CAFC Clarifies "Point of Novelty" Test for Design Patent Infringement
The U.S. Court of Appeals for the Federal Circuit ruled today that, in applying the "point of novelty" test for design patent infringement, a patentee cannot combine a series of points of novelty into a further point of novelty. Lawman Armor Corp. v. Winner Int'l LLC, Appeal No. 05-1253 (February 22, 2006)
U.S. Design Patent D-357,621
SLIDING HOOK PORTION OF A VEHICLE
STEERING WHEEL LOCK ASSEMBLY
Plaintiff-patentee Lawman listed eight points of novelty for its design, but it did not challenge the district court's ruling that these eight points were shown in prior art patents. Instead, Lawman argued that the combination of these eight non-novel points in a single design was itself a ninth point of novelty. The Board rejected that approach:
"This argument is inconsistent with, and would seriously undermine, the rationale of the 'points of novelty' test. *** If the combination of old elements shown in the prior art is itself sufficient to constitute a 'point of novelty' of a new design, it would be a rare design that would not have a point of novelty. The practical effect of Lawman's theory would be virtually to eliminate the signficance of the 'points of novelty' test in determining infringement of design patents, and to provide patent protection for designs that in fact invlove no significant changes from the prior art."
The CAFC therefore affirmed the district court's summary judgment of non-infringement.