Legal Case Summary

Full bench of course is Egyptian goddess versus Suisa ink appeal 2006 dash 1562 before we start the argument. I want to announce on behalf of the court that Under the relevant statute found at 28 USC Section 46 C senior judge Glenn L. Archer will be part of the in-bank court at his election. So it's a 13 Judge court even though only 12 people are on the bench today Judge Archer will be reviewing the arguments From our recording but will not to participate live in this Proceeding or the ensuing conference with that mr

. Oak welcome to the court Please proceed I understand you're reserving 10 minutes for rebuttal time when the yellow light goes on your beginning to consume that 10 minutes May please the court my name is Robert Oak and I represent the Egyptian goddess Thank you for accepting this case for The court's first question is should point of novelty be a test for infringement of design pack when you get beyond One simple design What do you do with a complex furniture design with lots of lion's feats and heads all looking different directions slight variations? What would be the point of novelty and how would you apply the test? in a complex design my Answer is that point of novelty should not be a test This is what I ask you I'm asking you what do you do with it when you have that situation? Well What you would do is Determine first of all you have a situation where you're comparing an accused Device to a patent of design and the question would be whether the accused Device the substantial overall appearance of the accused Design what is going to be the point of novelty when you have a complex design with many many Little points that may be different from the prior art that is the problem with the point of novelty test You cannot determine it's impossible to determine when you have many complex designs on But the patentee would have the obligation to select one wouldn't they? Well if you if this court continues with the point of novelty test Then yes, the patent would have an obligation to select one, but is that fair to the patent D? well The patent E of course must follow this courts rules rules of law and And you know in that situation the patentee would obviously select a Point of novelty that was found in the accused device and the the Defendant would probably select one that is not and then it would be up to either a fact finder or a court to decide If the point of novelty was correct, but again There are so many problems with the point of novelty test that there is not why doesn't it work perfectly well for this case when there does appear to be a Single point of novelty and it does seem to help the court Bridal what would otherwise be a very indeterminate an ordinary observer test Well the district court in this case determined that there was a single point of novelty a foresight without a pat but I would argue that is the result of linguistic music Paintings were manipulation, but that's exactly what happened because actually there were two distinct points of novelty Mr. Oak, we've asked whether we should continue to follow the point of novelty test But now we bound by Smith versus Whitman saddle The Supreme Court in 1893 essentially applied a point of novelty test Well, that was after the Gorham case so obviously the court had intended the two to work together Yes, well first of all this court is of course bound by Supreme Court authority But the question is what does this Whitman saddle case mean and it does not use or express a point of novelty Test well It doesn't use those words, but it certainly applied the concept to talk about what was new in material and said lacking that there was no infringement Well, but the the key concept I think in Whitman saddle and again You know we perhaps want to put Whitman saddle in context before we talk about the specific language but going directly to that answer to your question Whitman saddle never identified a specific Individual point of novelty about also taking into consideration the effect that that individual New point had on distinguishing the overall appearance You you you Whitman saddle as applying what's come to be known as the three-way test Well, I don't know that it applies the three-way test But I think if you apply the three-way test when you can apply the three-way test any time that you have a patented design and accused design You're in favor of a three-way test, right? I think that the three-way test is helpful will be helpful to a jury in understanding how to apply the infringement test I do I think it's a supplemental test and I think the more tests you have the more different ways you have a looking And comparing it to designs the better the better it is In your you propose a test in which you cite that the Appropriation by the accused design of the quote distinctive overall visual appearance that makes the patented design distinctive over the Prior art what can you articulate the difference between the novel elements Versus the distinctive overall visual appearance because the novel element seems to me to be the point of novelty test What's the difference between novel elements and distinctive overall visual appearance? the Difference is that in the point of novelty test you are looking at points of novelty Independently without Considering the effect that they have on distinguishing the overall design from the prior art and in the proper test which I believe is in Gorum and as expressly discussed and applied arts That test expressly states that you look at the overall distinctive appearance of The when comparing the patented keys designs and you don't just pick out individual points of novelty Without considering the overall distinctive appearance Every week going test really one in which the Supreme Court specifically looked at the observer the ordinary observer and the ordinary observer was confused By the product and there was infringement That really ordinary observer type of a test I Think so, Your Honor because of course the ordinary observer Is an objective standard and the ordinary observer as an objective standard would have in their mind is they're making the comparison All of the prior maybe not all of the prior art, but certain relevant prior art and so And so it is an objective standard I think the objective standards there are no guidelines Well That particular and isn't that what point of novelty constitutes a guideline First of all, let me say that increasing objectivity In this area of law is is our greatest challenge. There's no question about But we don't want to go to rigid formula tests

. We need to retain flexible standards and the ordinary observer test is a flexible Standard that is objective because you've got a An objective person That you define as having in mind certain relevant prior art and then when they compare the accused design and the patented design They do that with that mental framework in mind What is the It's the point of novelty a question of Interpretation for the court or is it a question of fact I would say it's a question of fact And how would the fact find or determine the point of novelty? Well again, I think it's extremely difficult to do that and that's why I am arguing that the point of not to test should be abandoned Because of all the different points and there'll be more than one point of novel certainly there can be and that's one of the problems particularly when you have when you have to when you're comparing Two designs and you have multiple pieces of prior art you can have different points of novelty Combination points of novelty sub sex of combinations of points. You said there were two in this case. What are the two points in this case? Well, there are There are There are several ways to describe the points of novelty in this case It depends on what pieces of prior art that you're considering and what comparison that you're making the trial court only compared The patent the patented buffer against one piece of prior art

. We thought that was wrong But that's what he did and the two differences were the Square cross section and then the lack of a buffer pad on the four side which the trial court collapsed Improperly we believe into a single point of novelty, but different points of novelty could could have been Could have been turned based upon what other prior art the patent buffer was compared to council I'd like to bring you back to judge process question because her question is something that's troubling me I P.O. Nike a number of amicus briefs have articulated a standard or a test that they think we ought to apply which I I think seems to track Gorum and then whether or not the prior art and this is closer the prior art is is more like a defense to the infringement Which of course the patentee would bear the burden of proof across the board on infringement But the production would switch back and forth But you instead take a different approach as I understand it Which is that you think there is this overall distinctive appearance test that evolves from Gorum and Like judge pro question mind to you is I am very having a difficult time seeing how it's any different from the point of novelty Tell me in this particular case if you could How it is that the overall distinctive appearance what about these things should I be looking at in terms of the overall Distinctive appearance

. I just don't see how it's any different the point of novelty and so I want to give you a chance to help me understand that The trial court determined that the point of novelty was a fourth side without a pat But we know Tammy Taylor has that so that can't actually be a point of novelty Right, well, that's correct and that was another that was an alternative argument that I had but but my primary point is that See that point of novelty was determined by the trial court without determining the overall effect that it had on the distinctive appearance of the patented buffer is opposed to the prior art see the prior art had the took let's talk about the Tammy Taylor the square And then the nail code which was a triangular pattern and We contend that would made this patented buffer so distinctive from the prior art is because it had a rectangle or a square cross section and It had these raised buffer pads which gave it a distinctive appearance now the the the lack of a single buffer pad We don't think really affected the overall Significant the distinctive appearance from the prior art and yet that's what the trial court focused on and that is improper You've got to somehow keep that link between the between the point that is pulled out For comparative purposes and the effect that it has on the overall distinctive appearance of the accused advice and patented design So what I hear you telling us and Which in many ways I say I think is correct when you think of the enormous variety of Designers and we've perhaps gotten ourselves into Thinking about things too narrowly through uses of the word point. I think the cases they talked about points of novelty in fact there was a specific point but in Gorm there was no specific point in nobody's ever challenged that There can't be novelty in an overall design. It's just trying to focus and as you commented trying to put into words Something that is a picture a perhaps not subject to words and so I think I'm not nearly as troubled by an apparent split between the design and as a whole and Trying to find the point because the point of novelty cases really talk about what makes this design novel rather than focusing on something more narrowly described what stated a little differently when the novelty is the combination of all of the elements Doesn't the test really collapse back into the ordinary observer substantial similarity test? In effect it does but that should not be a disqualification for choosing I mean it all depends on what is the point of novelty if we are comparing the passive device against the prior art and it just so happens that what makes it Different for the prior art is the overall appearance than that if you're following the point of novelty test Then that would be the point of novelty and there should be no reason no principal reason why it should be disqualified Just because it's the overall appearance But what do you know like the point of novelty test? You've made that clear but what's unclear to me is what you would substitute for some of the amiki It's suggested this three-way test in other words It's essentially a two-part test the ordinary observer test of comparing it to the pattern of design But then you also have to ask whether the accused design or similar to the prior or or to the pattern to design do you favor that or do you not favor? I do favor that I think that that the proper approach here just in some is to go back to the way that apply arts in the applied art art case interpret the gory decision and The way applied arts determined it as you start off with the broad-proposition that for infringement the accused Design must present the appearance or overall visual effect that distinguishes the pattern designed from the prior art and then as a supplement To that to help the jury and you could do with jury instructions you ask the practical test And that is whether the accused design and this is just one way to express it You can express it in terms of differences or similarities But whether the accused design differs from the pattern to design more widely than the pattern to design differs from the prior art And if so then infringement is unlikely and I think that's a separate test from the ordinary observer I think it works in conjunction with it's a practical way of making the comparison and it helps the jury Decide is it more similar to the prior art or more similar to the path that is I'm that's right and and pre-litten There was also this concept that when the prior art was Crab it then the order the objective ordinary observer made the comparison in a more discriminatory manner And I think that's helpful as well now, but when we come up to litten what litten did is Talked about the applied arts test, but then litten started talking about it in terms of points of novelty And I think the intent of litten was good again

. We're trying to increase objectivity in a very subjective area And it appeared easy to apply because in litten The court had just done a non-obvious or an obviousness of Ramers' John Deere and in the second column had just come up with specific points of novelty So they were just sitting there waiting to apply We have a picture unlike the utility pattern where we have words of course And construction is difficult because difficult to translate words But when you have just a picture it's even more difficult But doesn't the point of points of novelty test Couple with the idea of claim construction which really goes along with it and they both a fact find it to point out And the young of the pattern to point out what it is that makes this distinct points of novelty claim construction to point out in a way that near Visualization doesn't do it but putting it into writing and doesn't that facilitate adjudication of infringement That is the hope of litten systems, but as it turns out it has failed the test of time Well, council, I'd like you to expand on that you keep mentioning six or seven times here about problems that jury they're having As I recall in this case we had summary judgment We didn't even have a jury so we don't have any jury instructions We don't have any risk of jury confusion. We don't have any jury at all Now is there some evidence that wasn't in your brief that's ever since litten juries have been stumbling and fumbling and having difficulty applying this So-called point of novelty test and if so, what is that evidence? Well I would say that the test worked well before litten and that the problem was that litten Converted what was a workable test into a point of novelty test where it then became Important to determine specific points of novelty and that's what we've run into all of the problems What is the evidence that juries have been unable to apply the litten test? Well I don't know of any specific evidence where a jury has been unable to apply it But what I see in the case law is that there is confusion About how to determine what is a precise point of novelty when you have multiple possible points of novelty Combination subset combination There doesn't seem to be a principal way to do that and if what we're looking for is Why is it why is it different from any other litigation the plaintiff proposes his point of novelty Saying whatever and then the defendant says no, I disagree. I think the correct point of novelty is this other thing And if it's a matter of law the judge decides if it's a genuine factual dispute to jury decides what is the correct From what they're offered usually too alternative now

. Maybe as they do it. Well, maybe they do don't do it Well, but why is that different from any other a kind of legal issue that or factual issue that goes to a jury They they're they get alternatives and they get evidence on both sides They get arguing on both sides and they make the best choice. They can why is this any different? Two reasons first of all is inconsistent with gorum in gorum You've got to look at the overall distinctive appearance And if you're separating point of novelty from that if by-lives gorum as interpreted by applied arts and second reason The Whitman saddle case didn't think they were in being inconsistent with gorum same cork gorum that's true But if you look at the key language in Whitman saddle it's clear That they are that they consider this pommel drop To be the only distinction from the prior art so that that was the distinction from the prior art So there was that link but the second reason That we should go down a phone of novelty passes

. We're looking for predictability. Oh, we're already there That's the precedent. So the question is whether the full court now over rules Litten and all the subsequent cases And normally we don't overrule a precedent of a decade or more of standing unless There's been some intervening event like a new Supreme Court case or a new statute or but rarely Where the practical application has proved to be a disaster and then sometimes the appellate court sitting in bank will revisit a test and overrule a precedent That's why I'm asking you

. What's the foundation that this has been such a disaster? Because as we have tried to apply the point of novelty test over different and diverse fact patterns It's clear that there are fatal defects with it and it has decreased It's clear to you but I'm trying to make it clear to me. Okay We can't there there's no way to Figure out a principled way to determine what the point of novelty is and The pre-litten. Why is an principled enough that each side makes their contention offers their proof and then either the judge or the jury chooses Okay, well that would be a way but I would just say that is the way and the question is whether that's fairly defective Just intolerable unacceptable chaotic

. I don't see evidence that it's produced produced chaotic results in real cases I don't see evidence that juries are routinely confused and unable to do it Okay, I would say the best evidence is the the second question proposed by the court where the court asks how do we do How to split the points of novelty? Can you have combinations? I don't know how to answer those questions Mr. Oaks one of the amiki Apple I believe Said that there were eight times more non-infringement findings than infringement findings on summary judgment in this area Is that good news or bad news? Well, it's difficult for me to answer that question without knowing exactly what the facts of the cases were and And how the tests were applied well, I would have expected you to say given that it's your position that that's bad news And then I would have expected you to tell us why If it's bad news why well Well, let me say that again I would have to know more about all the facts and cases but that's what you're supposed to know when you come here well Let me just say that in terms of this case It's been bad because in this case in this particular case this point of novelty test was used by the court to isolate a Single point of not a notty that I believe was arbitrarily selected in that artificially narrowed the scope of the design patent and it should Have done that and so in this particular case, I can say that it was back in this particular case should go to a jury Under the principles of applied arts So counts but you agree that the majority of all opinions that have to address this point of novelty They're focusing on a single distinct element which truly is novel in light of all the prior art and designs It's really something different that exists and those cases I would imagine you degree aren't really difficult to be decided the point of novelty is clear In fact, it's probably agreed to by everyone It's these combination cases and it seems to me these are becoming more and more the reality aren't they? Yes, I agree occasionally have a rare case Like with this album Where the court decides it looks at and says there's just one single Difference in that case you don't have the problem of how to select the point of novelty But in the usual case where you have multiple pieces of prior art and you have different possible points of novelty including combination and subsets It's just it's just so hard to determine what the point of novelty is I think it's Time that is not properly spent in litigating a case and we can avoid that by going back to be pre-intest Mr Okay, you're down to just over five minutes of the bottle time so up to you whether you want to spend it or say If there are no other questions, I'll see you Thank you You May I please the court my name is Frederick Liz and Bedlam with the law firm of Patrick Lockhart risk and gates Alice I represent the Apolise Your Swiss and Swiss at me The purpose of design happens is to protect what is inventive You like the point Yes, sir, I believe that it follows directly from the holding and Smith should It isn't Whitman saddle consistent either with the point of novelty test or with this three-way test. I don't believe so your honor What they did in Whitman saddle was isolate The innovative element in the saddle Asked whether that innovative element was present in accused design Found it was not that is that is the point of novelty test Well, isn't it equally consistent with the idea that they were looking to see whether the Accused saddle was more similar to the prior or to the patent and design well I don't think they expressed and in the terms of this Three-way test

. I'd submit this three-way test is Unworkable why Well, I mean he can submit his opinion about how juries are confusing you can submit your opinion about This but it doesn't help us unless you can show some foundation for the Consider how the test would work in reality the Fact finder trying to put himself in the place of the ordinary observer would look at accused design Would look at the claim design would look at the prior art All the prior art well in reality what's going to happen in us this fact finder is going to focus on the nearest piece of prior art The one that's closest to the accused design and if the accused is eyes closer to the claim design and that one piece of prior art then The fact finders going to find in fridge but but there could be out there and other pieces of prior art not as close All the elements What would miss that will tell you is to create that you can create a hypothetical piece of prior art if it would have been obvious to combine Those other features in the prior art and then you ask You compare The accused device to see whether it's more similar to the hypothetical piece of prior art or to the patent of design Isn't isn't that a perfectly sensible reading of written and that's what they did Well as I call written what they did was find the one element that wasn't in the prior Well the first thing they did the first thing they did was to combine the two Saddle pieces from from the prior art right well the opinion is a little ambiguous on this the way I read is the Jennifer and the Granger Saddles and never been combined precisely that it was common to combine the Jennifer Saddle with other sad and they said it was obvious to come on It's that's how I read right and then and then they said okay. Is this more similar to the combined Granger Jennifer Saddle or to the patent and design well They picked out the element That wasn't in the combined Granger Jennifer Saddle the sharp rock and rear of the palm of it said this has got to be What's inventive in the design this inventive aspect is not in the accused design and therefore there can't be infringement In this in fact clearer than this more similar to or less similar to because then you you've got a spectrum and It's difficult to measure it's difficult enough to look at a design patent and make comparisons Trying to figure out where on a spectrum is Well again, I think it's it's completely unworkable. It certainly under you all It what it does is take away the only objective check on what is in essence in equivalence analysis Mr. Madeline with in the area of modern commercial design. There's very little new Usually we're talking about combinations Can a plaintive the patent design patent donor claim a combination as the point of novel Yes, how did they do that? Well first of all, I mean distinguish this case from those sorts of cases in this case That let's not deal with this case where there's it's almost too simple to deal with the real cases we get What about where it's very complex and there's a lot of minor variations? Well, when you've got a very close combination to get used design in a prior I've combined many things from many areas the combinations new but you can find every single element There's nothing new out there in designs Well, once you get to a situation where you have no close piece of prior And the combinations there are many close pieces of prior on well that case I would submit that the point of novelty is the Difference between the nearest close piece of prior are and the claim to design Why that most why are we bringing validity type analysis and not even a validity analysis that's done at the PTO where they get these things Into an infringement test Well, I would say this is a little different from And I submit the one thing when I'm comparing prior art isn't that pretty close to validity? Well in a validity analysis we're asking is there anything Inventive in the design and in a infringement analysis we're asking whether what is inventive Has been appropriate now one thing I Do in this case that would simplify matters and perhaps resolve a potential conflict between the statutory consumption of patent validity and The situation where you have patents with no scope under the infringement analysis is to instruct that you don't need to apply the point of Knowledge in test or the non-triangle advanced test in situations where the proposed Excuse me where the accused is on is the exact duplicate of the claim design in that case You don't need a point of novelty test because we presume there's something invented in that claim design It says everything in the accused design is in the claim design the necessary That doesn't have an even there's always a minor creation Well, how do we deal with that when you've got nothing but a new combination? Well, what's it? Can the overall appearance be a point of novel? I mean as Judge Newman said in her descent from the rehearing enrollment There's a lot of design patents or combinations of old elements as Judge Raider has pointed out Can the overall appearance this rearrangement of these prior ones be a point of novel? Well, certainly not where there's a very close piece of prior art A small change over the prior combination then the point of novel has to be at most the difference I don't think you're answering the question. What's the can the overall appearance be a point of novel? It was law man wrong I don't think the overall combination can be the point of novel without Disalloping the point of novelty test I don't want to interrupt your train of thought But you can't just wipe out Gorham and wipe out overall appearance, can you? Well, certainly overall appearance is important in your honor and that's why we have the ordinary observer test But the ordinary observer test only identifies when a patent might be infringing because it produces substantial The same effect in the eye it does not answer the key question of whether the accused Design has appropriated what's inventive and the claim design But Gorham does point out the fact that it is the substantially the same in the eye of the Observer why isn't that an infringement test? Because we don't know why it's substantially the same

. Madeline with in the area of modern commercial design. There's very little new Usually we're talking about combinations Can a plaintive the patent design patent donor claim a combination as the point of novel Yes, how did they do that? Well first of all, I mean distinguish this case from those sorts of cases in this case That let's not deal with this case where there's it's almost too simple to deal with the real cases we get What about where it's very complex and there's a lot of minor variations? Well, when you've got a very close combination to get used design in a prior I've combined many things from many areas the combinations new but you can find every single element There's nothing new out there in designs Well, once you get to a situation where you have no close piece of prior And the combinations there are many close pieces of prior on well that case I would submit that the point of novelty is the Difference between the nearest close piece of prior are and the claim to design Why that most why are we bringing validity type analysis and not even a validity analysis that's done at the PTO where they get these things Into an infringement test Well, I would say this is a little different from And I submit the one thing when I'm comparing prior art isn't that pretty close to validity? Well in a validity analysis we're asking is there anything Inventive in the design and in a infringement analysis we're asking whether what is inventive Has been appropriate now one thing I Do in this case that would simplify matters and perhaps resolve a potential conflict between the statutory consumption of patent validity and The situation where you have patents with no scope under the infringement analysis is to instruct that you don't need to apply the point of Knowledge in test or the non-triangle advanced test in situations where the proposed Excuse me where the accused is on is the exact duplicate of the claim design in that case You don't need a point of novelty test because we presume there's something invented in that claim design It says everything in the accused design is in the claim design the necessary That doesn't have an even there's always a minor creation Well, how do we deal with that when you've got nothing but a new combination? Well, what's it? Can the overall appearance be a point of novel? I mean as Judge Newman said in her descent from the rehearing enrollment There's a lot of design patents or combinations of old elements as Judge Raider has pointed out Can the overall appearance this rearrangement of these prior ones be a point of novel? Well, certainly not where there's a very close piece of prior art A small change over the prior combination then the point of novel has to be at most the difference I don't think you're answering the question. What's the can the overall appearance be a point of novel? It was law man wrong I don't think the overall combination can be the point of novel without Disalloping the point of novelty test I don't want to interrupt your train of thought But you can't just wipe out Gorham and wipe out overall appearance, can you? Well, certainly overall appearance is important in your honor and that's why we have the ordinary observer test But the ordinary observer test only identifies when a patent might be infringing because it produces substantial The same effect in the eye it does not answer the key question of whether the accused Design has appropriated what's inventive and the claim design But Gorham does point out the fact that it is the substantially the same in the eye of the Observer why isn't that an infringement test? Because we don't know why it's substantially the same. Are it substantially the same because the inventive aspects of the Claim design have been appropriated by the accused design or some substantial the same just because both the claim design And the accused design share old elements of the prior art that the the packet key has no right to try to monopolize What if it's confusingly similar isn't it the same? Well, no because again the design patent is only protecting what's New and inventive in the design The statute itself only goes to original design I don't think that's accurate it protects the design Provided it's new and now the question is is it new because of The overall appearance is bound to be different if in fact there is a point of novelty But can't the overall appearance be difficult overall Whether there are 20 or 40 differences as in Gorham with the floral design or one as in mitten Well I'm getting around one once you say the overall design is The point of novelty You completely collapsed for the novelty test into the equivalence analysis of the ordinary observer test I don't think then you have any objective criteria limiting this Essentially an equivalence analysis a council for Egyptian goddess said more Yes, our objective here is to increase the objectivity of the test but Is there ever literal infringement and design in French make cases? Well, that's an interesting question literal infringement anytime you're applying in Design patent wall the ordinary observer test you're in effect applying equivalence analysis because the ordinary Test subsumes Well, there's no literal no literal infringement because there's no literal no letters no words well The panel of this court in Sun Hill industry to be stir unlimited pointed out that you can't apply the doctrine of equivalence Not the literal equivalence but that literal infringement the final equivalence in a design patent case unless you had in the accused design Elements that were equivalent to this specific Novel features if you couldn't use the doctrine of equivalence to debate the point of novelty test. Well similarly You need the point of novelty test as a check only equivalence analysis that's inherent in the ordinary observer test Well, let me ask you this thing if the point is to prevent overuse over extension of an equivalence analysis and if we make a comparison to utility patents Why isn't it the burden of the defendant to show that there'll be an overuse of Concepts of equivalent rather than having it be part of the burden of proof of the patent owner So that whether it's a three-way test or whether it's the litent test or whatever the right test might be Of whose burden should it should it be why shouldn't it be the defendant's burden? Well first let me say that whoever's burdened it is in this case you can affirm because in this case Swiss became Forward with points of novelty presented evidence of those points of novelty the judge found there was no issue In fact, it should be the burden though of the patent infringement's always been the burden of the patent. It's essential for an infringement finding that That what's In the claim design you appropriate it in your cues design and that should be part of the burden of proof and infringement just like in in utility patent cases To better figure if I'm in a utility patent case if I'm you accused in fringer And I say by definition I can't be infringing under the doctrine of equivalence because I'm merely practicing the prior art Or at most an obvious variation of the prior that's a good defense it will win if I can prove it So the analog would seem to be that you should have to prove But doesn't the Pappantee seeking to prove infringement under the doctrine of equivalence have the ultimate burden of establishing that the range of equivalence he's seeking Wouldn't in snare the prior Council wouldn't your it seems to me that the judge Michele's point is right on wouldn't your Answer and maybe I'm misunderstanding you be the burden of proof always rests on the patentee with the burden of production much like Wilson sporting good in utility context switches once the patentee has proven the doctrine of equivalence if the defendant Wants to articulate that no this equivalent would it be ensnared by the prior art they have the burden of production but not the burden of proof Isn't isn't that the right answer? The ultimate burden of persuasion still lies on the patentee to establish that is ranging with women's Well, not in utility patents

. Are it substantially the same because the inventive aspects of the Claim design have been appropriated by the accused design or some substantial the same just because both the claim design And the accused design share old elements of the prior art that the the packet key has no right to try to monopolize What if it's confusingly similar isn't it the same? Well, no because again the design patent is only protecting what's New and inventive in the design The statute itself only goes to original design I don't think that's accurate it protects the design Provided it's new and now the question is is it new because of The overall appearance is bound to be different if in fact there is a point of novelty But can't the overall appearance be difficult overall Whether there are 20 or 40 differences as in Gorham with the floral design or one as in mitten Well I'm getting around one once you say the overall design is The point of novelty You completely collapsed for the novelty test into the equivalence analysis of the ordinary observer test I don't think then you have any objective criteria limiting this Essentially an equivalence analysis a council for Egyptian goddess said more Yes, our objective here is to increase the objectivity of the test but Is there ever literal infringement and design in French make cases? Well, that's an interesting question literal infringement anytime you're applying in Design patent wall the ordinary observer test you're in effect applying equivalence analysis because the ordinary Test subsumes Well, there's no literal no literal infringement because there's no literal no letters no words well The panel of this court in Sun Hill industry to be stir unlimited pointed out that you can't apply the doctrine of equivalence Not the literal equivalence but that literal infringement the final equivalence in a design patent case unless you had in the accused design Elements that were equivalent to this specific Novel features if you couldn't use the doctrine of equivalence to debate the point of novelty test. Well similarly You need the point of novelty test as a check only equivalence analysis that's inherent in the ordinary observer test Well, let me ask you this thing if the point is to prevent overuse over extension of an equivalence analysis and if we make a comparison to utility patents Why isn't it the burden of the defendant to show that there'll be an overuse of Concepts of equivalent rather than having it be part of the burden of proof of the patent owner So that whether it's a three-way test or whether it's the litent test or whatever the right test might be Of whose burden should it should it be why shouldn't it be the defendant's burden? Well first let me say that whoever's burdened it is in this case you can affirm because in this case Swiss became Forward with points of novelty presented evidence of those points of novelty the judge found there was no issue In fact, it should be the burden though of the patent infringement's always been the burden of the patent. It's essential for an infringement finding that That what's In the claim design you appropriate it in your cues design and that should be part of the burden of proof and infringement just like in in utility patent cases To better figure if I'm in a utility patent case if I'm you accused in fringer And I say by definition I can't be infringing under the doctrine of equivalence because I'm merely practicing the prior art Or at most an obvious variation of the prior that's a good defense it will win if I can prove it So the analog would seem to be that you should have to prove But doesn't the Pappantee seeking to prove infringement under the doctrine of equivalence have the ultimate burden of establishing that the range of equivalence he's seeking Wouldn't in snare the prior Council wouldn't your it seems to me that the judge Michele's point is right on wouldn't your Answer and maybe I'm misunderstanding you be the burden of proof always rests on the patentee with the burden of production much like Wilson sporting good in utility context switches once the patentee has proven the doctrine of equivalence if the defendant Wants to articulate that no this equivalent would it be ensnared by the prior art they have the burden of production but not the burden of proof Isn't isn't that the right answer? The ultimate burden of persuasion still lies on the patentee to establish that is ranging with women's Well, not in utility patents. We don't expect the patentee to come forward with the evidence So the burden of persuasion but not the burden of production. Yeah, sure got it But coming to this case, which is why we're here The point of novelty is defined as the oblong shape The three-dimensional oblong shape As distinguished from let's say the point of novelty of how many of those cases Are covered with a buffer you get a quite a different result. Don't you so from that viewpoint The point of novelty perhaps would affect the infringement burdens However, when you look at the overall design The overall the similarities far surpass the differences So speaking now from the viewpoint of how to show non-imprint which of these theories Does one first decide well? We think probably it doesn't infringe Therefore we'll cause the point of novelty to be the number of faces which are covered Or we think after all when you look at these two devices They really do look the same because they both are overall oblong nail buckets And that points to the risks you would have if not having the point of novelty test You weren't conducting an examination to say well, what is inventive or in this case? Possibly the inventive and the claim design is that in the accused design This is an unusual case in that the nearest prior are the nail co-buffer is so close to The claim to design the pattern in this case

. We don't expect the patentee to come forward with the evidence So the burden of persuasion but not the burden of production. Yeah, sure got it But coming to this case, which is why we're here The point of novelty is defined as the oblong shape The three-dimensional oblong shape As distinguished from let's say the point of novelty of how many of those cases Are covered with a buffer you get a quite a different result. Don't you so from that viewpoint The point of novelty perhaps would affect the infringement burdens However, when you look at the overall design The overall the similarities far surpass the differences So speaking now from the viewpoint of how to show non-imprint which of these theories Does one first decide well? We think probably it doesn't infringe Therefore we'll cause the point of novelty to be the number of faces which are covered Or we think after all when you look at these two devices They really do look the same because they both are overall oblong nail buckets And that points to the risks you would have if not having the point of novelty test You weren't conducting an examination to say well, what is inventive or in this case? Possibly the inventive and the claim design is that in the accused design This is an unusual case in that the nearest prior are the nail co-buffer is so close to The claim to design the pattern in this case. What was happening here? There was a With nail co-buffer with its raised pads It's exposed corners. It's hollow fraying Council, how can it be so close? It's a triangle Even my side-year-old knows the difference between a triangle and a square The patented design is a square doesn't the Supreme Court's boring test say you know likely to be Confusingly bought by someone else or to be deceived How could anybody be confused by the triangle versus the square? It's such a significant difference between the prior are You're saying it's so so similar but the difference is overwhelming the similarity What your audience what doesn't have a triangle one has a square what audience or tea or the inventor of this patented was take this triangle buffer and take it back to the shape of its immediate predecessor a square Inded buffer. It was ubiquitous the market at the time

. What was happening here? There was a With nail co-buffer with its raised pads It's exposed corners. It's hollow fraying Council, how can it be so close? It's a triangle Even my side-year-old knows the difference between a triangle and a square The patented design is a square doesn't the Supreme Court's boring test say you know likely to be Confusingly bought by someone else or to be deceived How could anybody be confused by the triangle versus the square? It's such a significant difference between the prior are You're saying it's so so similar but the difference is overwhelming the similarity What your audience what doesn't have a triangle one has a square what audience or tea or the inventor of this patented was take this triangle buffer and take it back to the shape of its immediate predecessor a square Inded buffer. It was ubiquitous the market at the time. Why aren't you arguing that the fallee buffer is the closest piece of I mean, I'm having the same trouble with Judge Morris. I mean why are you focusing on this nail co-buffer? Which seems to be quite different well because the nail co-buffer had the raised pads the nail co-buffer had the exposed Quarers the nail co-buffer had the hollow fraying the difference was the addition of a fourth side And that was a fourth side that importantly did not have a paddling design patents have almost no scope Audit or kid here didn't apply for a hollow Squarited buffer with pads on four sides or a hollow Squarited buffer with pads on two sides applied for a patent and received the patent on a hollow Buck squareity the buckle of pads on three sides yet he proposes a point of novelty in this case That would expand that patent to include patents with raised buffer some four sides patents With raised pads on two sides impermissibly increasing the scope of his patent and if this is a result trying to try A point of novelty rather than looking to the actual point of novelty Between these buffers is created by comparing The patent to design to get cues designed to try to figure out what they got it Tom I think the Doctor in the validity adequate here sounds like your real complaint is That the purported inventor here really didn't invent anything It he just took well-known features from certain friar art rearranged him in a perfectly simple obvious way that probably could Could have been sought through in 30 seconds So if your real beef is that this patent never should have issued then your Point of attack should be in valid for obvious Well, of course when we move for some rejection in this case we move for some Rejudgment that the patent was invalid that there could not possibly be infringement under the ordinary observer test because In the marketplace you were very different things three way before we go and we moved For some rejection on the rounds of point of novelty and not many Corp. If there was one of the District court only reached that one round but an Illumina analysis can't take the place of the point of novelty test

. Why aren't you arguing that the fallee buffer is the closest piece of I mean, I'm having the same trouble with Judge Morris. I mean why are you focusing on this nail co-buffer? Which seems to be quite different well because the nail co-buffer had the raised pads the nail co-buffer had the exposed Quarers the nail co-buffer had the hollow fraying the difference was the addition of a fourth side And that was a fourth side that importantly did not have a paddling design patents have almost no scope Audit or kid here didn't apply for a hollow Squarited buffer with pads on four sides or a hollow Squarited buffer with pads on two sides applied for a patent and received the patent on a hollow Buck squareity the buckle of pads on three sides yet he proposes a point of novelty in this case That would expand that patent to include patents with raised buffer some four sides patents With raised pads on two sides impermissibly increasing the scope of his patent and if this is a result trying to try A point of novelty rather than looking to the actual point of novelty Between these buffers is created by comparing The patent to design to get cues designed to try to figure out what they got it Tom I think the Doctor in the validity adequate here sounds like your real complaint is That the purported inventor here really didn't invent anything It he just took well-known features from certain friar art rearranged him in a perfectly simple obvious way that probably could Could have been sought through in 30 seconds So if your real beef is that this patent never should have issued then your Point of attack should be in valid for obvious Well, of course when we move for some rejection in this case we move for some Rejudgment that the patent was invalid that there could not possibly be infringement under the ordinary observer test because In the marketplace you were very different things three way before we go and we moved For some rejection on the rounds of point of novelty and not many Corp. If there was one of the District court only reached that one round but an Illumina analysis can't take the place of the point of novelty test. They ask Fundamentally different questions suppose It was found that yes This buffer does have something invented in this fourth side without a pad on Now a little hard for me to imagine that it's truly invented To have a four-sided buffer from which you just omit Uh four-sided device from which you omit one of the buffers. I think you're precisely correct in that But by point is you can find a point of novelty here Yet it wouldn't solve our problem the point of novelty. But why does impolite itself? Well, it would it if in this particular case if the four found it in valid But if the four-bounded valid basically Maybe the court would have found it in valid if it reached it Well, I think it would have been in that case then I don't understand why you have to cling to the point of novelty test Some sort of super magic and definitely much better than the three way test or any other Designable test again here out of the answer different questions you can easily imagine a situation where there was something Inventive in a claim design so that it wouldn't be held in valid But that invented element had not been appropriated by the accused design Mr

. They ask Fundamentally different questions suppose It was found that yes This buffer does have something invented in this fourth side without a pad on Now a little hard for me to imagine that it's truly invented To have a four-sided buffer from which you just omit Uh four-sided device from which you omit one of the buffers. I think you're precisely correct in that But by point is you can find a point of novelty here Yet it wouldn't solve our problem the point of novelty. But why does impolite itself? Well, it would it if in this particular case if the four found it in valid But if the four-bounded valid basically Maybe the court would have found it in valid if it reached it Well, I think it would have been in that case then I don't understand why you have to cling to the point of novelty test Some sort of super magic and definitely much better than the three way test or any other Designable test again here out of the answer different questions you can easily imagine a situation where there was something Inventive in a claim design so that it wouldn't be held in valid But that invented element had not been appropriated by the accused design Mr. Meadowland the same question I asked before if eight times as many non-infringement findings are made on some Rejudgment that good news or bad news and why Well In my opinion your honor the Deturning points of novelty instead of being a fact question for the finder fact should be a matter of claim Instruction for the court and I think there are a lot of situations where Patenty is tried to impromissively increase the scope of their patents Create points of novelty that are Real points of novelty and that the Percentage of summary judgments against them when the chief judges suggestion makes sense then we won't allow the Patenty to create points of novelty, but we'll make it a defense Again, I stress in this particular case you can affirm even if you shift you made that point What the question is why not have the points of novelty sort of Quasivality analysis come in as a defense not as a Affirmative point of The plaintiffs burden well Again, it seems to me that a plaintiff should have to prove That what was inventive in his design Was appropriated by the accused design and then it shouldn't be the burden of the Defendant to prove he did not in the friend now the words that can be relevant to both Proving infringement and proving in validity Well, certainly the point of Novelty and a patent and yes, it'd be very relevant to both the inquiries, but there are different inquiries But if the point of novelty inquiry that you're requesting Really put you in a position where the patent he has to establish the validity of the patent Well, isn't that really a burden a shift of the burden of Presumption of validity of the patents all well And again, I think there should be no point of novelty analysis when They're essentially identical designs and that that statutory presumption should govern But I don't think that statutory resumption should extend to allowing a Patentee to get some sort of presumption that whatever was inventive has been appropriated I think he needs very the burden of showing yes not only was there something inventive in my patent as the patent office tells us but It was stolen it was taken but can't the patente establish the infringement by the Gorham test? No, I think what the patente is establishing with the Gorham task with this equivalence analysis is Yes, maybe there's some infringement here, but we don't know if the Gorham test is not answered this question of whether what's Inventive in the playing design has been taken by the accused design I thought you said a moment ago that the point of novelty test wouldn't apply if the accused design was essentially equivalent to the prior art Is that did I understand you correctly? No, I'm sorry What I meant to say was that if the challenge The accused design is essentially identical to the claimed design then you shouldn't apply the point of novelty test Or the or that that's the Gorham test, isn't it? I mean, well, yes, but in that way, we don't need the point of novelty test because everything's subsumed under the Gorham No, no only if they're essentially identical design because if they're essentially identical or Virtual duplicate of the claim design then we know that whatever presumed Inventive this the patent office Gives us this presumed Between that and the Gorham test essentially the same Well, in that case you aren't just applied the Gorham test because you know So we don't need the point of novelty test when we apply the Gorham test So there's no need for the point of novelty test ever oh no no not at all only that very limited circumstance Where the challenge Design is essentially a duplicate of the claim design and the reason is in every other case once you get any variance from The claim design the accused design then the issue arrives as well They look similar, but it's probably inventive in the claim design as it been appropriated by the accused design So why not make that in a way an affirmative defense Well Well again as a practical matter uh Defendants do come forward with their their own proposed points of novelty they do put in lots of evidence certainly we did in this case But it seems to me a plaintiff Suely on his pattern saying My patent has been infringed has the burden of showing that what was taken With regard to his patent was what the the patent protects the inventive aspect And that it shouldn't be a defendant's burden to establish that he know I can take that It seems to me that the point of novelty test Lends itself to all sorts of gamesmanship where the patent he is obviously going to Select points of novelty based upon the accused structure the accused is going to point to all sorts of different points of novelty To establish that it's not an infringement How does one in in the context of cases where there are multiple pieces of prior art How does one determine what the point of novelty is without This sort of gamesmanship Well If you come as much more difficult once we get far from the fact in this case where there's a very close piece of prior Where there's several pieces of prior art are much more distant From the playing design Well, even in this case I mean I Even in this case we have just a few references that have been pointed to as principal references but Of these various pieces of prior art which is the starting point I would say the nail co-buffer because it has the most features in common with Yeah, so it seems to me that's your starting point from your perspective so that you can then Determine the points of novelty that will spin your way And I suspect your adversary would take a different starting right and come up with a different conclusion But he doesn't look at the other obvious choice the valley Buffer block what he tries to do is create a point of novelty that leaves out the real difference Between the two paths and I think it's fundamental principle here It Disported Again, hold the difference between the Flame design and the prior art is how you establish support of That sounds good in theory, but again, I'm not getting a lot of help here in trying to discern how you go about doing that Well again, I believe in this case and I can see differences With all of these references and you could make up little lists. Okay. Let's see the differences between this one

. Meadowland the same question I asked before if eight times as many non-infringement findings are made on some Rejudgment that good news or bad news and why Well In my opinion your honor the Deturning points of novelty instead of being a fact question for the finder fact should be a matter of claim Instruction for the court and I think there are a lot of situations where Patenty is tried to impromissively increase the scope of their patents Create points of novelty that are Real points of novelty and that the Percentage of summary judgments against them when the chief judges suggestion makes sense then we won't allow the Patenty to create points of novelty, but we'll make it a defense Again, I stress in this particular case you can affirm even if you shift you made that point What the question is why not have the points of novelty sort of Quasivality analysis come in as a defense not as a Affirmative point of The plaintiffs burden well Again, it seems to me that a plaintiff should have to prove That what was inventive in his design Was appropriated by the accused design and then it shouldn't be the burden of the Defendant to prove he did not in the friend now the words that can be relevant to both Proving infringement and proving in validity Well, certainly the point of Novelty and a patent and yes, it'd be very relevant to both the inquiries, but there are different inquiries But if the point of novelty inquiry that you're requesting Really put you in a position where the patent he has to establish the validity of the patent Well, isn't that really a burden a shift of the burden of Presumption of validity of the patents all well And again, I think there should be no point of novelty analysis when They're essentially identical designs and that that statutory presumption should govern But I don't think that statutory resumption should extend to allowing a Patentee to get some sort of presumption that whatever was inventive has been appropriated I think he needs very the burden of showing yes not only was there something inventive in my patent as the patent office tells us but It was stolen it was taken but can't the patente establish the infringement by the Gorham test? No, I think what the patente is establishing with the Gorham task with this equivalence analysis is Yes, maybe there's some infringement here, but we don't know if the Gorham test is not answered this question of whether what's Inventive in the playing design has been taken by the accused design I thought you said a moment ago that the point of novelty test wouldn't apply if the accused design was essentially equivalent to the prior art Is that did I understand you correctly? No, I'm sorry What I meant to say was that if the challenge The accused design is essentially identical to the claimed design then you shouldn't apply the point of novelty test Or the or that that's the Gorham test, isn't it? I mean, well, yes, but in that way, we don't need the point of novelty test because everything's subsumed under the Gorham No, no only if they're essentially identical design because if they're essentially identical or Virtual duplicate of the claim design then we know that whatever presumed Inventive this the patent office Gives us this presumed Between that and the Gorham test essentially the same Well, in that case you aren't just applied the Gorham test because you know So we don't need the point of novelty test when we apply the Gorham test So there's no need for the point of novelty test ever oh no no not at all only that very limited circumstance Where the challenge Design is essentially a duplicate of the claim design and the reason is in every other case once you get any variance from The claim design the accused design then the issue arrives as well They look similar, but it's probably inventive in the claim design as it been appropriated by the accused design So why not make that in a way an affirmative defense Well Well again as a practical matter uh Defendants do come forward with their their own proposed points of novelty they do put in lots of evidence certainly we did in this case But it seems to me a plaintiff Suely on his pattern saying My patent has been infringed has the burden of showing that what was taken With regard to his patent was what the the patent protects the inventive aspect And that it shouldn't be a defendant's burden to establish that he know I can take that It seems to me that the point of novelty test Lends itself to all sorts of gamesmanship where the patent he is obviously going to Select points of novelty based upon the accused structure the accused is going to point to all sorts of different points of novelty To establish that it's not an infringement How does one in in the context of cases where there are multiple pieces of prior art How does one determine what the point of novelty is without This sort of gamesmanship Well If you come as much more difficult once we get far from the fact in this case where there's a very close piece of prior Where there's several pieces of prior art are much more distant From the playing design Well, even in this case I mean I Even in this case we have just a few references that have been pointed to as principal references but Of these various pieces of prior art which is the starting point I would say the nail co-buffer because it has the most features in common with Yeah, so it seems to me that's your starting point from your perspective so that you can then Determine the points of novelty that will spin your way And I suspect your adversary would take a different starting right and come up with a different conclusion But he doesn't look at the other obvious choice the valley Buffer block what he tries to do is create a point of novelty that leaves out the real difference Between the two paths and I think it's fundamental principle here It Disported Again, hold the difference between the Flame design and the prior art is how you establish support of That sounds good in theory, but again, I'm not getting a lot of help here in trying to discern how you go about doing that Well again, I believe in this case and I can see differences With all of these references and you could make up little lists. Okay. Let's see the differences between this one. Let's see the difference between this one and Well, but I don't know and then in terms of trying to reach a conclusion as to what's the proper point or points of novelty What what methodology leads to the right answer? Well, I would say the difference between the closest piece of prior art and Playing design is at most Now that test the very useful this case I would submit Evidently it's more difficult when there's not a very close piece of prior art Time is expiring. We thank you for your argument. We'll hear a rebuttal from Mr

. Let's see the difference between this one and Well, but I don't know and then in terms of trying to reach a conclusion as to what's the proper point or points of novelty What what methodology leads to the right answer? Well, I would say the difference between the closest piece of prior art and Playing design is at most Now that test the very useful this case I would submit Evidently it's more difficult when there's not a very close piece of prior art Time is expiring. We thank you for your argument. We'll hear a rebuttal from Mr. Oak. Thank you Take care of my place for The problem is that we don't know how to determine what is the closest piece of prior art in this case Those in council are used to it's the elbow buckle with the triangle piece, but there's a fear difference in a square Cross-section and a triangular cross-section and I'd also be arguing that I'm out of luck with So that's that's the problem with the point of not the test Now the validity aspects of this patent which was just briefly I'd like to briefly address that in this case this patent is not invalid because under this court validity jurisprudence you have to start first have to have a primary reference or a rose in reference It is basically the same as the patent to design and in this case you do not have a reference that is basically the same The valid buffer block is not how It's not hollow and it doesn't have raised patents and the elbow patent to use trailer cross-section and not square Council if a defendant argues a different point of novel Tseya a patent he comes forward So this is my point of novelty the defendant said well that can't be your point of novelty It must be this haven't they effectively admitted at that point the patent is not invalid doesn't that create a real Difficult position for defendants if they suggest a point of novelty or are they in fact admitting that the patent of design is in fact novel Well, I would suggest that there's a distinction between being novel and being non-obvious and simply because of patent Maybe novel it still may be unpatentable because it's obvious So you have to pass the also have to pass the non-obviousness test There There was also a lot of talk about The burdens of proof and let me just say that in my in safeguards in my view I agree that the ordinary observer tests needs a safeguard But this test that we have advocated on a forum as described by Litten or by applied arts does have an effective safeguard Because what you're doing is you are asking whether The accused design presents the appearance or overall visual effect that distinguishes the patent design for the prior heart That's an effective safeguard now to the extent I suppose If you needed an additional safeguard that the accused device Was in the prior art or obvious over the prior art you could use a spawning Sporting goods but in in the utility patent context remember That the hypothetical claim construction I was falling good you are you are comparing the accused device the accused device with the prior art Mr. Oak even if we reject the non-frivial test and object the point of novelty test Do you see any reason we need to send this back? Why can't we affirm the district Finding because there is a question of fact Why can't the district judge Looking at the record see that that fact is Something on which there's no legitimate dispute In appropriate cases the district court could but this is not an appropriate case How do we know that I think you mentioned in your opening argument predictability was sort of objective and an important objective here I think we don't review that What does your test give us in terms of predictability for example you say well this is clearly a question of fact that can't be resolved in some adjustments But suppose that your patent had only two sides That it had four sides but only two of them were covered Would it be in your view still a question of fact for the jury or could some adjustment be instant? That would be what's the predictability tell me give me a nice sharp predictable answer to that question Well, I wish I could Well, there's is a subjective area and that's the problem but I will say that so if it just had two sides Then you are losing you would be losing a distinctive Characteristic of this design patent because because it has three sides You've got raised pads with these open gaps in the corner And so that is creating this overall distinctive appearance and that's what which shares with the accused design Well, you'd have one open gap instead of two that's correct But you would still have these you'd still have these two open gaps between the raised buffers and that with the hollow cross-section and the square cross-section and the raised buffer pads that is what creates the distinctive appearance from Anything that it ever gone before and that's what the the accused buffer appropriates and that's what in my And so that's why there's a question thank you

. We'll take the appeal under submissio