Design patent claim must not be construed eliminating functional elements.
| May 11, 2016
Sport Dimension v. The Coleman Company
April 19, 2016
Before Moore, Hughes and Stoll. Opinion by Stoll.
Summary:
The district court interpreted the claim of a design patent for a personal flotation device eliminating armbands and side torso tapering entirely from the claim because these are functional. CAFC rejected the claim construction vacating the judgment of non-infringement and remanded. CAFC ruled that even though the elements served a functional purpose, the construction improperly converted the claim scope of the design patent from one that covered the overall ornamentation to one that covered individual elements.
地裁は、救命胴衣に関するデザイン特許のクレームの解釈で、アームバンドと、次第に細くなる胴体側部をクレームから除外して解釈した。CAFCは、クレーム解釈及び非侵害の判断を破棄し、地裁に差戻した。CAFCはそれらの要素が機能的目的のものであっても、地裁の解釈は、全体的な装飾的観点をカバーするデザイン特許のクレーム範囲を、個々の要素をカバーするものに不当に変更するものであるとした。
Background
Coleman owns United States Design Patent No. D623,714 (“D’714 patent”). The design patent is represented by Figs. 1 and 2 as follows:
(D’714 patent Figs. 1, 2).
The D’714 patent generally discloses a personal flotation device with two arm bands connected to a torso piece. The torso piece is flat on its back and tapers toward a connecting strap on its sides.
Sport Dimension is a sports equipment and apparel company that sells water-sports-related equipment, including its Body Glove® line of personal flotation devices.
Sport Dimension’s Body Glove® Model 325 is the accused device and is shown below.
Sport Dimension’s accused personal flotation devices, like Coleman’s design, have two armbands connected to a torso piece. But, unlike Coleman’s design, the torso section in the Body Glove® device extends upwards to form a vest that goes over a person’s shoulders.
Discussion
Sport Dimension filed a declaratory judgment action in the Central District of California requesting judgment that it did not infringe the D’714 patent and that the patent is invalid. The district court adopted Sport Dimension’s proposed claim construction, as follows:
The ornamental design for a personal flotation device, as shown and described in Figures 1–8, except the left and right armband, and the side torso tapering, which are functional and not ornamental.
This construction eliminates some features of Coleman’s claimed design, specifically the armbands and the side torso tapering. The district court found that the armbands, the armband attachments, the shape of the armbands, the tapering of the armbands, and the tapering of the side torso were all elements that serve a functional rather than ornamental. In light of the court’s claim construction order, Coleman moved for entry of judgment of non-infringement in favor of Sport Dimension so that it could appeal the claim construction.
Regarding claim construction of design patent, CAFC had ruled: “Where a design contains both functional and nonfunctional elements, the scope of the claim must be construed in order to identify the non-functional aspects of the design as shown in the patent.” OddzOn Prods., 122 F.3d at 1405.
In OddzOn, CAFC considered a design patent on a rocket-shaped football and endorsed the district court’s construction that distinguished between functional and ornamental aspects of the design. The design patent disclosed a football with a large tail fin that added stability for the ball in flight. The fins also produced an “overall ‘rocket-like’ appearance of the design.” Id. at 1405. CAFC agreed with the district court’s finding that the fins were functional. Nevertheless, CAFC approved of the court’s construction that took the fins into account carefully noting the ornamental features that produced the overall ‘rocket-like’ appearance and properly limiting the scope of the patent to its overall ornamental visual impression, rather than to the broader general design concept of a rocket-like tossing ball.”[1]
CAFC followed a similar line of analysis in Richardson. 597 F.3d at 1293–94. The case concerned a multi-function tool described in the patent as comprising several elements that are driven purely by utility, including a hammer, crowbar, and stud climbing tool. Id. at 1294.[2]
In Richardson, the elements (i.e., the hammer’s flat head, the crowbar’s elongated shape, and the stud climbing tool’s jawlike shape) were well known in the art, and their basic design was dictated by their respective functional purposes. Even if the elements are functional, there are still ornamental aspects of the design of those elements.
The district court had explained that the ornamental aspects of Richardson’s design include: (a) the standard shape of the hammer-head, (b) the diamond-shaped flare of the crow-bar and the top of the jaw, (c) the rounded neck, (d) the orientation of the crowbar relative to the head of the tool, and the plain, undecorated handle.
CAFC agreed with the district court’s approach which limited the claim to these ornamental aspects of the otherwise functional elements. Under this construction, the claim does not protect the functional aspects of the design. However, according to CAFC, the construction properly ensures the protection, even if narrow, over those aspects of the tool that were ornamental.
In Ethicon Endo-Surgery, CAFC construed the claim to eliminate the functional aspects of the design but to permit coverage of the ornamental aspects of the design. CAFC disagreed with district court’s conclusion that the claim had no scope. While CAFC agreed that certain elements of the device were functional, their functionality did not preclude those elements from having protectable ornamentation.
CAFC explained that, “although the Design Patents do not protect the general design concept of an open trigger, torque knob, and activation button in a particular configuration, they nevertheless have some scope—the particular ornamental designs of those underlying elements.” In OddzOn, Richardson, and Ethicon, CAFC construed design patent claims so as to assist a finder of fact in distinguishing between functional and ornamental features, but CAFC has not eliminated a structural element entirely from the claimed ornamental design, even though the element is functional.
The district court’s construction in this case conflicted with the principle of design patent claim construction because it eliminated whole aspects of the claimed design. In the construction, the district court excluded the left and right armband and the torso side tapering. The district court explained that the armbands and tapered torso “serve a functional rather than ornamental purpose,” and thus excluded them from the claim scope. Coleman disputed the court’s construction and its finding that the armbands and tapered torso are functional. Coleman’s armbands and tapered side torso designs meet several of the factors CAFC announced in PHG Technologies, LLC v. St. John Cos., for determining whether a design claim was dictated by function, including:
whether the protected design represents the best design; whether alternative designs would adversely affect the utility of the specified article; whether there are any concomitant utility patents; whether the advertising touts particular features of the design as having specific utility; and whether there are any elements in the design or an overall appearance clearly not dictated by function.
469 F.3d 1361, 1366 (Fed. Cir. 2006). CAFC noted that although these factors are introduced to determine whether a claimed design was dictated by function and thus invalid, they may serve as a useful guide for claim construction functionality as well. CAFC also noted that the PHG factors indicate that the design patent’s armbands and side torso tapering serve a functional purpose. The district court found that Coleman filed a co-pending utility patent disclosing the design patent’s armbands and torso tapering and touting the utility of those features, and it found Coleman to have promoted the particular utility of the armbands and tapered torso in its advertisements.
Although CAFC agreed that certain elements of Coleman’s design serve a useful purpose, CAFC rejected the district court’s ultimate claim construction. According to CAFC, the district court eliminated the armbands and side torso tapering from the claim entirely, so its construction runs contrary to CAFC law. CAFC noted that “the district court’s construction of the Design Patents to have no scope whatsoever fails to account for the particular ornamentation of the claimed design and departs from CAFC established legal framework for interpreting design patent claims.” Ethicon Endo-Surgery, 796 F.3d at 1334.
CAFC further noted that design patents protect the overall ornamentation of a design, not an aggregation of separable elements. Richardson, 597 F.3d at 1295 (noting that “discounting of functional elements must not convert the overall infringement test to an element-by-element comparison”).
According to CAFC, by eliminating structural elements from the claim, the district court improperly converted the claim scope of the design patent from one that covers the overall ornamentation to one that covers individual elements. Here, the district court erred by completely removing the armbands and side torso tapering from its construction.
Looking to the overall design of Coleman’s personal flotation device disclosed in the D’714 patent to determine the proper claim construction, CAFC describes the design patent as follows: The design includes the appearance of three interconnected rectangles, as seen in Figure 2, which is minimalist, with little ornamentation. And the design includes the shape of the armbands and side torso tapering, to the extent that they contribute to the overall ornamentation of the design. As discussed above, however, the armbands and side torso tapering serve a functional purpose, so the fact finder should not focus on the particular designs of these elements when determining infringement, but rather focus on what these elements contribute to the design’s overall ornamentation. Because of the design’s many functional elements and its minimal ornamentation, the overall claim scope of the claim is accordingly narrow.
Therefore CAFC rejected the district court’s claim construction, vacated the stipulated judgment of non-infringement, and remanded for consideration of infringement and, if necessary, validity consistent with the proper claim construction.
Takeaway:
Functional aspects of a design are not protected. In claim construction, functional aspects must be identified, but must not be eliminated.
(Also, infringement must be determined “in light of the prior art” by “applying the ordinary observer test through the eyes of an observer familiar with the prior art” according to Egyptian Goddess).
[1] The court construed the single claim of the patent as being directed to the design for: a ball shaped like a football, with a slender, straight tailshaft projecting from the rear of the football. In addition, the ‘001 Patent design has three fins symmetrically arranged around the tailshaft, each of which has a gentle curve up and outward which creates a fin with a larger surface area at the end furthest from the ball. The fins flare outwardly along the entire length of the tailshaft, with the front end of the fin extending slightly up along the side of the football so that the fins seemingly protrude from the inside of the football.
[2] Richardson’s multi-function tool comprises several elements that are driven purely by utility. As the district court noted, elements such as the handle, the hammerhead, the jaw, and the crowbar are dictated by their functional purpose. The jaw, for example, has to be located on the opposite end of the hammer head such that the tool can be used as a step. The crowbar, by definition, needs to be on the end of the longer handle such that it can reach into narrow spaces. The handle has to be the longest arm of the tool to allow for maximum leverage. The hammer-head has to be flat on its end to effectively deliver force to the object being struck. As demonstrated by the prior art, those are purely functional elements whose utility has been known and used in the art for well over a century. (Richardson)
