The Ordinary Observer Test Is the Test for Invalidity for Design Patents

Int’l Seaway Trading Corp. v. Walgreens Corp., No. 2009-1237 (Fed. Cir. Dec. 17, 2009):

Holding:

The ordinary observer test is the test for invalidity for design patents. Slip op. at 6.

Relevant Facts:

The design patents are directed to footwear designs. The parties disputed whether the district court erred by basing its invalidity determination solely on the ordinary observer test and by failing to apply the point of novelty test. The Federal Circuit affirmed the district court’s application of the ordinary observer test, but remanded for further proceedings because the district court failed to compare the insole patterns in Seaway’s patented designs to the prior art as part of an overall comparison of the designs.

Comments:

The Federal Circuit extended the ordinary observer test for infringement in Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008) (en banc) to invalidity inquiries. In addition, the Federal Circuit clarified that although Contessa Food Prods., Inc. v. Conagra, Inc., 282 F.3d 1370, 1377 (Fed. Cir. 2002) requires a court to consider only those portions of the product that are visible during normal use, normal use includes, not excludes, the point of sales.