NORTH STAR FILES PETITION FOR REHEARING AND REHEARING EN BANC IN SIGNIFICANT DESIGN PATENT INFRINGEMENT CASE

A Petition for Rehearing and Rehearing En Banc was filed in the Court of Appeals for the Federal Circuit on June 26, 2025 in North Star v. Latham, in which I am North Star’s lead counsel (assisted by able appellate co-counsel Matt Dowd).  See my previous post discussing the facts of this case.

This case challenges a misbegotten test for assessing design patent infringement.  The "sufficiently distinct" (or "plainly dissimilar") test has been used extensively by district courts to dismiss claims of design patent infringement without any consideration of the prior art.  In the Federal Circuit’s 2008 en banc decision of Egyptian Goddess v. Swisa, the Court spent many pages of its opinion emphasizing the value of considering the prior art, discussing a long line of cases going back 100+ years. For an in-depth review of such cases, see my paper “Sufficiently Distinct is Insufficient as a Test for Design Patent Infringement”, published recently in Indiana’s law journal IP Theory.

After its extensive discussion about the importance of considering the prior art, the Court in Egyptian then introduced the “sufficiently distinct” test in a single sentence, but without citation of any authority. Since then, no court has ever provided any guidance to determine when such a test is appropriate for use in a particular case.

While I believe that the “sufficiently distinct” test was initially intended to allow a court to dispose of easy cases, where non-infringement is clear on its face, the test has become a popular basis for alleged infringers’ motions for summary judgment of non-infringement. It is estimated that since 2008, when Egyptian was decided, fully half of such motions that were granted have been based on the rudderless “significantly distinct” test, which is almost impossible for a patentee to overcome on summary judgment.

Any reasonably close design patent case ought to consider the prior art in assessing infringement.  That comparison provides an objective means, a frame of reference, to compare the designs as a whole.  After all, the Supreme Court in Gorham v. White emphasized that a party that makes a "mere equivalent" of the patented design will infringe.

 Short of excising the “sufficiently distinct” test, how should it be cabined to be used only in clearly egregious cases?  One formulation might be: If an initial glance at the patented and accused designs, without dissecting them, does not reveal minor ornamental differences, then the prior art should be considered as a frame of reference in the infringement analysis.

The panel decision, dated April 24, 2025, can be found here.

Amicus briefs in support of the Petition (or in favor of neither side) are currently due July 10, 2025, but extensions of time should be available from the Court.

I urge you to seriously consider filing an amicus brief, for the benefit of your clients, and really for the benefit of the system as a whole.