April 19, 2016

It is Error to Ignore Functional Structures Entirely in a Design Patent Construction

By Bryan K. Wheelock, Principal

In Sport Dimension, Inc. v. The Coleman Company, [2015-1553] (April 19. 2016) the Federal Circuit vacated the stipulated judgment of non-infringement of U.S. Patent  No. D623,714 on a personal flotation device, and remanded for further proceedings consistent with the correct claim construction.

The district court adopted Sport Dimension’s proposed claim construction:

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 several features of Coleman’s claimed design, specifically the armbands and the side torso tapering.  The Federal Circuit observed that “[w]ords cannot easily describe ornamental designs.” The Federal Circuit said that a design patent’s claim is thus often better represented by illustrations than a written claim construction, and that a detailed verbal claim constructions increases “the risk of placing undue emphasis on particular features of the design and the risk that a finder of fact will focus on each individual described feature in the verbal description rather than on the design as a whole.

However the Federal Circuit has often “blessed “claim constructions that helped the fact finder distinguish between those features of the claimed design that are ornamental and those that are purely functional, because 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.

In OddzOn, Richardson, and Ethicon, the Federal Circuit construed design patent claims so as to assist a finder of fact in distinguishing between functional and ornamental features, but in no case did it entirely eliminate a structural element from the claimed ornamental design, even though that element also served a functional purpose.  Even though the Federal Circuit agreed that certain elements of the design serve a useful purpose, it rejected the district court’s ultimate claim construction because it eliminated the functions structures from the claim entirely.

The Federal Circuit said that because of the design’s many functional elements and its minimal ornamentation, the overall claim scope of the claim is accordingly narrow.  However the Federal Circuit offered no further guidance on the proper construction.