Friday, December 5, 2014

Chris Carani on Functionality - A Sensible Solution

Design patent all-star Chris Carani recently published a comprehensive review of the functionality issue in design patent law.  The article, titled Design Patent Functionality: A Sensible Solution, has been published in the ABA Section of Intellectual Property Law's periodical, Landslide, and argues for a balanced approach to the functionality issue that honors the statutory requirement for "ornamental" designs under Section 171 of the Patent Act.  You can read the full article here.  With Mr. Carani's blessing, we've highlighted some of the key points, below.

Mr. Carani explains how the functionality doctrine has been expanded in recent years, in part due to a relatively straightforward Federal Circuit decision in 1998 holding that design patents protect designs and do not provide protection for general concepts.  See Lee v. Dayton-Hudson (1998).  We have echoed this same caution here on this blog several times.  The article argues that the modern perspective on functionality has sprung out of a misapplication of this fundamental truth about design patents, but that the functionality doctrine ought to be confined to a inquiry about subject matter eligibility, and should not expand into a piece-by-piece dissection of design patent claims. 

Mr. Carani uses a charming graphic to illustrate his point:

Some courts have interpreted the functionality doctrine to require that any functional elements within the claim be "filtered out" of the claim as part of claim construction or jury instructions.  In the example above, a court might arguably "construe" the key in Example B as having no claim regarding the design of the actual key mechanism.  In other words, the court might construe Example B to be identical to Example A, based on functionality.  However, the statute suggests that the functionality doctrine may be more akin to a subject matter eligibility test, asking whether the claimed design, as a whole, is ornamental or dictated solely by the function of the article.  For example, the design claimed in Example C is arguably dictated by the function of the key (i.e. fitting a lock).  See See Best Lock Corp. v. Ilco Unican Corp., 40 USPQ2d 1048 (Fed. Cir. 1996).  As such, the claim of Example C, as a whole, may be dictated by function and therefore ineligible for design patent protection, whereas Example B, as a whole, is likely eligible.

Mr. Carani argues in favor applying functionality as suggested by the statute and resisting the urge to "filter out" functional limitations within a design patent claim.  The PTAB may be signaling its agreement with this suggested approach in its recent IPR decisions, as we have previously noted

Mr. Carani has offered a comprehensive examination of the historical underpinnings of the functionality doctrine and its proper role within modern design patent jurisprudence.  His article is particularly timely as some courts have begun to suggest that there may be some linkage between the functionality doctrine in design patent law and in trademark law, which are distinct doctrines serving different public policy goals. 

Chris Carani will be leading a discussion on the topic of functionality during the next ABA Design Committee conference call on December 16

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