## United States Court of Appeals for the Federal Circuit

05-1253

LAWMAN ARMOR CORPORATION, Plaintiff-Appellant,

v.
WINNER INTERNATIONAL, LLC

and WINNER HOLDING LLC, Defendants-Appellees.

Roberta Jacobs-Meadway , Ballard Spahr Andrews & Ingersoll, LLP, of Philadelphia, Pennsylvania, argued for plaintiff-appellant. With her on the brief were Lynn E. Rzonca and Corey Field

. Philip J. Moy, Jr. , Fay, Sharpe, Fagan, Minnich & McKee, LLP, of Cleveland, Ohio, argued for defendants-appellees. With him on the brief was Jude A. Fry

. Appealed from: United States District Cour t for the Eastern District of Pennsylvania Senior Judge Robert F. Kelly

## United States Court of Appeals for the Federal Circuit

05-1253

LAWMAN ARMOR CORPORATION, Plaintiff–Appellant,

v. WINNER INTERNATIONAL, LLC and WINNER HOLDING LLC, Defendants–Appellees.

______________________________ DECIDED: February 22, 2006

______________________________

Before MICHEL, Chief Judge , FRIEDMAN, Senior Circuit Judge , and DYK, Circuit Judge

. FRIEDMAN, Senior Circuit Judge

. In this design patent case, the district court held that infri ngement had not been shown because each of the alleged “points of novelty” of the patented design was disclosed in the prior art. Lawm an Armor Corp. v. Winner Int’l , 2005 U.S. Dist. LEXIS 2078, No. 02-CV-4595 (E.D. Pa. Feb. 15, 2005) (slip opinion). We affirm that ruling, and reject the patentee’s contenti on that the combination in the patent of the many nonnovel “points of novelty” itself was an additional “point of novelty.” We therefore affirm the district court’s grant of su mmary judgment of non-infringement.I The basic facts are largely undis puted. The appellant Lawman Armor Corporation (“Lawman”) is the exclusive licensee of U.S. Design Patent No. Des. 357,621 (“’621 patent”), which clai ms “[t]he ornamental design for a sliding hook portion of a vehicle steering wheel lock assemb ly, as shown and described.” The patent contains seven drawings of different views of the device. Figure 1 of the patent shown below, illustrates the device, which has two curving hooks that are attached to the steering wheel to lock it in place:

Lawman sued the appellees Winner Inte rnational, LLC and Winner Holding LLC (collectively “Winner”) in the United States District Court for the Eastern District of Pennsylvania for infringement of the ’621 patent. After the district court construed the claim in the patent, Winner moved for su mmary judgment of non-infringement. In opposition, Lawman listed eight specific “points of novelty ” in the patented design. These included “[t]he open ends of the hooks fa ce outward from the shaft” and “[t]he shaft includes a pattern of ridges.” In response, Winner “simply list[ed] Lawman’s proposed points of novelty and cite[d] to aut omobile wheel lock patents that depict Lawman’s proposed points.” 2005 U.S. Dist. LEXIS 2078.

05-1253 2The district court granted Winner summa ry judgment of non-infringement. The court held that “Lawman’s propos ed points of novelty are found in the prior art” and thus that “Lawman has failed to create a material issue of fact regarding the point of novelty test.” Id.
II In comparing a design patent claim to the accused design to determine infringement, a court must apply “two distinct tests, both of which must be satisfied in order to find infringement: (a) the ‘ordinary obs erver’ test, and (b) the ‘point of novelty’ test.” Contessa Food Prods., Inc. v. Conagra, Inc. , 282 F.3d 1370, 1377 (Fed. Cir. 2002). See Unidynamics Corp. v. Au tomatic Prods. Int’l, Ltd. , 157 F.3d 1311, 1323 (Fed. Cir. 1998). The “ordinary observer” test requires comparison of the two designs from the viewpoint of the ordinary observer to “dete rmine whether the patented design as a whole is substantially the same as t he accused design.” Tropi cana Prods., Inc. v. Land O’ Lakes, Inc. , 286 F. Supp. 2d 343, 345 (D. Del. 2003) (citing Braun Inc. v. Dynamics Corp. of Am. , 975 F.2d 815, 820 (Fed. Cir. 1992)). Under the “point of novelty” test, a court must determine whether “the accused device . . . appropriate[s] the novelty in the patented device which distinguishes it from the prior art.” Litton Sys., Inc. v. Whirlpool Corp. , 728 F.2d 1423, 1444 (Fed. Cir. 1984) , (quoting Sears, Roebuck & Co. v. Talge , 140 F.2d 395, 396 (8th Cir. 1944)). See generally Bernhardt, L.L.C. v. Collezione Europa USA, Inc. , 386 F.3d 1371, 1384 (Fed. Cir. 2004) (discussing the required showing for the “point of novelty” test). The district court ruled that factual disputes precluded summary judgment under the “ordinary observer” test, but granted su mmary judgment for Winner under the “point

05-1253 3of novelty” test. Lawman had specified ei ght “points of novelty” that allegedly distinguished the patented design in the ’621 pat ent from the prior art. In response, Winner had listed specific prior art patents that allegedly disclosed each of Lawman’s “points of novelty.” As noted, the district court held that “Lawman’s proposed points of novelty are found in the prior art.” Lawman does not directly challenge this latter ruling. It makes no attempt to show either that the district court incorrectly accepted the eight “points of novelty” or that the prior art patents do not disclos e those points. Inst ead, it argues only that the district court failed to make sufficient findings as to the scope and content of the prior art, and also failed to determine the “points of novel ty” of the ‘621 patent. Basically, it argues only that there are factual iss ues on these points, not that t he district court erroneously resolved those questions. We review the district court’s grant of summary judgment de novo . Contessa , 282 F.3d at 1376; Conroy v. Reebok Int’l, Ltd ., 14 F.3d 1570, 1575 (Fed. Cir. 1994). There is no general requirement that a district court ma ke specific findings before granting summary judgment. Anderson v. Liberty Lobby, Inc. , 477 U.S. 242, 250 (1985). See also Union Carbide Corp. v. Am. Can Co. , 272 F.2d 1567, 1573-74 (Fed. Cir. 1984). All that is required is that dist rict courts provide “sufficient findings and reasoning to permit our review.” Cunningham v. Laser Golf Corp. , 222 F.3d 943, 951 (Fed. Cir. 2000). See also Stratoflex, Inc. v. Aeroquip Corp. , 713 F.2d 1530, 1540 (Fed. Cir. 1983) (“[W]e sit to review judgments, not opinions.”). The district court’s memorandum s hows that the cour t accepted Lawman’s proposed “points of novelty” in their entiret y, and also agreed with Wi nner that the prior

05-1253 4art (various different design patents) disclos ed each of those “point s of novelty.” We have examined the patents that Winner cited and conclude that they disclose the eight “points of novelty” that Lawman specified. The district c ourt was not required to make the more detailed rulings or findings that Lawman apparently s eeks, or to specify which particular patents disclosed each of the eight points of novelty. Lawman stresses that there is no “suggesti on to combine visual elements in the alleged prior art to achieve the ‘621 patent.” Whether there is any suggestion to combine prior art references may be relev ant in a validity inquiry to determine obviousness. Litton , 728 F.2d at 1444. It has no place in the infringement issue in this case. Id. What Lawman’s contention comes down to is that the D’621 patent contains a ninth “point of novelty,” nam ely, the combination in a single design of the eight nonnovel “points of novelty” it embodies. This argument is inconsistent with, and would seriously undermine, the rationale of the “points of novelty” test. “The purpose of the ‘points of novelty’ approach . . . is to focus on those aspects of a design which render the design different from prior ar t designs.” Winner Int’l Corp. v. Wolo Mfg. Corp. , 905 F.2d 375, 376 (Fed. Cir. 1990), overruled in part on other grounds by Cardinal Chem. Co. v. Morton Int’l. , 508 U.S. 83 (1993). “New” designs frequently involve only relatively small changes in the shape, size, placement, or color of elements of old designs. It is those changes in and departures from the old designs that constitute the “points of nov elty” in the patented new design. If the combination of old el ements shown in the prior art is itself sufficient to constitute a “point of novelty” of a new desi gn, it would be the rare design that would not

05-1253 5have a point of novelty. The practical effect of Lawman’s theory w ould be virtually to eliminate the significance of the “points of novelty” test in determining infringement of design patents, and to provide patent protection for designs that in fact involve no significant changes from the prior art. Id. (“To consider the ov erall appearance of a design without regard to prior art would evisce rate the purpose of t he ‘point of novelty’ approach, which is to focus on those aspec ts of a design which render the design different from prior art designs.”). Lawman seeks support for its argument in our decision in Litton Systems v. Whirlpool , 728 F.2d 1423. That decision does not aid Lawman.
In Litton we reversed a district court’s findi ng of infringement of a design patent because of a trial court’s “failure to apply the correct legal standar d of infringement in design patent cases.” Id. at 1444. This court explai ned that under t he “points of novelty” test, “even though the court compar es two items through the eyes of the ordinary observer, it must nevertheless, to fi nd infringement, attribute their similarity to the novelty which distinguishes the pat ented device from the prior art.” Id. Litton did not hold that the combination of se veral points of novelty was it self a point of novelty, but rather held that there were several points of novelty in the patented design, none of which was found in the accus ed design. Lawman’s argument would stand the “points of novelty” test on its head, and defeat its purpose. CONCLUSION The district court’s summary j udgment of non-infringement is
AFFIRMED.

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