Egyptian Goddess v. Swisa Inc. (2006-1562en banc)
Design patents typically have little value because they are so limited in scope. Since 1984 there have been two distinct requirements for establishing design patent infringement. The first, called the ordinary observer test, requires that “in the eye of an ordinary observer, giving such attention as a purchaser usually gives, [the] two designs are substantially the same … the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be other.” The second, called the point of novelty test, requires that “no matter how similar two items look, ‘the accused device must appropriate the novelty in the patented device which distinguishes it from the prior art.’”
Today, however, the Federal Circuit has declared that the “point of novelty” test should no longer be used in determining design patent infringement. Instead, the “ordinary observer” test is the only test that should be used for determining whether a design patent has been infringed.
However, the Federal Circuit has also declared that the ordinary observer test must be applied through the eyes of an observer familiar with the prior art. Stated another way, the question under the ordinary observer test is whether an ordinary observer, familiar with the prior art designs, would be deceived into believing that the accused design is the same as the patented design. An essential aspect of this test is focusing on the difference between the claimed and accused designs in light of the prior art.