Federal Circuit to Decide Proper Test for Design Patent Invalidity

As we noted in our last newsletter, the International Seaway v. Walgreens case, 599 F. Supp. 2d 1307 (S.D. Fla. 2009), in which we prevailed on behalf of Walgreens et al., has been appealed to the Federal Circuit. The plaintiff asked the appellate court to overturn the district court’s application of the Egyptian Goddess v. Swisa, 543 F.3d 665 (Fed. Cir. 2008) (en banc) test, because it was applied to an invalidity (anticipation) analysis. The Egyptian Goddess test changed the rules of how a design patent is infringed.

We argued that because the Supreme Court and Federal Circuit have long held that the tests for infringement and anticipation are identical, the new Egyptian Goddess infringement test should therefore be applied to anticipation as well. In addition, we noted that the rationale for changing the infringement test set forth in Egyptian Goddess also applies to validity determinations. The Federal Circuit may take this opportunity to clarify the application of Egyptian Goddess to validity determinations.