The U.S. Court of Appeals for the Federal Circuit reversed the district court’s finding of invalidity and non-infringement with respect to the plaintiff’s design patents, holding a design patent plaintiff is not required to offer testimony in order to prove that the "points of novelty" of the design patents were infringed. Bernhardt, L.L.C. v. Collezione Europa USA, Inc., Case No.04-1024 (Fed Cir. Oct. 20, 2004) (Linn, J.)
Bernhardt sued Collezione for design patent infringement. Bernhardt’s design patents covered a number of furniture designs. At trial, the parties disputed which designs were exhibited at an exhibition organized by Bernhardt, which admittedly took place more than one year prior to the filing dates of Bernhardt’s design patents, and whether such exhibition was considered a public use under §102(b).
The trial record indicated there was no direct evidence showing which designs were present at the exhibition. In its attempt to demonstrate the claimed designs were displayed at the exhibition, Collezione was only able to offer indirect evidence, such as product ID numbers and evaluation comments. The trial record also showed that while attendees at the exhibition were not required to formally execute any confidentiality agreement, Bernhardt employed a number of other precautionary measures to restrict subsequent dissemination of information obtained at the exhibition. The district court concluded Bernhardt’s patents were invalid and not infringed. Bernhardt appealed.
The Federal Circuit reversed, noting that for design patents both the invalidity and infringement analyses first require a court to construe the claimed design. Next, the fact-finder must compare the claimed design to the article in question, employing both the ordinary observer and the point of novelty tests.
On the question of invalidity, the Federal Circuit addressed use of the exhibited designs and the circumstances surrounding the exhibition separately. With respect to the exhibited designs, the Federal Circuit found the district court incorrectly applied the ordinary observer and the point of novelty tests by failing to properly analyze whether the furniture designs actually displayed at the exhibition were substantially similar in appearance in the eyes of an ordinary observer to the claimed designs and determine whether the points of novelty of the claimed designs were misappropriated. The Federal Circuit noted that the district court relied on evidence offered by Collezione to conclude the exhibited furniture pieces were "similar" to the patented furniture design, without benefit of invoking the ordinary observer and point of novelty tests.
With respect to the circumstances surrounding the exhibition, the Federal Circuit found the district court improperly focused on the absence of confidentiality agreements, without considering the totality of circumstances. The exhibition was not open to the public, identification of attendees was checked, attendees were not allowed to make written notes or take photographs inside the showroom and attendees had an incentive not to divulge Bernhardt’s designs due to possible exclusion from future exhibitions. On that basis the Federal Circuit concluded the "public use" analysis performed by the district court was incomplete.
On the question of infringement, the Federal Circuit held "in order to establish the points of novelty in a design patent infringement action, … the patentee must introduce into evidence, at a minimum, the design patent at issue, its prosecution history, and the relevant prior art references cited in the prosecution history; and must present, in some form, its contentions as to points of novelty. The contentions may be made in any appropriate way, such as in proposed findings of fact." The Federal Circuit further noted that "when the points of novelty can be discerned from the patent, its prosecution history, the cited prior art, and the patentee’s contentions, any additional evidence, such as expert testimony, is not necessary to establish the points of novelty." On that basis the Federal Circuit found Bernhardt had satisfied its burden by including the points of novelty in its proposed findings of fact.
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