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.
Medlin, Kirkpatrick & Lockhart Preston Gates Ellis LLP, of Dallas, Linton
Frederick
Texas, argued for defendants/third party plaintiffs-appellees. With him on the brief was Linda G. Moore. Of counl was Jeffrey L. Snow, of Boston, Massachutts.
F. David LaRiviere, LaRiviere, Grubman & Payne LLP, of Monterey, California, for amicus curiae Monster Cable Products, Inc.
热门专业Dunnegan, Dunnegan LLC, of New York, New York, for amicus curiae William
Industrial Designers Society of America. With him on the brief was Nikitas E. Nicolakis.
Edward D. Manzo, Cook, Alex, McFarron, Manzo, Cummings & Meher, Ltd., of Chicago, Illinois, for amici curiae Elite Group, Inc., et al.
Kevin T. Kramer, Pillsbury Winthrop Shaw Pittman LLP, of Washington, DC, for amicus curiae Feder
al Circuit Bar Association. With him on the brief were Edward R. Reines, Federal Circuit Bar Association, of Washington, DC, and Mark P. Walters, Darby & Darby, of Seattle, Washington.
George M. Sirilla, Pillsbury Winthrop Shaw Pittman LLP, of McLean, Virginia, for amicus curiae Daisy Manufacturing Company, Inc. With him on the brief was Stephanie F. Goeller, of Washington, DC.
Frank A. Angileri, Brooks Kushman P.C., of Southfield, Michigan, for amicus curiae Ford Global Technologies, LLC. With him on the brief was Marc Lorelli.
McGeehan, Greer, Burns & Crain, Ltd., of Chicago, Illinois, for amicus Christopher
J.
curiae Intellectural Property Law Association of Chicago.
Koelsch, Howrey LLP, of Washington, DC, for amicus curiae Bar Vandana
Association of the District of Columbia.
Tracy-Gene G. Durkin, Sterne, Kessler, Goldstein & Fox P.L.L.C., of Washington, DC, for amicus curi
ae Intellectual Property Owners Association. With her on the brief was David K.S. Cornwell. Of counl on the brief were Steven W. Miller, The Procter & Gamble Company, of Cincinnati, Ohio, and Richard F. Phillips, Exxon Mobil Corporation, of Houston, Texas. Of counl was Herbert C. Wamsley, Intellectual Property Owners Association, of Washington, DC.
William T. Fryer, III, of Bethesda, Maryland, for amicus curiae Professor William T. Fryer, III.
Christopher J. Renk, Banner & Witcoff, Ltd., of Chicago, Illinois, for amici curiae Electrolux Home Products, Inc., et al. With him on the brief were Erik S. Maurer, of Chicago, Illinois, and Robert S. Katz, of Washington, DC. Of counl was Christopher B. Roth.
Christopher V. Carani, McAndrews, Held & Malloy, Ltd., of Chicago, Illinois, for amicus curiae American Intellectual Property Law Association. With him on the brief was James Pooley, Morrison & Foerster LLP, of Palo Alto, California.
肉皮冻Perry J. Saidman, Saidman DesignLaw Group, of Silver Springs, Maryland, for amicus curiae Apple Inc.
Alan L. Barry, Bell, Boyd & Lloyd LLP, of Chicago, Illinois, for amici curiae LKQ Corporation, et al. With him on the brief were Heather A. Boice and Brian J. Arnold.
Friedrich, Baker & McKenzie LLP, of Houston, Texas, for amicus curiae K.
Valerie
Houston Intellectual Property Law Association.红粘土
Appealed from: United States District Court for the Northern District of Texas扬的组词
Judge David C. Godbey
United States Court of Appeals for the Federal Circuit
2006-1562
EGYPTIAN GODDESS, INC.,
Plaintiff-Appellant,
and
红颜旧歌曲ADI TORKIYA,
Third Party Defendant,
v.
SWISA, INC. and DROR SWISA,
Defendants/Third Party Plaintiffs-
Appellees.
Appeal from the United States District Court for the Northern District of Texas
in ca no. 3:03-CV-0594, Judge David C. Godbey.
___________________________
DECIDED: September 22, 2008
___________________________
Before MICHEL, Chief Judge, and NEWMAN, ARCHER, MAYER, LOURIE, RADER, SCHALL, BRYSON, GAJARSA, LINN, DYK, PROST, and MOORE, Circuit Judges. BRYSON, Circuit Judge.
We granted rehearing en banc in this design patent ca to address the appropriate legal standard to be ud in asssing claims of design patent infringement.
Appellant Egyptian Goddess, Inc., (“EGI”) brought this action in the United States District Court for the Northern District of Texas, alleging that Swisa, Inc., and Dror Swisa (collectively, “Swisa”) had infringed EGI’s U.S. Design Patent No. 467,389 (“the ’389
patent”). The patent claimed a design for a nail buffer, consisting of a rectangular, hollow tube having a generally square cross-ction and featuring buffer surfaces on three of its four sides. Swisa’s accud product consists of a rectangular, hollow tube having a square cross-ction, but featuring buffer surfaces on all four of its sides.
The district court first issued an order construing the claim of the ’389 patent. In so doing, the district court sought to describe in words the design t forth in Figure 1 of the patent, which is depicted below:
Upon study of the claimed design, the court described it as follows:
A hollow tubular frame of generally square cross ction, where the
虫草乌鸡汤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 ction are rounded, with the outer corner of the cross ction
rounded on a 90 degree radius of approximately 1.25T, and the inner
corner of the cross ction 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.
In the same order, the district court ruled that “Swisa has not shown that the appearance of the Buffer Patent is dictated by its utilitarian purpo.” The court therefore held that the patent is not invalid on the ground that the design was governed
solely by function. Egyptian Goddess, Inc. v. Swisa, Inc., Civil Action No. 3:03-CV-0594-N (N.D. Tex. Mar. 4, 2005), citing Seiko Epson Corp. v. Nu-Kote Int’l, Inc., 190 F.3d 1360, 1368 (Fed. Cir. 1999).
Swisa then moved for summary judgment of noninfringement. The district court granted the motion. Citing precedent of this court, the district court stated that the plaintiff in a design patent ca must prove both (1) that the accud device is “substantially similar” to the claimed design under what is r
抻面的做法eferred to as the “ordinary obrver” test, and (2) that the accud device contains “substantially the same points of novelty that distinguished the patented design from the prior art.” Egyptian Goddess, Inc. v. Swisa, Inc., Civil Action No. 3:03-CV-0594-N (N.D. Tex. Dec. 14, 2005), citing Goodyear Tire & Rubber Co. v. Hercules Tire & Rubber Co., 162 F.3d 1113 (Fed. Cir. 1998). After comparing the claimed design and the accud product, the court held that Swisa’s allegedly infringing product did not incorporate the “point of novelty” of the ’389 patent, which the court identified as “a fourth, bare side to the buffer.”
The district court noted that the parties disagreed as to the points of novelty in the ’389 patent. EGI identified four elements in its design, and for each element it identified prior art that did not embody that element. EGI therefore contended that the point of novelty of the ’389 patent is the combination of tho four elements. The district court, however, declined to address the question whether the point of novelty could be found in the combination of elements not prent in various prior art references, becau the court found that a single prior art reference, United States Design Patent No. 416,648 (“the Nailco patent”), contained all but one of the elements of the ’389 design. The court described the Nailco Patent as disclosing “a nail buffer with an open
and hollow body, raid rectangular pads, and open corners.” The only element of the ’389 patent d
esign that was not prent in the Nailco patent, according to the district court, was “the addition of the fourth side without a pad, thereby transforming the equilateral triangular cross-ction into a square.” Becau the Swisa product does not incorporate the point of novelty of the ’389 patent—a fourth side without a pad—the court concluded that there was no infringement.
省部级干部EGI appealed, and a panel of this court affirmed. The panel agreed with the district court that there was no issue of material fact as to whether the accud Swisa buffer “appropriates the point of novelty of the claimed design.” Egyptian Goddess, Inc. v. Swisa, Inc., 498 F.3d 1354, 1355 (Fed. Cir. 2007). In reaching that conclusion, the panel stated that the point of novelty in a patented design “can be either a single novel design element or a combination of elements that are individually known in the prior art.” Id. at 1357. The panel added, however, that in order 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.” Id.
The panel noted that EGI’s asrted point of novelty was a combination of four of the claimed design’s elements: (1) an open and hollow body, (2) a square cross-ction, (3) raid rectangular buffer pads, and (4) expod corners. The panel agreed with the district court’s obrvation that the Nailco prior art patent contained each of tho elements except that the body was triangular, rather t
han square, in cross-ction. 498 F.3d at 1358. In light of the prior art, the panel determined that “no reasonable juror could conclude that EGI’s asrted point of novelty constituted a non-trivial advance over the prior art.” Id.
