In the U.S. case Egyptian Goddess v. Swisa, the the US Court of Appeals for the Federal Circuit adopted an “ordinary observer” test for determining whether a design patent (also known as an industrial design) has been infringed. Prior to this case, courts often used a “point of novelty” test: identify the point of novelty that makes the design distinct from prior art, and then determine whether that point of novelty has been copied by the alleged infringer. However, the court acknowledged the limitations of the point of novelty test:
“The point of novelty test has proved more difficult to apply where the claimed design has numerous features that can be considered points of novelty, or where multiple prior art references are in issue and the claimed design consists of a combination of features, each of which could be found in one or more of the prior art designs.”
An ingenious design might not always possess a single point of novelty. The design may involve multiple points of novelty, or the grouping of otherwise typical features in a novel way. The court in Egyptian Goddess ultimately redefined the infringement test. It concluded that an ordinary observer, familiar with the prior art, would naturally be drawn to features of the designs that made them distinct from the prior art. This would allow such an observer to see whether these distinct features had been appropriated or not. Patently-O attempts to distill this down to a simple principle:
“… the scope of infringement varies inversely with the scope of prior art. When a patented design is in a field crowded with similar prior designs, the only infringing designs will be those that are strikingly similar to the patented design yet different from the prior art. Alternatively, when the patented design stands alone as a breakthrough design, the potential variety of infringing activity actually increases.”
Patently-O suggests that it might even make sense to apply this same standard for patented inventions, thereby increasing the scope of a claimed invention when it goes well beyond the prior art. But to some degree, patents already accomplish this when their claims are broad and valid. A truly breakthrough invention can enjoy a broad claim of patentability, whereas an invention with smaller changes must define its scope with more nuance in order to be considered valid. In that sense, the patent system already provides wider protection for major breakthroughs.
Perhaps more interesting is the notion that this is a test from the perspective of an “ordinary observer”. Although the test is an objective standard to be evaluated by the court, it may invite the opinion of actual ordinary observers. We have already seen this in trademark confusion cases, with trademark experts using surveys of ordinary people to support their testimony. Forty years ago, a survey of ordinary people was considered inadmissible as hearsay. By the late 1980s, MacFarland J. determined that survey evidence was not just admissible, but it was necessary for trademark confusion cases. In Sun Life Assurance Co. of Canada v Sunlife Juice Ltd. he asserted that any “attempt to make such a determination [of confusion] without regard to evidence of what others may think or have said would to my mind be nothing more than an exercise in pure judicial fantasy and of not much assistance at all.”
Patent cases already make strong use of expert testimony. But this sometimes risks degrading the argument into a mere duel of experts – hired guns who echo the views of their clients. If infringement is determined by an “ordinary observer familiar with the prior art”, then it would be possible to design a scientific survey that represents the views of an independent group of observers with greater objectivity. The survey process would familiarize subjects with the prior art and then ask them to assess the similarity of the patented material. Or, perhaps it would be more effective to actually survey experts in the field who are already familiar with the prior art. Either way, shifting towards an ordinary observer test could initiate a marked change in how infringement cases make use of evidence.