Infringed Design Patent Requires Combination of Elements To Be Non-Trivial Advance

In Egyptian Goddess, Inc. and Adi Torkiya v. Swisa, Inc. and Dror Swisa (No. 06-1562; August 29, 2007), the Federal Circuit affirms, with a dissenting opinion, a district court’s grant of a summary judgment motion of noninfringement in an action involving a fingernail buffer design patent. No reasonable jury could conclude, says the Federal Circuit panel majority, that the point of novelty asserted by the patentee is a non-trivial advance over the prior art.

In the two-prong test for design patent infringement, the second prong places the burden on the patentee to identify the points of novelty of the patented design. The accused design must incorporate the points of novelty in order for the patent to be infringed. The patentee may assert that the point of novelty isn’t a single element, but a combination of elements which already exist in the prior art, the combination of those elements being the point of novelty.

The Federal Circuit two-member majority affirms the lower court’s decision that the combination of four prior art elements asserted to be the point of novelty does not constitute a non-trivial advance over the prior art. The dissenting opinion asserts that the majority hereby creates a new rule, namely the “non-trivial advance” rule, which only applies to patents asserting a combination of elements as a point of novelty.