United States: Even if Novel, Combination of Non-Novel Elements Cannot Support Finding of Design Patent Validity

The Federal Circuit has upheld a finding of no infringement as a matter of law where the only purported "points of novelty" allegedly appropriated by the accused device could all be found in the prior art. Lawman Armor Corp. v. Winner Int’l LLC, Case No. 05-1253 (Fed. Cir. Feb. 22, 2006) (Freidman, J.). The Court agreed with the defendant and the district court that the combination of many non-novel "points of novelty" could not be said, in itself, to create an additional "point of novelty."

Lawman was the exclusive licensee of a design patent claiming a design for a sliding hood portion of a steering wheel lock assembly. Lawman sued Winner for infringement, and Winner moved for summary judgment of non-infringement based on the "point of novelty" test. Under this test, an accused design can be held to infringe only if it appropriates the "point of novelty" that distinguishes the patented design from the prior art.

In opposing the summary judgment motion, Lawman listed eight points of novelty in the patented design; Winner responded by citing prior art that depicted Lawman’s purported points of novelty in one combination or another. In granting a summary judgment of no infringement, the district court concluded the purported points of novelty were all found in prior art and, as a result, Lawman failed to create an issue of fact that there could be infringement under the "point of novelty" test.

On appeal the Federal Circuit affirmed that prior art disclosed each of the purported points of novelty of the patent design. The Federal Circuit explicitly rejected Lawman’s argument that the patent contained a ninth point of novelty (that is, the combination in a single design of the eight non-novel points of novelty). If the combination of elements found in the prior art were sufficient to constitute a point of novelty of a new design, the Court observed, "it would be the rare design that would not have a point of novelty."

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