Egyptian Goddess, Inc. v. Swisa, Inc.

• Decision Date: 22 September 2008
• Docket Number: No. 2006-1562.,2006-1562.
• Citation: 543 F.3d 665
• 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

543 F.3d 665

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

No. 2006-1562.

United States Court of Appeals, Federal Circuit.

September 22, 2008.

Rehearing En Banc Denied November 4, 2008.

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.

F. David LaRiviere, LaRiviere, Grubman & Payne LLP, of Monterey, CA, for amicus curiae Monster Cable Products, Inc.

William Dunnegan, Dunnegan LLC, of New York, NY, for amicus curiae Industrial Designers Society of America. With him on the brief was Nikitas E. Nicolakis.

Edward D. Manzo, Cook, Alex, McFarron, Manzo, Cummings & Meher, Ltd., of Chicago, IL, for amici curiae Elite Group, Inc., et al.

Kevin T. Kramer, Pillsbury Winthrop Shaw Pittman LLP, of Washington, DC, for amicus curiae Federal Circuit Bar Association. With him on the brief were Edward R. Reines, Federal Circuit Bar Association, of Washington, DC, and Mark P. Walters, Darby & Darby, of Seattle, WA.

George M. Sirilla, Pillsbury Winthrop Shaw Pittman LLP, of McLean, VA, for amicus curiae Daisy Manufacturing Company, Inc. With him on the brief was Stephanie F. Goeller, of Washington, DC.

Frank A. Angileri, Brooks Kushman P.C., of Southfield, MI, for amicus curiae Ford Global Technologies, LLC. With him on the brief was Marc Lorelli.

Christopher J. McGeehan, Greer, Burns & Crain, Ltd., of Chicago, IL, for amicus curiae Intellectural Property Law Association of Chicago.

Vandana Koelsch, Howrey LLP, of Washington, DC, for amicus curiae Bar Association of the District of Columbia.

Tracy-Gene G. Durkin, Sterne, Kessler, Goldstein & Fox P.L.L.C., of Washington, DC, for amicus curiae Intellectual Property Owners Association. With her on the brief was David K.S. Cornwell. Of counsel on the brief were Steven W. Miller, The Procter & Gamble Company, of Cincinnati, OH, and Richard F. Phillips, Exxon Mobil Corporation, of Houston, TX. Of counsel was Herbert C. Wamsley, Intellectual Property Owners Association, of Washington, DC.

William T. Fryer, III, of Bethesda, MD, for amicus curiae Professor William T. Fryer, III.

Christopher J. Renk, Banner & Witcoff, Ltd., of Chicago, IL, for amici curiae Electrolux Home Products, Inc., et al. With him on the brief were Erik S. Maurer, of Chicago, IL, and Robert S. Katz, of Washington, DC. Of counsel was Christopher B. Roth.

Christopher V. Carani, McAndrews, Held & Malloy, Ltd., of Chicago, IL, for amicus curiae American Intellectual Property Law Association. With him on the brief was James Pooley, Morrison & Foerster LLP, of Palo Alto, CA.

Perry J. Saidman, Saidman DesignLaw Group, of Silver Springs, MD, for amicus curiae Apple Inc.

Alan L. Barry, Bell, Boyd & Lloyd LLP, of Chicago, IL, for amici curiae LKQ Corporation, et al. With him on the brief were Heather A. Boice and Brian J. Arnold.

Valerie K. Friedrich, Baker & McKenzie LLP, of Houston, TX, for amicus curiae Houston Intellectual Property Law Association.

Before MICHEL, Chief Judge, and NEWMAN, ARCHER, MAYER, LOURIE, RADER, SCHALL, BRYSON, GAJARSA, LINN, DYK, PROST, and MOORE, Circuit Judges.

BRYSON, Circuit Judge.

We granted rehearing en banc in this design patent case to address the appropriate legal standard to be used in assessing claims of design patent infringement.

Appellant Egyptian Goddess, Inc., ("EGI") brought this action in the United States District Court for the Northern District of Texas, alleging that Swisa, Inc., and Dror Swisa (collectively, "Swisa") had infringed EGI's U.S. Design Patent No. 467,389 ("the '389 patent"). The patent claimed a design for a nail buffer, consisting of a rectangular, hollow tube having a generally square cross-section and featuring buffer surfaces on three of its four sides. Swisa's accused product consists of a rectangular, hollow tube having a square cross-section, but featuring buffer surfaces on all four of its sides.

The district court first issued an order construing the claim of the '389 patent. In so doing, the district court sought to describe in words the design set forth in Figure 1 of the patent, which is depicted below:

NOTE: OPINION CONTAINING TABLE OR OTHER DATA THAT IS NOT VIEWABLE

Upon study of the claimed design, the court described it as follows:

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.

In the same order, the district court ruled that "Swisa has not shown that the appearance of the Buffer Patent is dictated by its utilitarian purpose." The court therefore held that the patent is not invalid on the ground that the design was governed solely by function. Egyptian Goddess, Inc. v. Swisa, Inc., Civil Action No. 3:03-CV0594-N (N.D.Tex. Mar. 4, 2005), citing Seiko Epson Corp. v. Nu-Kote Int'l, Inc., 190 F.3d 1360, 1368 (Fed.Cir.1999).

Swisa then moved for summary judgment of noninfringement. The district court granted the motion. Citing precedent of this court, the district court stated that the plaintiff in a design patent case must prove both (1) that the accused device is "substantially similar" to the claimed design under what is referred to as the "ordinary observer" test, and (2) that the accused device contains "substantially the same points of novelty that distinguished the patented design from the prior art." Egyptian Goddess, Inc. v. Swisa, Inc., Civil Action No. 3:03-CV-0594-N, 2005 WL 5873510 (N.D.Tex. Dec. 14, 2005), citing Goodyear Tire & Rubber Co. v. Hercules Tire & Rubber Co., 162 F.3d 1113 (Fed.Cir.1998). After comparing the claimed design and the accused product, the court held that Swisa's allegedly infringing product did not incorporate the "point of novelty" of the '389 patent, which the court identified as "a fourth, bare side to the buffer."

The district court noted that the parties disagreed as to the points of novelty in the '389 patent. EGI identified four elements in its design, and for each element it identified prior art that did not embody that element. EGI therefore contended that the point of novelty of the '389 patent is the combination of those four elements. The district court, however, declined to address the question whether the point of novelty could be found in the combination of elements not present in various prior art references, because the court found that a single prior art reference, United States Design Patent No. 416,648 ("the Nailco patent"), contained all but one of the elements of the '389 design. The court described the Nailco Patent as disclosing "a nail buffer with an open and hollow body, raised rectangular pads, and open corners." The only element of the '389 patent design that was not present in the Nailco patent, according to the district court, was "the addition of the fourth side without a pad, thereby transforming the equilateral triangular cross-section into a square." Because the Swisa product does not incorporate the point of novelty of the '389 patent—a fourth side without a pad— the court concluded that there was no infringement.

EGI appealed, and a panel of this court affirmed. The panel agreed with the district court that there was no issue of material fact as to whether the accused Swisa buffer "appropriates the point of novelty of the claimed design." Egyptian Goddess, Inc. v. Swisa, Inc., 498 F.3d 1354, 1355 (Fed.Cir.2007). In reaching that conclusion, the panel stated that the point of novelty in a patented design "can be either a single novel design element or a combination of elements that are individually known in the prior art." Id. at 1357. The panel added, however, that in order 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." Id.

The panel noted that EGI's asserted point of novelty was a combination of four of the claimed design's elements: (1) an open and hollow body, (2) a square cross-section, (3) raised rectangular buffer pads, and (4) exposed corners. The panel agreed with the district court's observation that the Nailco prior art patent contained each of those elements except that the body was triangular, rather than square, in cross-section. 498 F.3d at 1358. In light of the prior art, the panel determined that "no reasonable juror could conclude that EGI's asserted point of novelty constituted a non-trivial advance over the prior art." Id.

The panel further observed that the various design elements of the claimed design "were each individually disclosed in the prior art." 498 F.3d at 1358. The Swisa buffers, the panel noted, have raised, abrasive pads on all four sides, not just on three of the four sides, as in the claimed design, in which the fourth side is bare. The panel then concluded that "[w]hen considering the prior art in the nail buffer field, this difference between the accused design and the patented design cannot be considered minor." Id. The panel therefore concluded that summary judgment was appropriate.

The dissenting judge would not have adopted the "non-trivial advance" test as a way of ascertaining whether a particular feature of the claimed...