In the seminal decision of Egyptian Goddess, Inc. v. Swisa, Inc., the Federal Circuit struck down one of the two tests commonly used for determining design patent infringement, the “point of novelty” test. Despite rejecting this test, the court incorporated the consideration of prior art into a slightly revised version of the "ordinary observer" test, the hypothetical "ordinary observer" now having familiarity with the prior art. This article will examine the application of this revised version of the "ordinary observer" test, and specifically the consideration of the “plainly dissimilar” analysis set forth by Egyptian Goddess.
Egyptian Goddess, Inc. v. Swisa, Inc.
Prior to Egyptian Goddess, courts routinely applied two tests for establishing design patent infringement, the "ordinary observer" test and the "point of novelty" test. First, courts would consider the patented design and the accused product “in the eye[s] of an ordinary observer, giving such attention as a purchaser usually gives” and then determine whether or not, through those eyes, the “two designs [were] substantially the same.” Second, courts then typically employed the “point of novelty” test in which consideration was given as to whether or not the accused design actually “appropriate[d] the novelty in the patented device which distinguishe[d] [the patented device] from the prior art.”
The court in Egyptian Goddess noted that a court tasked with applying both of these tests independently might focus on “whether the accused design ha[d] appropriated a single specified feature of the claimed design,” rather than looking to “whether the accused design ha[d] appropriated the claimed design as a whole” (the appropriate infringement inquiry). The Federal Circuit then rejected the application of the “point of novelty” test, and made clear that the appropriate analysis would be an “ordinary observer test through the eyes of an observer familiar with the prior art.” The court clarified, however, that consideration of the prior art was not required in every case, only those in which the patented design and the accused design are "substantially the same." The Federal Circuit further explained that in cases where the two designs are not “plainly dissimilar,” the infringement analysis “will benefit from a comparison of the claimed and accused designs with the prior art.” Some courts subsequent to the Egyptian Goddess decision have interpreted this language as establishing “two levels to the infringement analysis: a level-one or ‘threshold’ analysis to determine if comparison to the prior art is even necessary, and a second level analysis that accounts for prior art in less obvious cases.” Such examples include Wing Shing Prods. (BVI) Co. v. Sunbeam Prods., Minka Lighting, Inc., v. Maxim Lighting International, Inc., and Keurig, Inc. v. JBR, Inc.
Wing Shing Prods (BVI) Co. v. Sunbeam Prods.
Wing Shing v. Sunbeam is illustrative as to the determination of whether a patented design and an accused product are “plainly dissimilar,” as discussed by Egyptian Goddess. The district court in Wing Shing performed an in-depth analysis to decide whether Sunbeam’s coffee maker was “plainly dissimilar” to Wing Shing’s patented coffee maker design. The patented design and accused product are depicted below:
The court first focused on two major differences in the designs – differently shaped bases and “dramatically different tops.” Considering whether these differences would be enough to render the designs “plainly dissimilar,” the court concluded that in the “cluttered world of the drip-coffeemakers, it seems senseless to attempt to determine whether the ordinary observer would confuse two designs without looking to the prior art for a point of reference.” Although the court recognized "manifest differences in the overall appearance" of the patented design and the accused design, it looked "to the prior art for context." Further, the court determined that it was “unlikely” that an ordinary observer would be deceived by similarities of the devices, but admitted that “resolution of the inquiry would benefit from a concrete guidepost.” After reviewing and comparing a number of prior art references to both the accused design and the patented design, the Court found "on the whole the claimed design when compared to the prior art bespeaks 'a field . . . crowded with many references relating to the design of the same type of appliance.'" The court concluded that an ordinary observer familiar with the prior art "would not believe the AR 10/12 [the accused design] to be the 'same as' the '585 patent" and thus found no infringement.
Minka Lighting Inc., v. Maxim Lighting International, Inc.
Another example of a post-Egyptian Goddess infringement analysis, which included a consideration of whether patented and accused lighting designs were “plainly dissimilar,” is Minka v. Maxim from the Northern District of Texas. In this case, the court reviewed three different asserted design patents directed to light fixtures and compared them to the respective accused products, two of which are shown below:
In analyzing each of these designs, the court first looked to the overall visual impressions of the light fixtures, which it determined were distinctive, and then went on to analyze differences in a few specific features, such as differences between the silhouette, the finial, the ornamentation of the finials, and the design of the lower medallion of the ‘515 patent compared with the accused Morrow Bay design, and the central body, silhouette, and contours of the ‘052 patent compared with the accused Tuscan Estate design. The court concluded that, based on these differences, the patented design and the accused product in each instance were plainly dissimilar. Although the court was satisfied that two of the asserted patents and accused designs were readily distinguishable to an ordinary observer, the court proceeded with a full analysis comparing the claimed and accused designs with the prior art. In both instances, the court found that the “Defendants' product would appear  different from the Plaintiff's  patent to any ordinary observer aware of the great number of similar prior art designs." Thus, summary judgment of non-infringement was entered on all three asserted patents.
Keurig, Inc. v. JBR, Inc. 
The court's decision in Keurig v. JBR provides yet another example of a post-Egyptian Goddess infringement analysis, including a discussion of whether patented and accused coffee filter designs were “plainly dissimilar.” In attempting to discern the differences between two “disposable beverage filter cartridges,” the District Court of Massachusetts provided an in-depth analysis of the similarity of the patented design to the accused product to determine whether a consideration of prior art was necessary for the infringement determination. The court first compared the initial visual impressions of the two designs, as seen below:
Although the two cartridges may seem fairly dissimilar to an ordinary observer, the court still took the time to discuss prior case law and instances when patented and accused designs have been found to be “plainly dissimilar” and an instance when they have not. The court then decided that a determination of whether or not the accused product and the claimed design were “plainly dissimilar” required “a more careful analysis of the side-by-side comparison and the similarities (and differences) exposed thereby,” and went on to interpret and designate each and every similarity and difference of the two designs as being ornamental or functional. After its lengthy analysis, the court decided that the two designs were “sufficiently distinct that it [was] clear without more that the patentee ha[d] not met its burden of proving the two designs would appear ‘substantially the same’ to the ordinary observer.” Here the court could have easily looked to the prior art, as did the courts in Wing Shing and Minka, but chose not to do so since it found that the two designs were “plainly dissimilar.” In the end, JBR’s motion for summary judgment of non-infringement was granted.
Although the point of novelty test was nominally eliminated by the Federal Circuit, there are certain instances in which courts may consider prior art during the infringement determination under the revised "ordinary observer" test and the "plainly dissimilar" analysis set forth in Egyptian Goddess. Generally speaking, whether or not prior art is considered in an infringement analysis appears to be a function of the level of similarity between the patented design and the accused product, the crowded or uncrowded nature of the pertinent art, and frankly the conscientious nature of a particular court. What remains to be seen is whether the redefined role of prior art in the infringement analysis leads to more thorough, consistent, and well-reasoned decisions.
 543 F.3d 665 (Fed. Cir. 2008).
 The point of novelty test required that the accused design contain “substantially the same points of novelty that distinguished the patented design from the prior art.” Id. at 668.
 Gorham Co. v. White, 81 U.S. 511, 528 (1871).
 Egyptian Goddess, 543 F.3d at 670 (quoting Litton Systems, Inc. v. Whirlpool Corp., 728 F.2d 1423, 1444 (Fed. Cir. 1984).
 Id. at 677.
 Id. (emphasis added).
 Id. at 678.
 See, e.g., Wing Shing Prods. (BVI) Co. v. Sunbeam Prods., 665 F. Supp. 2d 357, 362 (S.D.N.Y. 2009).
 No. 3:06–CV–995–K., 2009 WL 691594 (N.D. Tex. Mar. 16, 2009).
 Wing Shing Prods., 665 F. Supp. 2d at 362.
 Id. at 363 (citations omitted).
 Id. (citation omitted).
 Id. at 364–65.
 Id. at 368.
 No. 3:06–CV–995–K., 2009 WL 691594 (N.D. Tex. Mar. 16, 2009).
 The court determined that the third patent design (‘591) and the accused design were plainly dissimilar and chose not to consider the prior art in that instance. Id. at *8.
 Id. at *5.
 Id. at *8.
 Id. at *6, *8.
 Id. at *7 and *9.
 Id. at *9.
 No. 11–11941–FDS, 2013 WL 2304171 (D. Mass. May 24, 2013).
 Additional “plainly dissimilar” analyses can be found in the following cases: HR U.S. LLC v. Mizco Int’l, Inc., No. CV-07-2394 (DGT)(JO), 2009 WL 890550 (E.D.N.Y. Mar. 31, 2009); Competitive Edge, Inc. v. Staples, Inc., 763 F. Supp. 2d 997 (N.D. Ill. 2010); Spencer v. Taco Bell Corp., No. 8:12–cv–387–T–23TGW, 2013 WL 5499609 (M.D. Fla. Oct. 2, 2013); Poly-America, L.P. v. API Industries, Inc., No. 13–693–SLR, 2014 WL 1391063 (D. Del. Apr. 10, 2014); Fanimation, Inc. v. Dan’s Fan City, Inc., No. 1:08–cv–1071–TWP–WGH, 2010 WL 5285304 (S.D. Ind. Dec. 16, 2010).
 Keurig, 2013 WL 2304171 at *5 (correctly applying the standards articulated in Egyptian Goddess).
 Id. (citing Competitive Edge, Inc. v. Staples, Inc., 763 F. Supp. 2d 997 (N.D. Ill. 2010); Great Neck Saw Mfrs., Inc. v. Star Asia U.S.A., LLC, 727 F. Supp. 2d 1038 (W.D. Wash. 2010)).
 Keurig, 2013 WL 2304171 at *6 (citing Crocs, Inc. v. ITC, 598 F.3d 1294 (Fed. Cir. 2010)).
 Id. at *6–8.
 Id. at *9.
 See id. at *9 (quoting Egyptian Goddess, 543 F.3d at 678).
 Id. at *16.
George T. Lyons III is a 2014 summer associate with MBHB.