Patent Law Updates: New Test for Design Patents; Enforcement Activities Create Personal Jurisdiction over Patent Holder in Declaratory Judgment Action

It’s been another busy week for patents at the Federal Circuit.  In two key decisions, the Federal Circuit changed the standard for finding infringement of a U.S. design patent, and it also found a patent holder subject to personal jurisdiction in a state where the patent holder’s only activities were actions to enforce the patent itself.

Design patents infringed if “ordinary observer” would find designs similar.   In Egyptian Goddess, Inc. v. Adi Torkiya, the Federal Circuit tossed out the “point of novelty” test for finding infringement of a design patent.  The court explained that the test led to “disagreement over whether combinations of features, or the overall appearance of a design, can constitute the point of novelty.”  Instead, the court applied the “ordinary observer” test, which requires that the accused and patented designs appear “substantially the same” to an ordinary observer.  Under the “ordinary observer” test,  “infringement will not be found unless the accused article “embod[ies] the patented design or any colorable imitation thereof.”  The court explained that the ordinary observer test will discourage arguments over individual features of a design patent, and instead put the focus on the “claimed design as a whole.”

The court also noted that claim construction is not always required in design patent cases.  Instead, the question of whether or not a design patent claim requires verbal characterization is left to the discretion of the trial court judge.

Enforcement actions can support personal jurisdiction against patent holder.  In The Campbell Pet Company v. Theresa Miale and Ty-Lift Enterprises, a California-based patent holder attended a trade show in the State of Washington.  While there, the patent holder accused Campbell Pet of patent infringement, asked the convention manager to remove Campbell Pet’s display, and told potential customers that Campbell Pet was infringing the patent.  When the patent holder later sent Campbell Pet a cease and desist letter, Campbell Pet filed a declaratory judgment action in the State of Washington.  The patent holder sought to dismiss the case, asserting that its actions were not sufficient to support personal jurisdiction within the state. 

The court disagreed.  Although it did acknowledge that “without more, a patentee’s act of sending letters to another state claiming infringement and threatening litigation is not sufficient to confer personal jurisdiction,” the court found the patent holder’s activities at the convention to be sufficient to support jurisdication in Washington.  The court reached its conclusion after looking at past cases where license negotiations, in-person meetings, and similar activities were found sufficient to support personal jurisdiction.

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