Even if Novel, Combination of Non-Novel Elements Cannot Support Finding of Design Patent Validity

The Federal Circuit has upheld a finding of no infringement as a matter of law where the only purported "points of novelty" allegedly appropriated by the accused device could all be found in the prior art. Lawman Armor Corp. v. Winner Int’l LLC, Case No. 05-1253 (Fed. Cir. Feb. 22, 2006) (Freidman, J.). The Court agreed with the defendant and the district court that the combination of many non-novel "points of novelty" could not be said, in itself, to create an additional "point of novelty."

Lawman was the exclusive licensee of a design patent claiming a design for a sliding hood portion of a steering wheel lock assembly. Lawman sued Winner for infringement, and Winner moved for summary judgment of non-infringement based on the "point of novelty" test. Under this test, an accused design can be held to infringe only if it appropriates the "point of novelty" that distinguishes the patented design from the prior art.