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 United States Court of Appeals for the Federal Circuit
                                       2005-1253

                         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, filed a combined petition for panel rehearing and rehearing
en banc for plaintiff-appellant. With her on the petition were Lynn E. Rzonca and Corey
Field. Of counsel on the petition was David P. Gordon, Gordon & Jacobson, P.C., of
Stamford, Connecticut.

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

      Christopher V. Carani, McAndrews, Held & Malloy, Ltd., of Chicago, Illinois, filed
an amicus curiae brief for the American Intellectual Property Law Association. With him
on the brief was Melvin C. Garner, President, American Intellectual Property Law
Association, of Arlington, Virginia.

      Perry J. Saidman, SAIDMAN DesignLaw Group, of Silver Spring, Maryland, filed
an amicus curiae brief for the Industrial Designers Society of America.

       Christopher J. Renk, Banner & Witcoff, Ltd., of Chicago, Illinois, filed an amicus
curiae brief for NIKE, Inc. With him on the brief was Erik S. Maurer. Also on the brief
was Robert S. Katz, of Washington, DC.

Appealed from: United States District Court for the Eastern District of Pennsylvania

Senior Judge Robert F. Kelly
        United States Court of Appeals for the Federal Circuit
                                       2005-1253

                           LAWMAN ARMOR CORPORATION,

                                                      Plaintiff-Appellant,

                                            v.

                             WINNER INTERNATIONAL, LLC
                              and WINNER HOLDING LLC,

                                                      Defendants-Appellees.

                         ON PETITION FOR PANEL REHEARING
                             AND REHEARING EN BANC

Before MICHEL, Chief Judge, NEWMAN, MAYER, LOURIE, RADER, SCHALL,
BRYSON, GAJARSA, LINN, DYK, and PROST, Circuit Judges.

                                       ORDER

         A combined petition for panel rehearing and rehearing en banc was filed by the

Appellant1, and a response thereto was invited by the court and filed by the Appellees.

The petition for rehearing was referred to the panel that heard the appeal, and

thereafter the petition for rehearing en banc, response and amicus curiae briefs were

referred to the circuit judges who are authorized to request a poll whether to rehear the

appeal en banc. A poll was requested, taken, and failed.

         Upon consideration thereof,

         IT IS ORDERED THAT:




1
    Amicus curiae briefs were filed by:
        1- The American Intellectual Property Law Association.
        2- The Industrial Designers Society of America.
        3- NIKE, Inc.
        (1) The petition for panel rehearing is denied in a separate opinion issued

simultaneously.

        (2) The petition for rehearing en banc is denied.

        (3) The mandate of the court will issue on June 7, 2006.

        NEWMAN, Circuit Judge, dissents in a separate opinion, in which RADER, and

GAJARSA, Circuit Judges join.

        NEWMAN, RADER, and GAJARSA, Circuit Judges, would rehear the appeal en

banc.

                                                 FOR THE COURT


_May 31,2006____                                 s/Jan Horbaly___
    Date                                         Jan Horbaly
                                                 Clerk

cc:     Roberta Jacobs-Meadway, Esq.
        Philip J. Moy, Jr., Esq.
        Christopher V. Carani, Esq.
        Perry J. Saidman, Esq.
        Christopher J. Renk, Esq.




2005-1253                                 2
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.




NEWMAN, Circuit Judge, with whom RADER and GAJARSA, Circuit Judges, join,
dissenting from denial of the petition for rehearing en banc.




      The panel, responding to the petition requesting rehearing,1 has denied the request

and reaffirmed its position that a point of novelty in a design patent cannot be a

combination of known design elements; that is, a design patent is not valid if it is a

combination of known design elements, even if the combination is novel and the design

viewed as a whole meets the criteria of unobviousness. This view of design patent law is

contrary to the weight of Federal Circuit precedent and, as the several amici curiae point

out, will have a seriously adverse effect on design patent law. My concern is the court's



      1     Amicus curiae briefs in support of granting the petition were filed by the
American Intellectual Property Law Association, the Industrial Designers Society of
America, and Nike, Inc.
inaction in recognizing our obligation to provide consistent patent law that can be relied on

by inventors, patentees, the Patent and Trademark Office, and the trial courts of the nation.

       The panel holds that design patents are not considered from the viewpoint of the

design as a whole, and that a novel combination, based on "the overall appearance of a

design . . . cannot itself be a point of novelty." Maj. op. at 3. This statement is contrary to

many cases in the court's precedent; for example, Litton Systems, Inc. v. Whirlpool Corp.,

728 F.2d 1423, 1444 (Fed. Cir. 1984) ("The novelty of the '990 patent consists . . . of the

combination on a microwave oven's exterior of a three-stripe door frame, a door without a

handle, and a latch release lever on the control panel."); Avia Group Int'l, Inc. v. L.A. Gear

California, Inc., 853 F.2d 1557, 1565 (Fed. Cir. 1988) (the point of novelty of the design of

the shoe upper was "the combination of saddle, eyestay and perforations"); L.A. Gear v.

Thom McAn Shoe Co., 988 F.2d 1117, 1124, 1126 (Fed. Cir. 1993) (the point of novelty

resided in the "overall appearance of the combination" although all of the elements of the

design were found in the prior art).

       Facially conflicting statements were made in the Sun Hill Industries and Winner

International cases cited by the panel. Sun Hill Indus., Inc. v. Easter Unlimited, Inc., 48

F.3d 1193 (Fed. Cir. 1995); Winner Int'l Corp. v. Wolo Mfg. Corp., 905 F.2d 375 (Fed. Cir.

1990). These cases too have been relied on by various trial courts, adding to the

confusion. These conflicts of law cannot be reconciled. This court has the obligation to

resolve such direct conflicts when they arise. Instead, the panel has reaffirmed its holding

that a design patent is not valid if it is a combination of known design elements, even when

the combination is novel and distinctive. Indeed, the panel's new statement, ante at 3, that




05-1253                                       2
the panel "did not intend to cast any doubt" on prior contrary decisions, shows that we

recognize that prior statements of law are in conflict.

       The patentability of a design is determined on statutory criteria, as for all patents.

The protocol called "point of novelty" has often aided the analysis of the application of these

criteria to designs, but it is not a different concept from patentability based on the invention

-- the design -- as a whole, and has not replaced the statutory provisions. Contrary to the

panel's view, the overall appearance of a design can indeed be novel, and can indeed

constitute the patentable novelty.

       The amicus curiae point out that many, if not most, design patents are novel

combinations of known design elements, and that recognition of a design's overall

appearance can constitute a point of novelty, in the usage that has evolved in design patent

law. The Patent and Trademark Office grants design patents on this basis. As the amici

point out, the panel's decision can have highly disruptive consequences. I am concerned

lest the design patent law be placed in unpredictable limbo, for many if not most design

patents are novel combinations of known design elements, and design patents are

examined and granted on this rationale. If in fact the majority of judges on this court

prefers that design patent law be as now stated by this panel -- that a design patent cannot

be based on the overall design appearance of a novel combination of design elements; that

the overall design cannot be a "point of novelty" and thus cannot be infringed -- we should

take the case en banc and issue a consistent statement of law, overruling whatever body of

precedent is negated.




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