## Facts

- Egyptian Goddess, Inc. owned U.S. Design Patent No. D467,389 covering a fingernail buffer design depicted as a rectangular, hollow tube with a generally square cross-section and abrasive surfaces on three of four sides.
- Swisa, Inc. sold a similar rectangular, hollow, square-cross-section nail buffer, but with abrasive surfaces on all four sides.
- Egyptian Goddess sued Swisa for design patent infringement in the Northern District of Texas.
- Prior art included a similar four-sided buffer design that was close in appearance to the accused product.

## Issues

1. Whether design patent infringement requires a separate “point of novelty” test in addition to the Gorham “ordinary observer” test.
2. If not, what standard governs design patent infringement and how prior art factors into that analysis.
3. What role, if any, verbal claim construction should play in design patent infringement litigation.

## Decision

- The Federal Circuit (en banc) affirmed summary judgment of noninfringement for Swisa.
- The court held the Gorham “ordinary observer” test is the sole test for design patent infringement.
- The court rejected the separate “point of novelty” test as a standalone infringement requirement.
- The court held prior art should be considered within the ordinary observer analysis by viewing the accused and patented designs as an ordinary observer familiar with the prior art would view them.
- Applying that framework, the court concluded no reasonable factfinder could find the accused four-sided buffer substantially the same as the patented three-sided design in light of the prior art.

## Legal Principles

- Design patent infringement is determined only by the ordinary observer test: whether an ordinary observer, giving the attention a purchaser usually gives, would find the accused design and the patented design substantially the same such that the observer would be deceived into purchasing one thinking it is the other.
- Prior art is relevant to infringement because the ordinary observer is assumed to be familiar with the prior art; similarities driven by prior art carry less significance, and differences can be evaluated in that context.
- A separate “point of novelty” requirement is not an independent element of infringement and should not be used as a mandatory second step.
- Detailed verbal claim constructions are not required in design patent cases; courts may give limited descriptions where helpful (including identifying functional aspects), but should avoid feature-by-feature verbalizations that distort the overall visual comparison.

## Conclusion

The en banc Federal Circuit affirmed noninfringement and clarified that design patent infringement turns on a single ordinary-observer comparison performed in view of the prior art, while discouraging rigid, detailed verbal claim constructions that shift attention away from the overall visual impression shown in the patent drawings.


Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008) (en banc)