, thereby characterizing the ordinary observer as “deemed to view the differences between the patented design and the accused product in the context of the prior art.”  The reasons given by the court were that that the two tests sometimes lead to conflicting results.

Post Egyptian Goddess, left the court open to the question of which test should be used to determine validity of a design patent. The International Seaway ruling clearly builds on the en banc decision in Egyptian Goddess. International Seaway sued Walgreens in February 2008 for selling clogs that allegedly infringed its patent, along with Touchsport Footwear USA Inc. for importing the shoes. In the majority opinion in Seaway, Circuit Judge Timothy Dyk upheld a Southern District of Florida ruling that the exterior features of the clogs patented by the plaintiffs were substantially similar to a patent held by Crocs Inc.  The court also held that the District court was correct in not applying the point of novelty test to anticipation. The exterior appearance of the patented products is similar to the eyes of an ordinary observer, thereby providing adequate grounds to affirm-in-part the district court’s assertion of invalidity by anticipation. However, the district court’s failure to compare the insoles of the patents-in-suit with the prior art, from the perspective of an ordinary observer, was in error. Therefore, the CAFC affirmed-in-part, reversed-in-part, and remanded the district court to compare the insoles of the patents-in-suit with the prior art, from the perspective of an ordinary observer, for purposes of both anticipation and obviousness.

The district court was therefore correct in applying the ordinary observer test as the sole test for design patent invalidity under 35 USC §102. This is consistent with Supreme Court precedent applying the same tests for infringement and anticipation. The point of novelty test, with its need to “canvass the entire prior art” to find minor differences between the alleged anticipatory reference and the patented design, is equally difficult to apply in both infringement and anticipation contexts.

In appropriate circumstances, in addition to the above, one should also consider the applicability of the test of passing off, if the footwear or the product in question has the possibility of creating a likelihood of confusion in the consumer’s mind.

Posted in IP, Patents