On Friday, Judge Otis D. Wright issued an always-risky claim construction order in the case of Carlini Enterprises, Inc. v. Paul Yaffe Design, Inc., which we first reported on last October. This case involves two design patents for bike handles which allegedly cover Carlini's "Evil Apes" and "Gangster Apes" handlebar designs, although Yaffe disputes this fact through its false marking counterclaim. The design patents-in-suit are U.S. Design Patent Nos. 629,343 and 604,212, shown below:
As we have previously noted, claim construction in design patent cases has become a rather sticky issue since the Federal Circuit's en banc decision in Egyptian Goddess. In that watershed case, the Federal Circuit famously did away with the old “point of novelty” test, returning the ordinary observer test to its rightful place as the sole test for design patent infringement. See Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 679 (Fed. Cir. 2008) (en banc). However, in a less noted portion of the Egyptian Goddess decision, the Federal Circuit opined on the issue of claim construction, stating that “the preferable course ordinarily will be for a district court not to attempt to ‘construe’ a design patent claim by providing a detailed verbal description of the claim language.” Id. The court reasoned that “a design is better represented by an illustration ‘than it could be by any description and a description would probably not be intelligible without the illustration.’” Id. (quoting Dobson v. Dorman, 118 U.S. 10, 14 (1886)).
There is an implicit conflict between Egyptian Goddess and the Federal Circuit's other decisions regarding design patent claim construction, such as OddzOn Prods., Inc. v. Just Toys, Inc., 122 F.3d 1396, 1405 (Fed. Cir. 1997), where the Court held that if "a design contains both functional and non-functional elements, the scope of the claim must be construed in order to identify the non-functional aspects of the design." This contradicting guidance has left some courts confused as to when, if ever, it is appropriate to give verbal claim construction regarding functionality.
In Carlini, Judge Wright struck a nuanced balance between the need to avoid unnecessary verbal claim constructions and the temptation to "filter" functional elements of a design patent out of the scope of the claim. In declining to filter out any allegedly functional elements, Judge Wright reasoned that "the task of distinguishing the ornamental features from the functional ones must be tempered [because]a detailed verbal description of the claimed design may place an undue emphasis on particular features of the design and may hinder examination of the design as a whole." citing Crocs, Inc. v. ITC, 598 F.3d 1294, 1302 (Fed. Cir. 2010).
Yaffe had requested that the court filter out the three basic components of any motorcycle handle bars as functional, "parts, which Carlini refers to as the 'grips,' 'uprights,' and 'center section.'" Judge Wright did not dispute that these three components provided functionality to the handlebars - "There is really no dispute that these parts provide some function. A rider must have something to hold onto—the grips—and there must be some point where the handlebar attaches to the motorcycle—the center section. The function of the uprights is to connect the grips to the center section." However, he disagreed that evidence of function is synonymous with functionality in the design patent context and he cited the variety of bike handles available in the prior art, despite supplying this same basic functionality.
Moreover, the Court indicated that there would be no easy way to "filter out" the allegedly functional components of the handlebar, given the nature of the asserted design patents. The Court reasoned that "it would be difficult for this Court to verbalize the design of the handlebars depicted in the patents-in-suit and separate the ornamental features from the functional ones. At the very least, a detailed verbal description would place undue emphasis on particular features of the claimed design." The Court emphasized that "[t]he most important task is to facilitate examination of the design as a whole—ornamental and functional elements together." (emphasis added).
In declining to issue a detailed verbal claim construction, Judge Wright appears to have struck the correct balance between the temptation to "filter out" functional elements while avoiding an unnecessary, detailed verbal claim construction. Where, as here, the requested claim construction would impair a jury's ability to assess infringement of the claim "as a whole," the the proponent of such a construction should be required to come forth with clear evidence that the design elements are dictated by function alone. Otherwise, such arguments are better handled in the context of a motion for summary judgment of invalidity based on functionality. While it may still be appropriate to "filter out" purely functional design elements in the context of claim construction, such situations are rare and the resulting claim construction would always risk improperly affecting the jury's determination of infringement of the design patent "as a whole."
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