U.S. Court Clarifies Design Patent Infringement

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The United States Court of Appeals for the Federal Circuit has unanimously clarified the way in which it determines design patent infringement.

Design patents are used to protect new and nonobvious ornamental characteristics of a functional item. They do not protect the structure or function of the item.

In this case, the two parties produced nail buffers. The plaintiff’s nail buffer had padding on three sides, and defendant’s had padding on all four sides. The district court and Federal Circuit agreed that the four-sided nail buffer did not infringe on the patent that covered three-sided nail buffers.

Then, the court granted a motion to hear the case en banc to determine what test lower courts should use when a party claims its design patent has been infringed. Previously, when determining whether a design patent was infringed, the court would consider whether an ordinary observer would confuse the two products (the “ordinary observer test”) and whether the alleged infringing design incorporated novel aspects of the patented design (the “point of novelty test”).

In this case, the court determined that “the ‘point of novelty’ test should no longer be used in the analysis of a claim of design patent infringement.” “Instead, . . . we hold that the ‘ordinary observer’ test should be the sole test for determining whether a design patent has been infringed.” Therefore, an accused article infringes a design patent if it “embod[ies] the patented design or any colorable imitation thereof.”
This decision makes a district court’s job easier as the “point of novelty” test was overly cumbersome in cases where there are several prior patents at issue. Further, the new test clarifies an important area of patent law and considerably strengthens design patents.

Disclaimer: This Litigation and Dispute Resolution Law Alert is provided for informational purposes only and is not intended to serve as or provide legal advice relating to a particular matter. If you would like to discuss a litigation, arbitration or dispute matter please contact Jon P. Yormick, Managing Attorney, [email protected], Jason B. Desiderio, Associate,[email protected], or Nicholas A. Panagopoulos, II, Associate, [email protected], or call toll free(U.S. and Canada) at +1.866.967.6425.

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