"Sufficiently Distinct" is Insufficient to Determine Design Patent Infringement

The “ordinary observer” test for design patent infringement essentially asks whether the patented and accused designs are “substantially the same” in overall appearance. Although courts are very skilled in listing differences between the two designs, the final infringement determination is very subjective, being based on the personal observations and feelings of the fact-finder. In the 2008 en banc decision of Egyptian Goddess v. Swisa, the Federal Circuit abolished the “point of novelty” test that, despite its flaws, had brought some objectivity to the infringement determination. In its place, the Court in Egyptian repeatedly emphasized the need to view the patented and accused designs in the context of the prior art in order to provide a frame of reference for determining substantial similarity. However, in one sentence of Egyptian, the Court said that the prior art did not need to be reviewed if the patented and accused designs were “sufficiently distinct”. But there were no guidelines, in Egyptian or later cases, about how to determine whether two designs are “sufficiently distinct”. Since then, an outsized number of cases have relied on this clearly subjective determination. This paper posits that guardrails are needed so that the “sufficiently distinct” test is applicable in only the most egregious of circumstances, when the two designs are – at a glance – markedly different, and that in nearly all cases a comparison of the patented and accused designs with the prior art is appropriate.