Egyptian Goddess, Inc. v. Swisa, Inc.

• Decision Date: 29 August 2007
• Docket Number: No. 2006-152.,2006-152.
• Parties: EGYPTIAN GODDESS, INC., Plaintiff-Appellant, and Adi Torkiya, Third Party Defendant, v. SWISA, INC. and Dror Swisa, Defendants/Third Party Plaintiffs-Appellees.
• Court: U.S. Court of Appeals — Federal Circuit

498 F.3d 1354

EGYPTIAN GODDESS, INC., Plaintiff-Appellant, and Adi Torkiya, Third Party Defendant, v. SWISA, INC. and Dror Swisa, Defendants/Third Party Plaintiffs-Appellees.

No. 2006-152.

United States Court of Appeals, Federal Circuit.

August 29, 2007.

Robert G. Oake, Jr., Oake Law Office, of Allen, TX, argued for plaintiff-appellant.

Frederick Linton Medlin, Kirkpatrick & Lockhart Preston Gates Ellis LLP, of Dallas, TX, argued for defendants/third party plaintiffs-appellees. With him on the brief was Linda G. Moore. Of counsel was Jeffrey L. Snow, of Boston, MA.

Before DYK, Circuit Judge, ARCHER, Senior Circuit Judge, and MOORE, Circuit Judge.

Opinion for the court filed by Circuit Judge MOORE. Dissenting opinion filed by Circuit Judge DYK.

MOORE, Circuit Judge.

Appellant Egyptian Goddess, Inc. (EGI) appeals from the final judgment of the United States District Court for the Northern District of Texas, granting summary judgment of noninfringement of U.S. Design Patent No. 467,389 (the D'389 patent) in favor of appellees Swisa, Inc. and Dror Swisa (Swisa). Egyptian Goddess, Inc. v. Swisa, Inc., No. 3:03-CV-0594-N (N.D.Tex. Dec. 14, 2005) (Summary Judgment Order). Because the district court properly determined that there is no genuine issue of material fact as to whether the alleged infringing product appropriates the point of novelty of the claimed design, we affirm.

BACKGROUND

The D'389 patent covers "an ornamental nail buffer" design as illustrated in the patent's seven figures, one of which is reproduced below.

On March 21, 2003, EGI sued Swisa, claiming that the D'389 patent was infringed by certain Swisa nail buffers. Swisa filed a counterclaim seeking declaratory judgment on various theories, including noninfringement of the D'389 patent. On March 3, 2005, the district court issued a claim construction order, construing the D'389 patent as claiming:

A hollow tubular frame of generally square cross section, where the square has sides of length S, the frame has a length of approximately 3S, and the frame has a thickness of approximately T = 0.1S; the corners of the cross section are rounded, with the outer corner of the cross section rounded on a 90 degree radius of approximately 1.25T, and the inner corner of the cross section rounded on a 90 degree radius of approximately 0.25T; and with rectangular abrasive pads of thickness T affixed to three of the sides of the frame, covering the flat portion of the sides while leaving the curved radius uncovered, with the fourth side of the frame bare.

Neither party challenges the district court's claim construction.

Swisa moved for summary judgment of invalidity and noninfringement—on the grounds that the accused designs did not infringe the D'389 patent under either the point of novelty or the ordinary observer test. The district court granted summary judgment on the ground that the Swisa nail buffers did not contain the point of novelty of the patented design. Summary Judgment Order, at 3-4. Specifically, the court stated that "the only point of novelty in the D'389 Patent over the Nailco Patent is the addition of the fourth side without a pad," which the Swisa nail buffers did not have. Id. The district court entered a final judgment, dismissing EGI's claims of infringement with prejudice and dismissing Swisa's counterclaims without prejudice. This appeal followed.

We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1). We review the district court's grant of summary judgment de novo. Winner Int'l Corp. v. Wolo Mfg. Corp., 905 F.2d 375, 376 (Fed.Cir.1990). Summary judgment is appropriate when there are no genuine issues of material fact and the moving party is entitled to judgment as a matter of law. Id.

DISCUSSION

I

There are two distinct requirements for establishing design patent infringement. Bernhardt, L.L.C. v. Collezione Europa USA, Inc., 386 F.3d 1371, 1383 (Fed.Cir.2004). 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 the other." Gorham Co. v. White, 81 U.S. (14 Wall.) 511, 528, 20 L.Ed. 731 (1871). 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.'" Litton Sys., Inc. v. Whirlpool Corp., 728 F.2d 1423, 1444 (Fed.Cir.1984) (citing Sears, Roebuck & Co. v. Talge, 140 F.2d 395, 396 (8th Cir.1944)). "Both the ordinary observer and point of novelty tests are factual inquiries that are undertaken by the fact finder during the infringement stage of proceedings, after the claim has been construed by the court." Bernhardt, 386 F.3d at 1383.

Because the point of novelty determination is part of the infringement analysis, the initial burden is on the patentee to "present, in some form, its contentions as to points of novelty." Id. at 1383. The point of novelty can be either a single novel design element or a combination of elements that are individually known in the prior art. See Lawman Armor Corp. v. Winner Int'l, LLC, 449 F.3d 1190, 1192 (Fed.Cir.2006) (supplemental opinion on petition for rehearing); Litton, 728 F.2d at 1443-44. The patentee is not free to set forth any combination of elements as the point of novelty, rather, the point of novelty must include features of the claimed design that distinguish it from the prior art.¹ Litton, 728 F.2d at 1444; Goodyear Tire & Rubber Co. v. Hercules Tire & Rubber Co., 162 F.3d 1113, 1118 (Fed.Cir. 1998).

For a combination of individually known design elements to constitute a point of novelty, the combination must be a non-trivial advance over the prior art.²See Smith v. Whitman Saddle Co., 148 U.S. 674, 682, 13 S.Ct. 768, 37 L.Ed. 606 (1893) (analyzing whether the accused device contained the aspects of the claimed design that "rendered it patentable as a complete and integral whole"); Bernhardt, 386 F.3d at 1384 (noting that the point of novelty determination "is not especially different from the factual determinations that the district courts routinely undertake" in performing the obviousness inquiry); cf. Litton, 728 F.2d at 1444 (applying the results of the obviousness analysis when determining the point of novelty of the claimed design); Goodyear, 162 F.3d at 1119, 1121 (noting that the court "adopted the same points of novelty that it had relied on in determining that the '080 patent was not invalid for obviousness," and holding that "the district court did not clearly err in giving weight to those aspects of the '080 tread that were necessary design aspects in sustaining the validity of the patent").³

II

The district court properly determined that no reasonable jury could conclude that the point of novelty proffered by EGI is a non-trivial advance over the prior art. The parties do not dispute that the various design elements of the claimed design were each individually disclosed in the prior art. EGI's asserted point of novelty is a combination of four of the claimed design's elements: (1) an open and hollow body, (2) square cross-section, (3) raised rectangular pads, and (4) exposed corners. The district court properly found that one prior art nail buffer design, illustrated in U.S. Design Patent No. 416,648 (the Nailco patent), shown below, contains each of these elements except that the body is triangular—rather than square—in cross-section. Summary Judgment Order, at 4.

There is no dispute, however, that nail buffers having square cross-sections were widely known in the prior art. EGI admits that three prior art references cited during prosecution of the D '389 patent illustrate at least five nail buffer designs with a square cross-section. Moreover, the parties both agree that other well-known prior art designs, namely the Tammy Taylor buffers, also had square cross-sections. In light of the prior art, no reasonable juror could conclude that EGI's asserted point of novelty constituted a non-trivial advance over the prior art. Thus, the district court did not err in rejecting EGI's asserted point of novelty as a matter of law.

The district court correctly determined that only if the point of novelty included a fourth side without a raised pad could it even arguably be a non-trivial advance over the prior art. The Swisa buffers have raised, abrasive pads on all four sides. When considering the prior art in the nail buffer field, this difference between the accused design and the patented design cannot be considered minor. See Litton, 728 F.2d at 1444 (explaining that the differences between the claimed and accused designs must be considered in light of the differences between the prior art and the claimed design). Since the parties agree that the Swisa buffers do not contain a fourth side without a raised pad, summary judgment of noninfringement was properly granted. For this reason, the decision below is

AFFIRMED.

COSTS

Each party shall bear its own costs.

DYK, Circuit Judge, dissenting.

This case concerns the scope of the point of novelty requirement in design patents. The majority decides this case on a ground that was not addressed in briefs or at oral argument by either party. In my view, the majority opinion departs from our precedent in fashioning a new rule—that a combination of elements cannot constitute a point of novelty in design patent cases unless the combination constitutes a "non-trivial advance" over the prior art. The majority equates its newly-fashioned non-trivial advance test with the requirement that a design patent be nonobvious over the prior art.¹ It then appears to limit the application of that test to cases in which the point of novelty involves a combination of prior art elements.

It seems to me that there are multiple flaws in...