Top 50 Design Patent Cases #2 - Gorham v. White
The number two cited case in design patent prosecutions is Gorham v. White 81 U.S. 511 (1871). Gorham is the first design patent case decided by the United States Supreme Court. It established two major principles. First, a design patent protects the visual effect of the overall design and not the design elements that create it. Second, infringement is determined by an ordinary observer and not by an expert. Gorham expressed the test for design patent infringement as “if, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other.” Id. at 528. Since January 2021, Gorham has been cited in at least 5,707 design patent prosecutions having at least one non-final rejection (according to Design Patent ProSearch).
How this case fits in: The statute governing design patent infringement is 35 U.S.C. § 271, which states in relevant part “whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent therefor, infringes the patent.” Gorham establishes that the sole test for infringement under § 271 is the ordinary observer test.
Although Gorham is related to the test for design patent infringement, it frequently is cited in design patent prosecutions because the test for design patent infringement is the same as the test for design patent anticipation. See International Seaway Trading Corporation v. Walgreens Corp., 589 F.3d 1233 (Fed. Cir. 2009) (1st most cited case) (the ordinary observer test is the sole test for design patent invalidity under 35 U.S.C. § 102).
Facts and Holding
Gorham involved design patent USD1,440 for a “Spoon and Fork Handle.” The design patent included four drawings figures, as follows:
Fig. 1 is a top plan view. Fig. 2 is a bottom plan view. Fig. 3 is a cross section taken at the narrowest part of the handle. Fig. 4 is a cross section taken at the widest part of the handle.
The two accused White designs as compared to the Gorham patented design are as follows:
The lower court held there was no infringement for three reasons. First, a design patent protected the constituent design elements of a design and not the overall appearance. Second, the comparison was made by one versed in the trade when examining the articles intelligently side by side. Third, when the first and second reasons were applied to the comparative analysis, the Gorham and the White designs differed markedly in ornamentation.
The Supreme Court reversed, holding (as stated above) that the comparison was made between the visual effect of the overall designs through the eyes of an ordinary observer.
History and Implied Principles
Students of design patent law may rightly question the decision of the Supreme Court because there do appear to be substantial differences in ornamentation between the Gorham and White designs. To better understand the Supreme Court’s decision, it is helpful to place the decision in historical context and to discuss an important design patent principle that was implied, but not expressly discussed, in the decision.
Gorham was decided in 1871, twenty-nine years after the first design patent statute was passed in 1842. According to an article published by the New York Times after Gorham was decided, the statute was rarely enforced. Gorham Manufacturing Company was the leading American silversmith of the day, and the company decided to test the statute against two of George C. White’s patterns that allegedly infringed upon Gorham’s popular Cottage Pattern for fork and spoon handles.
Although the Gorham decision only vaguely hints at it, the relatively simple and plain Cottage Pattern was a distinctive break from the more ornate silverware patterns from that period, for example as seen below.
This distinctive break likely influenced the infringement decision and foreshadowed the Federal Circuit’s decision in Egyptian Goddess v. Swisa, 543 F.3d 665 (Fed. Cir. 2008) (en banc) (34th most cited case), which held the comparative analysis between the claimed and accused design must be made in light of the prior art. According to Egyptian Goddess, the greater the difference between the claimed design and the prior art, the easier it is to prove infringement when the accused design is closer to claimed design than it is to the prior art designs. This important principle easily justifies the decision in Gorham.
A final note is that the drawing figures in the Gorham design patent only claim a portion of the spoon and fork. This claiming technique, known as portion claiming, later would become officially sanctioned in In re Zahn, 617 F.2d 261 (CCPA 1980) (20th most cited case), a case involving a design for the shank portion of a drill bit.
