By Matt Digan
On May 14, 2020, the Federal Circuit clarified the proper manner in which the ordinary observer test in design patent infringement cases should be administered in its ruling in Lanard Toys, Ltd. v. Dolgencorp LLC.
The Federal Circuit’s ruling comes from a case originating in the Middle District of Florida, in which Lanard Toys (Lanard) filed suit against JA-RU, Inc. (JA-RU) asserting design patent infringement among other claims. Lanard’s design patent at issue in the case, U.S. Design Patent No. D671,167 (D167 patent), is for a toy chalk holder designed to look like a number two pencil. One year after Lanard began selling its toy chalk holder, JA-RU began selling its own toy chalk holder that was designed using Lanard’s toy as a reference. After both parties filed for summary judgement, the district court granted JA-RU’s motion while finding that JA-RU’s product did not infringe the D167 patent.
Lanard appealed the district court’s ruling on the design patent infringement claim to the Federal Circuit on three grounds. First, Lanard argued that the district court erred in its claim construction by eliminating elements of the design based on functionality and lack of novelty. Second, Lanard argued that the court erred in its infringement analysis by conducting an element-by-element comparison rather than comparing the overall designs. Third, Lanard argued that the court used a defunct “point of novelty” test to evaluate infringement. The Federal Circuit rejected each of Lanard’s arguments.
First, the Federal Circuit disagreed with Lanard that the district court “eliminated” entire elements of the claimed design. On the contrary, the district court acknowledged the ornamental aspects of each functional element, clarifying the scope of the protected subject matter. Far from finding the district court’s decision in error, the Federal Circuit believed the district court followed claim construction directives for design patents “to a tee” in light of precedent. The district court merely construed the claims in line with the statutory protection afforded to an ornamental design.
The Federal Circuit then clarified that while the ordinary observer test involves comparing similarities in overall designs, and not similarities of ornamental features in isolation, the test cannot ignore the reality that designs often have both functional and ornamental aspects. A court must consider how the ornamental differences in each element would impact the ordinary observer’s perception of the overall designs. Here, the district court noted that, “the problem for Lanard, however, is that the design similarities stem from aspects of the design that are either functional or well-established in the prior art.” From this, the district court found that the attention of the ordinary observer would be drawn to those aspects of the claimed design that differ from the prior art, so no ordinary observer would believe the accused design to be the same as the patented design. The Federal Circuit held that the district court struck the correct balance in considering the ornamental aspects of the design while remaining focused on how an ordinary observer would view the overall design.
Finally, the Federal Court rejected Lanard’s contention that the district court’s ruling revived the defunct “point of novelty” test. While the “point of novelty” test went the way of the dodo in the Federal Circuit’s Egyptian Goddess ruling in 2008, the Federal Circuit made clear that it never questioned the importance of considering the patented design and the accused design in the context of the prior art. The Federal Circuit found that the district court unequivocally considered the points of novelty of the patented design over the prior art, but then placed those points of novelty in context by considering that those points of novelty would draw the attention of the ordinary observer.
The ruling should prove to be helpful guidance both to would-be design patent owners and present owners alike. Lanard demonstrates that great care must be taken in constructing design patent claims at the outset. Likewise, current design patent owners should take Lanard into account when weighing the merits of potential enforcement actions and how a court might construe their patent’s claims differently than they envision. In short, Lanard provides greater clarity on how courts are supposed to evaluate the ordinary observer test in design patent infringement cases and how claim construction and the issue of novelty factors into that overall assessment.
 Rob Courtney, Useful Item Itself is Not Copyrightable, Fish & Richardson (May 14, 2020), https://www.fr.com/fcs/lanard-toys-v-dolgencorp/.
 Lanard Toys, Ltd. v. Dolgencorp LLC, 958 F.3d 1337, at 1339 (Fed. Cir. 2020).
 Id. at 1341.
 Id. at 1342.
 Id. at 1343.
 Id. at 1344.