twenty eight u s c section forty six c c judge glen l archer will be part of the in bank court at his election so it's a thirteen judge court even though only twelve people are on the bench  court please proceed i understand your reserving ten minutes for rebuttal time when the yellow light goes on you're beginning to consume that time test for infers design that when you get beyond one simple design what do you do with the complex furniture design with lots of head all looking different directions slight variations what would be the point or novelty and how would you apply the tax in a complex design my answer is for this case when there does appear to be a single point of novelty and it does seem to help the court bridling what would otherwise be a very indeterminate an ordinary observer test well the district court in this case determined that there was a single point not for side of that pat but i would argue that is the result of that was after the girl case so obviously the court had intended the two to work together yes well first of all this court is of course bound by spraying for the word but question is what does this whitman style answer to the question we're unsaddle never identify a specific individual point of novelty about also taking into consideration the fact that that individual  three way test is helpful will be helpful to our jury in understanding how to apply for enjoyment test i do i think it's a subtle military stood up and the more tests you have the more different ways you have period to designs the better the better it is in europe you proposed the test in which you cite that the appropriation by the accused sign of the quote distinctive overall visual appearance that makes the patented design distinctive over the prior art what can you articulate the difference between the novel elements versus the distinctive overall visual appearance because the novel element seems to me to be the point of novelty testing what's the difference paper without considering the fact that they have on distinguishing the overall design from the prior art and in the proper test which i believe is  where is the point of novelty a question interpretation for the court or is it a question of i would say it's a question of fact and and how would the fact a standard or test that they think we ought to apply which i think seems to track gura and whether or not the prior or in this is closer the prior art is more like a defense to the infringement which of course the patent to you would bear the burden of proof across the board on infringement but the production would switch back and forth but you instead take a different approach as i understand it which is that you think there is this overall distinctive appearance test that evolves from gor process question mine to you is i'm very having a difficult time seeing how it's any different from the point of novelty tell me in this particular case if you could how it is that the overall distinctive appearance what about all these things should i be looking at in terms of the overall distinctive appearance i just don't see how it's any different from the point of novelty and so i want to give you a chance to help me understand that th a novelty in an overall design it's just trying to focus on this you come into trying to put into words something that is a picture of a present subject to words and so i rather than focusing on something more narrowly describe what stated a little differently when the novelty is the combination of all of the elements doesn't th test really collapse back into the ordinary observer substantial similarity past in effect it does but that should not be a disqualification for choosing i mean it all depends on what is the  cues designed were similar to the prior or or to the past design do you favor that review not because i do say that i think that the proper approach here just in so used to go back to the construction this is difficult because difficult to translate words when you have just a picture with even more difficult but doesn't the point of points of novelty to have coupled with the idea of plain constructions really goes along with it like you to expand on that you keep mentioning six or seven times here about problems the juries are having as i recall in this case we had summary judge we didn't even have a jury so we don't have any jury instructions we don't have any risk of jury confusion we don't have any jury at all now is there some evidence that wasn't in your brief that's ever since lytton juries have been stumbling and fumbling and having difficulty applying this focal point of not only test and if so what is said well i determine specific points of novelty and that we've run into all of the problem where what is the evidence the jury to have been unable to apply the how to determine what precise form not even you have multiple possible points of novelty combinations subset combination there doesn't seem to be a principled way to do that and what we're looking for is why do you class it was it different from any other litigation the plaintiff proposes his point of novel the same whatever and then the defendant says no i disagree i think the correct point of novelty is this other thing and if it's a matter of law the judge decides if it's a genuine factual dispute the jury decides what is the correct from what they're offered usually two alternatives now maybe as they do it well maybe they do don't do it well but why is it different from any other kind of legal issue that or factually should it goes to a jury because they're to get alternatives and they get evidence on both sides they get argument on both sides and they make the best to if they can why is this any different to a first of all is inconsistent with or in gore you've got to look at the over all postin and all the subsequent case and normally we don't overrule a precedent of a decade or more of standing unless there's been some intervening event like a new supreme court case or a new statute  either the judge or the jury chooses well that would be a way that i would just that is the way in the question is whether that's fatally defective just intolerable unacceptable chaotic i don't see evidence that it's produced produce chaotic results in real cases i don't see evidence that juries are routinely confused and unable to do it i would say the best evidence is the second question proposed by the court where the forecas infringement findings than infringement findings on summary judgment in this area is that good news or  go to a jury under principles apply r s six counts do you agree that the majority of all opinions that have to address this point of novelty there focusing on a single distinct element which truly is knowable in light of all the prior designs it's really something different that exists in those cases i would imagine you'd agree are really difficult to be decided the point of novelty is clear in fact it's probably agreed to by everyone it's these combination cases and it seems to me create a hypothetical piece and priority it would have been a hobby is to combine the other features in the prior art and then you ask you compare the accused device to see whether it's more similar to the out what it will now mr medlin with in the area of modern commercial design there is very little new usually we're talking about the stingers this tape or those sorts of cases buying that's not deal with this case where there's it's a promise too simple to deal with the real cases we get what about where it's very complex when there's a lot of minor variation statute itself only goes to original design if i do think that it's not accurate to protect the design provided it's new and though the question is is it new because of the overall appearance is bound to be different if in fact there is a point of no editing mccance the overall appearance the difficulty over whether there are twenty or forty then if the point is to prevent overuse overextension have an equivalence analysis and if we make a comparison to tell of the patents why isn't it the burden of the defendant to show that the will be an over use of concepts of equivalent rather than having it be part of the burden of proof of the patent owner so that whether it's a three way test or whether it's the litmus test or whatever the right the prior art or at most an obvious variation of the prior art that's a good defense it will win if i can prove it but so the analogue would seem to be you should have to prove but it doesn't the patentee sitting to defendant wants to articulate that no this equivalent would be ensnared by prior art they have the burden of production but not the burden of proof is and isn't that the rescuers are there all the  to be confusingly bought by someone else or to be deceived how could anybody be confused by the triangle versus the square it's such a significant difference between the prior art well they're saying it's so so similar but the difference is overwhelming  valid but maybe the court would have found it invalid it couldn't reach to what they would have it and in that case then i don't understand why you have to cling to the point of novelty test as some sort of super magic and definitely much better than the three way visit element had not been appropriated by the accused is all just a matter of the same question i asked before eight times as many non infringement findings are made on summary judgment that good news or bad news and chua's i believe the analysis come in as a defense not as a affirmative point of the plaintiff's burden well again it seems to me that players you invented the patent office gives us this accused is going to point to paul sorts of different points of novelty to establish that it's not infringed how does one even in the context of cases where there are multiple pieces of prior art know so it seems to me that's your starting point from your perspective so that you can then determine the points of novelty that will spin your way well i suspect your adversary i believe that i could see differences with all of these references and you could make up little lists ok let's see the differences between this let's see the difference between this one and well  test an object the point of novelty has you see any reason we need to send this back why can't we have perm the district judges finding because there is a question of fact why can't the district judge looking at the record see that that fact is something on which there is no legitimate dispute in appropriate cases but just sox then you are losing you would be losing a distinctive characteristic of this desire because because it has three sides you've got raced past with these