Combination of Visual Elements from Prior Art Does Not Create New Point of Novelty for Design Patent

Case: Lawman Armor Corp. v. Winner Int'l, LLC, No. 05-1253 (Fed Cir. 2/22/06)

The Two Sentence Summary: The district court properly granted summary judgment of non-infringement on a claim for infringement of a design patent on an automobile steering wheel lock where various items of prior art disclosed each of the asserted points of novelty of the design. A point of novelty to avoid summary judgment cannot be created by the combination of design elements already in the prior art.


What They Were Fighting About: The district court granted summary judgment of non-infringement of a design patent after accepting defendant's argument that each of the eight asserted design elements (e.g. ridges) were present in the prior art.

Federal Circuit Holdings:

• Plaintiff incorrectly argued that the prior art needs to have a suggestion to combine visual elements. This may be relevant to obviousness, but not to infringement.
• In comparing a design patent claim to the accused design to determine infringement, a court must apply "two distinct tests, both of which must be satisfied in order to find infringement: (a) the ‘ordinary observer’ test, and (b) the ‘point of novelty’ test." Contessa Food Prods., Inc. v. Conagra, Inc., 282 F.3d 1370, 1377 (Fed. Cir. 2002). See Unidynamics Corp. v. Automatic Prods. Int’l, Ltd., 157 F.3d 1311, 1323 (Fed. Cir. 1998). The "ordinary observer" test requires comparison of the two designs from the viewpoint of the ordinary observer to "determine whether the patented design as a whole is substantially the same as the accused design." Tropicana Prods., Inc. v. Land O’ Lakes, Inc., 286 F. Supp. 2d 343, 345 (D. Del. 2003) (citing Braun Inc. v. Dynamics Corp. of Am., 975 F.2d 815, 820 (Fed. Cir. 1992)). Under the "point of novelty" test, a court must determine whether "the accused device . . . appropriate[s] the novelty in the patented device which distinguishes it from the prior art." Litton Sys., Inc. v. Whirlpool Corp., 728 F.2d 1423, 1444 (Fed. Cir. 1984), (quoting Sears, Roebuck & Co. v. Talge, 140 F.2d 395, 396 (8th Cir. 1944)). See generally Bernhardt, L.L.C. v. Collezione Europa USA, Inc., 386 F.3d 1371, 1384 (Fed. Cir. 2004) (discussing the required showing for the "point of novelty" test).
• The court correctly granted summary judgment of non-infringement. Combination of existing elements from the prior art does not create a point of novelty.