Having previously determined that the ordinary observer test is
the sole test for design patent infringement, the US Court of
Appeals for the Federal Circuit, in International Seaway
Trading Corporation v. Walgreens Corporation, has now
extended that test to questions of design patent invalidity.
In the US, a design patent is used to protect the look or
ornamental features of an article, while a utility patent is used
to protect the function of an article or how it is made.
Before the Federal Circuit's decision in Egyptian
Goddess v. Swisa, the test for design patent
infringement included two parts — the ordinary observer
test and the point of novelty test. In applying the point of
novelty test in the case of infringement, the court looked at
whether the accused design appropriated the points of novelty of
the patented design. The points of novelty for the patented design
were determined by comparing the patented design to the prior art
In Egyptian Goddess, the Federal Circuit abandoned the
point of novelty test for infringement and ruled that the ordinary
observer test was the sole test for design patent infringement. The
ordinary observer test originated in 1871 when the US Supreme Court
held "that 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 the
other, the first one patented is infringed by the other"
(Gorham Mfg. Co. v. White). The ordinary observer
test requires consideration of the design as a whole in view of the
For questions of design patent invalidity, the US courts had
also applied the point of novelty test in the past. In the case of
anticipation, the courts had compared the patented design with the
alleged anticipatory reference to determine whether the patented
design appropriated the points of novelty of the anticipatory
reference. The points of novelty for the anticipatory reference
were determined by looking to earlier prior art.
In International Seaway Trading, however, the District
Court rejected the point of novelty test and only applied the
ordinary observer test for design patent invalidity. It granted
summary judgment in favour of the defendants, finding that
Seaway's design patents for clog style shoes were invalid as
being anticipated by a design patent assigned to Crocs, Inc. (the
Seaway appealed, arguing that the District Court had erred in
solely relying on the ordinary observer test and in failing to
apply the point of novelty test. In its decision, the Federal
Circuit agreed with the District Court that the ordinary observer
test was the sole test for anticipation. According to the Federal
Circuit, this approach addresses several problems. Specifically, it
the need to canvass the entire prior art to identify points of
the debate over the extent to which a combination of old design
features can serve as a point of novelty under the point of novelty
The Federal Circuit, however, vacated the District Court's
decision in part and remanded the case back to the District Court,
on the basis that the District Court had failed to make a proper
overall comparison of the designs, i.e., it had erred in
not comparing the insole patterns of the design patents in suit to
that of the anticipatory reference.
McCarthy Tétrault Notes
The Federal Circuit's ruling is consistent with Egyptian
Goddess and with the US Supreme Court's holding with
respect to utility patents that "that which infringes, if
later, would anticipate, if earlier" (Peters v.
Active Mfg. Co.). The same rule applies for design
patents, according to International Seaway Trading.
The Federal Circuit's decision in International Seaway
Trading has important implications. With International
Seaway Trading, the Federal Circuit has clearly indicated that
the point of novelty test no longer forms part of the test for
design patent invalidity as a separate analysis.
This ruling reconciles the tests for design patent infringement
and invalidity. As such, International Seaway Trading has
given US design patent law a new, if not unexpected,
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