Egyptian Goddess, Inc. v. SWISA, INC. and DROR SWISA

United States Court of Appeals for the Federal Circuit
2006-1562
EGYPTIAN GODDESS, INC.,
Plaintiff-Appellant,
and
ADI TORKIYA,
Third Party Defendant,
v.
SWISA, INC. and DROR SWISA,
Defendants/Third Party Plaintiffs-
Appellees.
Robert G. Oake, Jr., Oake Law Office, of Allen, Texas, argued for plaintiff-
appellant.
Frederick Linton Medlin, Kirkpatrick & Lockhart Preston Gates Ellis LLP, of
Dallas, Texas, argued for defendants/third party plaintiffs-appellees. With him on the
brief was Linda G. Moore. Of counsel was Jeffrey L. Snow, of Boston, Massachusetts.
Appealed from: United States District Court for the Northern District of Texas
Judge David C. Godbey

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United States Court of Appeals for the Federal Circuit
2006-1562
EGYPTIAN GODDESS, INC.,
Plaintiff-Appellant,
and
ADI TORKIYA,
Third Party Defendant,
v.
SWISA, INC. and DROR SWISA,
Defendants/Third Party Plaintiffs-
Appellees.
_______________________
DECIDED: August 29, 2007
_______________________
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

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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.
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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 “[t]he 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
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U.S. (14 Wall.) 511, 528 (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).
1 Swisa asks this court to forbid the “shopping list approach” to selecting a
point of novelty, whereby a patentee strategically selects a point of novelty that consists
only of those elements of the claimed design that are also present in the accused
design. See Hosley Int’l Trading Corp. v. K Mart Corp., 237 F. Supp. 2d 907, 911-13
(N.D. Ill. 2002); Bush Indus., Inc. v. O’Sullivan Indus., Inc., 772 F. Supp. 1442, 1452 (D.
Del. 1991). We agree with Swisa that the point of novelty should be determined by
comparing the claimed design to the prior art and not to the accused design. As an
appellate court, however, we review the merits of the asserted point of novelty and not
the motive behind its selection.
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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. 2 See Smith v.
Whitman Saddle Co., 148 U.S. 674, 682 (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
2 Contrary to assertions in the dissenting opinion, neither our precedent that
utilized the results of an obviousness inquiry in determining the point of novelty nor our
holding today is inconsistent with our Lawman decision. Lawman does not reject a non-
trivial test for the point of novelty inquiry, but rather rejects the notion that the
suggestion or motivation to combine prior art references must be proven as part of the
infringement analysis. Lawman Armor Corp. v. Winner Int’l, LLC, 437 F.3d 1383, 1385
(Fed. Cir. 2006). Rejecting application of the motivation to combine test is not
tantamount to rejecting application of an obviousness type analysis. See KSR Int’l Co.
v. Teleflex Inc., 127 S.Ct. 1727, 1741-42 (2007).
3 The dissent suggests that determining the point of novelty by a non-
triviality test conflates infringement and validity analyses. Dissenting Op., at 2. Design
patent law has already intertwined the infringement and validity tests. The infringement
test at issue in this case is called the “point of novelty” test. The question is not whether
the infringement and validity analyses are similar or conflated, they already are. The
question is: When the patentee claims a combination of old prior art elements as its
asserted point of novelty should the test be one of anticipation or obviousness? We
conclude that non-triviality ought to apply—if the standard is akin to anticipation then a
combination with even the most trivial difference would meet the standard.
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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.
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2006-1562 7
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.

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United States Court of Appeals for the Federal Circuit
2006-1562
EGYPTIAN GODDESS, INC.,
Plaintiff-Appellant,
and
ADI TORKIYA,
Third Party Defendant,
v.
SWISA, INC. and DROR SWISA,
Defendants/Third Party Plaintiffs-
Appellees.
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.
1 The majority’s approach is in fact more restrictive than a nonobviousness test
since it takes no account of secondary considerations.

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It seems to me that there are multiple flaws in the majority’s approach. First, by
conflating the criteria for infringement and obviousness, the test eviscerates the
statutory presumption of validity by requiring the patentee to affirmatively prove
nonobviousness. See 35 U.S.C. § 282 (“The burden of establishing invalidity of a
patent or any claim thereof shall rest on the party asserting such invalidity.”). The
burden of proof on obviousness rests with the accused infringer and must be
established by clear and convincing evidence. Under the majority’s test, however, the
patentee would have to prove nonobviousness in order to establish infringement.
Second, the majority’s approach is at the same time too narrow and too broad. It
is too narrow because it applies a special test only to designs which involve a
combination of design elements. It is clear to me that a single point of novelty test must
apply to all points of novelty, not just those involving combinations. That has invariably
been the approach of our past cases. The majority’s approach is also too broad
because it extends an obviousness-like test to each point of novelty, not merely the
overall design (which is presently the sole focus of the obviousness analysis).
Third, determining whether each combination point of novelty represents a “non-
trivial advance” over the prior art requires a difficult and restrictive inquiry in design
patent cases. As we have previously noted, “[d]esign patents have almost no scope.”
In re Mann, 861 F.2d 1581, 1582 (Fed. Cir. 1988). Points of novelty in design patents
are often not dramatically different from the prior art. It is difficult enough to assess
whether an overall design would have been obvious; it is almost impossible to
determine whether a particular design feature represents a trivial or substantial advance
over the prior art. The majority appears willing to have this issue resolved on summary
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judgment without factfinding by a jury, thus relegating to the court the determination
whether there is a non-trivial advance over the prior art, a determination which a court is
ill suited to make and which it did not in fact make in this case.
Fourth, the majority’s test is devoid of support in the case law. The most that any
of the cases cited by the majority can establish is that we have, in certain instances,
used the results of our obviousness analysis to determine the point of novelty under the
point of novelty test. But no case has come close to requiring a showing of
nonobviousness as part of the point of novelty test.2 In Bernhardt, L.L.C. v. Collezione
Europa USA, Inc., 386 F.3d 1371 (Fed. Cir. 2004), we considered only the question
whether expert testimony was required for a party to establish infringement under the
point of novelty test. In holding that such testimony was not required, the court merely
observed that “[a] determination of the differences between the patented design and the
prior art is not especially different from the factual determinations that district courts
routinely undertake on other issues, such as obviousness.” Id. (emphasis added). This
statement in no way suggests—as the majority appears to believe, see Maj. Op. at 5—
that the substantive inquiries on obviousness and infringement should be merged. Our
decisions in Litton and Goodyear do not support the majority’s test either. Litton Sys.,
Inc. v. Whirlpool Corp., 728 F.2d 1423 (Fed. Cir. 1984), was a case in which, having
determined that the differences between the patented design and the prior art rendered
the overall design nonobvious, see Graham v. John Deere Co., 383 U.S. 1, 17 (1966),
we then considered those differences to be the points of novelty. Litton, 728 F.2d at
1442, 1444. In Goodyear Tire & Rubber Co. v. Hercules Tire & Rubber Co., 162 F.3d
2 Smith v. Whitman Saddle Co., 148 U.S. 674 (1893), long predated the statutory
obviousness requirement.
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2006-1562 4
1113 (Fed. Cir. 1998), we held that the use of a similar approach by the district court
was not clearly erroneous. Id. at 1119, 1121. It is one thing to suggest that a feature
that renders a design nonobvious is also a point of novelty. It is quite another to hold
that a point of novelty cannot exist unless it would also render the design nonobvious.
Again, neither case establishes that there must be a showing of a non-trivial advance to
find an asserted combination point of novelty.
Finally, the majority’s test is in fact contrary to several of our cases. In Lawman
Armor Corp. v. Winner International, LLC, 437 F.3d 1383 (Fed. Cir. 2006), we rejected
applying an obviousness analysis to the determination of infringement. Id. at 1385. We
stated explicitly that “[w]hether there is any suggestion to combine prior art references
may be relevant in a validity inquiry to determine obviousness . . . but has no place in
the infringement issue in this case.” Id. Other cases have treated the questions of
novelty and obviousness in design cases as separate inquiries. Thus in In re Leslie,
547 F.2d 116 (CCPA 1977), our predecessor court distinguished situations “where the
novelty of the design is at issue” from situations “where, as here, the issue is one of
obviousness.” Id. at 120; see also In re Blum, 374 F.2d 904, 908 (CCPA 1967)
(although design had “an appearance which is novel in the strictest sense of the word,
the rejection here is not for want of novelty but for obviousness”).
I would address this case without reliance on the majority’s incorrect “non-trivial
advance” standard. I respectfully dissent.

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