Invalidating a design patent

2015) (rejecting Ethicon’s attempt to use the prior art to expand the presumptive scope of its claim). See Egyptian Goddess, 543 F.3d at 678 (stating in those instances that “resolution of the question whether the ordinary observer would consider the two designs to be substantially the same will benefit from a comparison of the claimed and accused designs with the prior art . Based on its own visual review, the court found that the designs were so “sufficiently distinct and plainly dissimilar .

The author thanks Pamela Samuelson and Mark Lemley for comments on earlier drafts of this response. White, 8 354, 380 (2009) (“The Federal Circuit’s holdings in Arminak and Egyptian Goddess improperly replace the ordinary observer test with an ‘extra-ordinary observer’ test.”); James Juo, Egyptian Goddess: Rebooting Design Patents and Resurrecting Whitman Saddle, 18 design patents are given a much narrower scope than the cases discussed in Intelligent Design might seem to suggest.

E.g., Peter Lee & Madhavi Sunder, The Law of Look and Feel, 90 S[3]. Under Egyptian Goddess, the presumptive scope of a design patent is narrow and may be further narrowed if there is close prior art. Under Egyptian Goddess, a design patent is infringed when “an ordinary observer, familiar with the prior art, would be deceived into thinking that the accused design was the same as the patented design.” [8].

They do cite the case that set forth that test and note that it “do[es]not enable claimants to protect downstream ‘derivatives’ of their designs.” Id. Therefore, at least two of the proposals in Intelligent Design—namely, functionality screening, invalidity based on “principal features,” and adding an independent invention defense—may not be either appropriate or necessary. Egyptian Goddess, 543 F.3d at 672; see also Burstein, The “Article of Manufacture” in 1887, supra note 4, at 11 (“In this context, ‘the patented design’ means ‘the claimed design.’ Therefore, in analyzing infringement, the fact finder must compare the claimed portion of the design—i.e., whatever is shown in solid lines in the patent drawings—to the corresponding portion of the accused design.” (citing Egyptian Goddess, 543 F.3d at 662; Hutzler Mfg.

And if there were a case where a piece of prior art looked the same as the accused design, one would expect that case to settle quickly in light of the infringement-anticipation symmetry principle.

The author is not aware of any cases where anyone has been held liable for infringement post-Goddess for merely practicing the prior art.

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