Has the Federal Circuit Strengthened Design Patent Protection?

On Sept. 22, 2008, the Federal Circuit issued its first en banc decision in a design patent case. In Egyptian Goddess v. Swisa, __ F.3d __ (Fed. Cir. 2008), the court held that the “ordinary observer” test first set forth by the Supreme Court more than 100 years ago is the sole test for design patent infringement. See Gorham v. White, 81 U.S. 511 (1871). In doing so, the Federal Circuit rejected the “point of novelty” and “non-trivial advance” tests first articulated in Litton Systems, Inc. v. Whirlpool Corp., 728 F.2d 1423 (Fed. Cir. 1984) and the original panel decision in Egyptian Goddess, 498 F.3d 1354 (Fed. Cir. 2007), respectively. At first glance, the court's decision appears to strengthen design patents by reducing the number of tests that a patent holder must satisfy to prove infringement. On closer inspection, however, the court also expanded the ordinary observer test, allowing continued reliance on prior art as a defense to infringement without the burden of invalidating the patent-in-suit. In fact, the Federal Circuit's decision seems to make “practicing the prior art” a viable defense against design patent infringement claims.