The Federal Circuit made an important ruling in Egyptian Goddess Inc. v. ADI Torkiya, for determining infringement in design patent cases.  The Court rejected and abolished the Point of Novelty Test as a second or additional test for determining whether an accused device infringes the claimed design. 

The Court stated that the test is the same as the Supreme Court’s formulation in Gorham:  whether or not a hypothetical ordinary observer would find or be deceived into believing that the accused device is the same or substantially the same as the Patentee’s claimed design, in light of, the prior art within the Patentee’s field?  Id.  This test accounts for greater protection in areas where the Patentee’s field is less crowded and less protection in areas where the Patentee’s field is more crowded. 

The Court went on to state that the Patentee retains the burden of proof with respect to demonstrating substantial similarity for design patent infringement.  However, the Accused Infringer bears the burden of production for providing prior art references that it wants to be considered by the trier of fact.  Id. 

This is an important ruling clarifying the often confusing area of design patent infringement and proper application of the Ordinary Observer Test should lead to better results for both Patentees and Accused Infringers.  

Attached is a copy of the decision for your consideration:   egyptian-goddess