Egyptian Goddess v. Swisa — Federal Circuit En Banc Overhauls Design Patent Infringement Test

Background

Egyptian Goddess, Inc. held U.S. Design Patent No. D467,389, which claimed the ornamental design of a nail buffer — a tool used to smooth and polish fingernails. The patented design featured a rectangular hollow tube with a square cross-section and buffer surfaces on three of its four sides. Swisa, Inc. sold a competing nail buffer with a similar rectangular hollow tube design, but with buffer surfaces on all four sides rather than three.

Egyptian Goddess sued Swisa for design patent infringement. The Northern District of Texas granted summary judgment for Swisa, finding no infringement under the then-prevailing two-part test: the “ordinary observer” test (from Gorham v. White, 1871) combined with the “point of novelty” test (requiring identification of the specific elements that made the design novel over prior art, and showing that those elements were also present in the accused design). The Federal Circuit agreed to hear the case en banc to address the proper standard for design patent infringement.

The Court’s Holding

The Federal Circuit en banc eliminated the point of novelty test and held that design patent infringement is governed solely by the ordinary observer test. Under this unified standard, an accused design infringes if, to an ordinary observer giving such attention as a purchaser usually gives, the accused design is substantially similar to the patented design — such that the observer would be deceived into buying the accused design believing it to be the patented design.

Crucially, the court held that the ordinary observer is an observer who is familiar with the prior art. When the differences between a patented design and an accused design are viewed in the context of the prior art, the observer’s attention will be drawn to the aspects of the claimed design that distinguish it from prior art designs — the elements that make the patented design distinctive. If the accused design appropriates those distinctive elements, infringement is likely; if not, infringement is unlikely. On the facts of the case, the court affirmed the grant of summary judgment for Swisa, finding that the four-sided buffer design was not substantially similar to the three-sided patented design when viewed in light of prior art buffers.

Key Takeaways

• Design patent infringement is now governed by a single test: whether an ordinary observer familiar with the prior art would find the accused design substantially similar to the patented design.
• The “point of novelty” test — which required identifying and comparing the specific novel elements of the design — is abolished as a separate requirement for design patent infringement.
• Prior art context matters: the ordinary observer test is informed by the prior art, so when an accused design differs from the patented design primarily in elements that were already in the prior art, those differences weigh against infringement.
• The ruling significantly strengthened design patent protection by removing the burdensome point-of-novelty inquiry, which had previously allowed accused infringers to escape liability by pointing to prior art that contained some but not all of the claimed design’s novel features.

Why It Matters

Egyptian Goddess transformed design patent law. Before the ruling, the point of novelty test had made design patent infringement difficult to prove: a defendant could often identify some element of the accused design that tracked prior art rather than the patented design’s novel features, breaking the causal connection required for infringement. This made design patents difficult to enforce despite their potential commercial value.

The en banc ruling’s elimination of the point of novelty test revitalized design patent protection and contributed to a surge in design patent filings and enforcement in the years that followed. The case set the stage for the Apple v. Samsung litigation (beginning 2011), in which Apple relied on Egyptian Goddess-era design patent standards to pursue billion-dollar claims against Samsung for copying the iPhone’s visual design. Design patents — long considered the weaker cousin of utility patents — gained new relevance and enforcement power under the Egyptian Goddess framework.