"Point Of Novelty" Test Remains For Design Patent Infringement

In Lawman Armor Corporation v. Winner International, LLC et al. (No. 05-1253; February 22, 2006), a Federal Circuit panel affirms a district court's summary judgment of non-infringement of a design patent for a vehicle steering wheel lock assembly. In the district court , Lawman identified eight points of novelty of the patented design , to which Winner responded by identifying patents depicting each of those eight points. Accordingly, the district court found that the points of novelty were found in the prior art and granted summary judgment of non-infringement. The panel finds that Lawman made no attempt to show that the district court erred in its decision providing that the eight points of novelty are disclosed in the prior art. The Federal Circuit panel rejects Lawman's argument that there was no suggestion to combine the prior art elements to achieve the patented design, essentially arguing that the combination of the prior art elements is itself a ninth point of novelty. This decision maintains the long-standing "point of novelty" design patent infringement test, namely, that an accused device must appropriate the novel features of the patented design, specifically those features that distinguish it from the prior art.