Plaintiff appealed, arguing that the district court erred by basing its anticipation determination solely on the ordinary observer test and by failing to apply the point of novelty test. The Federal Circuit disagreed, holding that the ordinary observer test was the sole test for anticipation. However, the Federal Circuit concluded “that the district court erred in failing to compare the insoles of the patents-in-suit with the prior art from the perspective of the ordinary observer” and therefore affirmed-in-part, vacated-in-part, and remanded to the district court.

Prior to Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008), the test for anticipation involved both the point of novelty test and the ordinary observer test. In Egyptian Goddess, the Federal Circuit eliminated the point of novelty test for design patent infringement and reserved the question of whether the point of novelty test should be eliminated from an anticipation analysis as well. International Seaway answered that it should.

A principal reason for the ruling in International Seaway was the need to keep the tests for infringement and anticipation harmonized under the principle “[t]hat which infringes, if later, would anticipate, if earlier.” Peters v. Active Mfg. Co., 129 U.S. 530, 537 (1889). Unfortunately, in International Seaway the Federal Circuit also applied this principle to the test for obviousness and stated “[f]or design patents, the role of one skilled in the art in the obviousness context lies only in determining whether to combine earlier references to arrive at a single piece of art for comparison with the potential design or to modify a single prior art reference[,]” and “[o]nce that piece of prior art has been constructed, obviousness, like anticipation, requires application of the ordinary observer test, not the view of one skilled in the art.” That statement was a mistake.

The quote from Peters is not a basic principle of patent law, but rather a general observation on the relationship between infringement and anticipation before the current section on obviousness (35 U.S.C. § 103) was enacted. Under current obviousness law, the Federal Circuit has changed the Peters quote to “that which literally infringes, if later, would anticipate, if earlier.” See Lewmar Marine, Inc. v. Barient, Inc., 827 F.2d 744, 747 (Fed. Cir. 1987) (emphasis added) (“While ‘the classic test of anticipation’ was indeed as stated, [footnote omitted] under the current statute ‘anticipation’ does not carry the same meaning as before, and the ‘classic test’ must be modified to: That which would literally infringe if later in time anticipates if earlier than the date of invention.”). It therefore was an error to equate obviousness with infringement the same way that anticipation is equated with infringement.

Fortunately, the Federal Circuit corrected the mistake in High Point Design LLC v. Buyers Direct, Inc., 730 F.3d 1301, 1313 n.2 (Fed. Cir. 2013). The district court applied the International Seaway “ordinary observer” standard to obviousness, and the Federal Circuit reversed, stating “[t]he use of an ‘ordinary observer’ standard to assess the potential obviousness of a design patent runs contrary to the precedent of this court and our predecessor court, under which the obviousness of a design patent must, instead, be assessed from the viewpoint of an ordinary designer.” Id. at 1313. In a footnote, the Court stated “[t]he International Seaway court may in fact have had the ‘designer of ordinary skill’ standard in mind when it used the term ‘ordinary observer.’ In any event, the court could not rewrite precedent setting forth the designer of ordinary skill standard.” Id. at 1313, n.2.

Although the mistake has been corrected in the case law, unfortunately it still occasionally lives on at the United States Patent and Trademark Office (USPTO) where examiners quote International Seaway for the mistaken principle that obviousness is judged from the standpoint of an ordinary observer. See, e.g., App. Nos. 29/739,369, 29/741,540, 29/760,970, 29/764,512, 29/756,329, 29/683,266, 29/695,990, 29/659,247.