IDSA Amicus Brief Filed in Lawman Appeal
The Industial Design Society of America (IDSA) has filed its amcus brief, penned by design patent guru Perry J. Saidman, in the Lawman case. Download brief here
The following is the Summary of the Argument quoted from the brief:
"For the first time, this Court has held that a combination of old elements shown in the prior art cannot constitute a point of novelty in determining infringement of a design patent. There are five reasons why it is exceptionally important for this holding to be reconsidered.
"First, the Panel decision ignores the real world reality that all designs are combinations of old elements. If left to stand, the Panel decision would render a vast number of valid design patents unenforceable.
"Second, the Panel's fear that permitting a combination of old elements to be a point of novelty would undermine the rationale of the point of novelty test is unfounded. If a valid patent's point of novelty were found to reside in a combination of old elements, the design patent would be narrow. To enforce it against an infringer who appropriated that same combination of old elements serves the interest of justice. There is nothing untoward about enforcing narrow, as well as broad, design patents.
"Third, the Panel decision encourages "back door" attacks on design patent validity using a much lower burden of proof that would otherwise be required. Why should an infringer be permitted to prove that a patent's point of novelty, that distinguishes it over the prior art, is old using a preponderance of evidence standard rather than a clear and convincing standard required of invalidity showings?
"Fourth, there is no precedent for the Panel decision. All courts that have previously considered the issue have found that a combination of known elements may well constitute the point of novelty.
"Fifth, the underlying factual determination that all 8 of Lawman's novel elements were found in the prior art is clearly erroneous. In order to anticipate a novel design element, the visual appearance of the design element must be in the prior art, rather than its functional attributes.
"In sum, this Court should reconsider and reverse the Panel's conclusion that a combination of old elements shown in the prior art cannot constitute a point of novelty in determining infringement of a design patent."