Nature of the Case
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Facts
P brought this action alleging that D had infringed P's '389 design patent. The patent claimed a design for a nail buffer. The design consisted of a rectangular, hollow tube having a generally square cross-section and featuring buffer surfaces on three of its four sides. D's product consists of a rectangular, hollow tube having a square cross-section, but featuring buffer surfaces on all four of its sides. The district court ruled that 'D has not shown that the appearance of the Buffer Patent is dictated by its utilitarian purpose.' The court held that the patent is not invalid on the ground that the design was governed solely by function. D moved for summary judgment of noninfringement. The district court granted the motion. The district court held that the plaintiff in a design patent case must prove both (1) that the accused device is 'substantially similar' to the claimed design under what is referred to as the 'ordinary observer' test, and (2) that the accused device contains 'substantially the same points of novelty that distinguished the patented design from the prior art.' The court held that D'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.' P identified four elements in its design, and for each element, it identified prior art that did not embody that element. P contended that the point of novelty of the '389 patent is the combination of those four elements. The court found that a single prior art reference contained all but one of the elements of the '389 design. The only element of the '389 patent design that was not present in the prior patent, was 'the addition of the fourth side without a pad, thereby transforming the equilateral triangular cross-section into a square.' D's product does not incorporate the point of novelty of the '389 patent--a fourth side without a pad--and the court concluded that there was no infringement. P appealed. The panel affirmed. The panel noted 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.' P petitioned for en banc review and it was granted. The court asked the parties to address several questions, including whether the 'point of novelty' test should continue to be used as a test for infringement of a design patent; whether the court should adopt the 'non-trivial advance test' as a means of determining whether a particular design feature qualifies as a point of novelty; how the point of novelty test should be administered, particularly when numerous features of the design differ from certain prior art designs; and whether district courts should perform formal claim construction in design patent cases.
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