Prior to the Federal Circuit’s en banc decision in Egyptian Goddess,  in order to establish design patent infringment plaintiffs had to demonstrate that an accused design infringed under two separate tests, the ordinary observer test and the point of novelty test.   The Egyptian Goddess  decision is best known for its elimination of the point of novelty test, and having clarified the ordinary observer test.   I analyzed this new analysis in a paper published in conjuction with my presentation to the American Bar Association’s 24th Annual Intellectual Property Law Conference.

Besides throwing out the point of novelty test, the Egyptian Goddess case also explained the proper role of claim construction in design patent cases.  I argued in an article in December 2008 that the case seemed to require that district courts identify during the claim constructin process the individual features of design patents that were functional.  Functionality of Individual Features of Design Patents: A New Role After Egyptian Goddess, 77 BNA’S PATENT, TRADEMARK & COPYRIGHT JOURNAL  139, December 12, 2008.  Perry J. Saidman presented his opposing view in a response in the same publication.   Functionality and Design Patent Infringment:  Rarely the Twain Should Meet, 77 BNA’S PATENT, TRADEMARK & COPYRIGHT JOURNAL   201, December 19, 2008.  In April 2009 the federal district court in Arizona also read Egyptian Goddess as requiring courts to identify such individual functional elements as part of claim construction.  Richardson v. Stanley Works, Inc., 610 F.Supp.2d 1046 (D. Ariz. April 6, 2009).   In commenting on the case, another authority on design patent law, Chris Carani, said that this issue had not been “thoroughly vetted” in Egyptian Goddess.   Tony Dutra, District Court Discounts Functional Elements in Design Patent Ordinary Observer Test (77 BNA’S PATENT, TRADEMARK & COPYRIGHT JOURNAL  670, 4/17/09.  In a final article by  me on the subject, I sought to lay to rest this myth that both sides of the issue were not briefed to the en banc court by numerous lawyers, including myself, Saidman and Carani.   Recent Decision Reads Egyptian Goddess Correctly: Functionality is Critical to Design Patent Analysis, 78 BNA’S PATENT, TRADEMARK & COPYRIGHT JOURNAL  17, May 1, 2009.  Confirming my position, the Federal Circuit held that the district court had properly factored out functional elements in its claim construction in Richardson v. Stanley Works, Inc., 597 F.3d 1288 (Fed. Cir. 2010).