En banc Federal Circuit rules on design patent infringement criteria

There were many references to Gorham, including:

The Gorham Court then set forth the test that has been cited in many subsequent
cases: “[I]f, in the eye of an ordinary observer, giving such attention as a purchaser
usually gives, two designs are substantially the same, if the resemblance is such as to
deceive such an observer, inducing him to purchase one supposing it to be the other,
the first one patented is infringed by the other.” 81 U.S. at 528.

This consumer-oriented test sounds in trademark law (likelihood of confusion) rather than in
the skilled-artisan, the standard of patent law.

The CAFC noted the departure from the Gorham test:

In a number of cases decided after Litton Systems, this court has interpreted the
language quoted above to require that the test for design patent infringement consider
both the perspective of the ordinary observer and the particular novelty in the claimed
design. See, e.g., Bernhardt, L.L.C. v. Collezione Europa USA, Inc., 386 F.3d 1371,
1383 (Fed. Cir. 2004); Contessa Food Prods., Inc. v. Conagra, Inc., 282 F.3d 1370,
1377 (Fed. Cir. 2002);

(..)

Several of the amici make essentially the same point, referring to the proper
approach as calling for a three-way visual comparison between the patented design, the
accused design, and the closest prior art. The amici point out that courts, including this
one, have on occasion applied that approach in design patent cases, without identifying
it as a separate test. See, e.g., Brief of Amicus Curiae Apple, Inc., at 19 (citing, inter
alia, Elmer v. ICC Fabricating, Inc., 67 F.3d 1571 (Fed. Cir., 1995); Braun, Inc. v.
Dynamics Corp. of Am., 975 F.2d 815 (Fed Cir. 1992); and Bergstrom v. Sears,
Roebuck & Co., 496 F. Supp. 476 (D. Minn. 1980)).

(...)

Applying the ordinary observer test with reference to prior art designs also avoids
some of the problems created by the separate point of novelty test. One such problem
is that the point of novelty test has proved difficult to apply in cases in which there are
several different features that can be argued to be points of novelty in the claimed
design.

-->The bottom line-->

On the basis of the foregoing analysis, we hold that the “point of novelty” test
should no longer be used in the analysis of a claim of design patent infringement.
Because we reject the “point of novelty” test, we also do not adopt the “non-trivial
advance” test, which is a refinement of the “point of novelty” test. Instead, in
accordance with Gorham and subsequent decisions, we hold that the “ordinary
observer” test should be the sole test for determining whether a design patent has been
infringed.

***Oddzon was cited-->

distinguishing between those features of the claimed design that are
ornamental and those that are purely functional, see Oddzon Prods., Inc. v. Just Toys,
Inc., 122 F.3d 1396, 1405 (Fed. Cir. 1997) (“Where a design contains both functional
and non-functional elements, the scope of the claim must be construed in order to
identify the non-functional aspects of the design as shown in the patent.”).