Two Ripples

Submitted by patentadmin on Tue, 04/13/2010 - 11:11

Way back in 2008, the C.A.F.C. overturned what had been considered well-established law, holding that the ONLY test for infringement of a design patent was the impression of the “ordinary observer.”

Infringement no longer required that the accused product incorporate the “point of novelty” of the patented design. Like a pebble thrown into a pond, this decision created ripples. Now, we are seeing two of them.

In the first case, the trial judge wrote a detailed description of the patented design, which was then compared with the accused product. (International Trade Commission and Double Diamond Distribution, Ltd. v. Holey Soles Holdings, Ltd. et al.)

Wrong, said the C.A.F.C.! The proper test is a comparison of the DRAWINGS of the design patent and the accused product (by the hypothetical “ordinary observer”). “[M]isplaced reliance on a detailed verbal description of the claimed design risks undue emphasis on particular features of the design rather than examination of the design as a whole.”

In the second case, the trial judge based his decision as to the validity of the patent-in-suit solely on the “ordinary observer” test and ignored arguments as to an alleged lack of a “point of novelty.” (Richardson v. Stanley Works, Inc.)

Right, said the C.A.F.C.! The proper test for anticipation, i.e. invalidity due to lack of novelty, is the same as the test for infringement. “[T]he trial court was correct in concluding that [our precedent] necessarily requires a change in the standard for anticipation … it has been well established for over a century that the same test must be used for both infringement and anticipation.” Although the trial court’s decision was reversed on other grounds, that’s the (new) law.

THE LESSON TO BE LEARNED: The law changes!

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