On Monday, Chief Judge Preska of the Southern District of New York handed down a fascinating summary judgment decision in an epic design patent feud between Prestige Jewelry and BK Jewelry. The decision covers a great deal of design patent law, which Judge Preska navigates quite nicely. Students and practitioners of design patent law would be wise to read this decision which provides an excellent overview of design patent law, generally.
There's too much to comment on in this 52-page decision, but I would like to single out the discussion of functionality. As we've said before on this blog, true functionality arguments are rare in design patent cases, but for some reason design patent defendants keep gravitating towards functionality like a moth to the flame. This case is another classic example of a functionality argument that probably never should have been raised.
BK's U.S. Design Patent No. 618,132 covers a diamond arrangement with a relatively larger "full-cut" diamond in the center, surrounded by 9 smaller single cut diamonds:
Those who have been married in the last five years might recognize this design, as the decision suggests it has been wildly popular.
Prestige's theory of functionality really had more to do with the design process than the design itself. Apparently, the inventor, Rocky Wong, testified that "he used a 'light box' to conduct 'refraction tests' and determined that, in his opinion, the 'full-cut center stone' surrounded by nine single-cut stones 'looked the best.'" "Wong also agreed that the ‘132 Patent arrangement 'performed the best' because 'it had the best refraction.'"
While such testimony would clearly be relevant to the question of functionality in the trade dress context, it doesn't have the same bearing on design patent functionality. Even assuming that the design of the '132 Patent was perfect (i.e. it provided the most potential refraction), the luster of the gem is not a function in the design patent context, it is an aesthetic effect. All designs are intended to be as pleasing as possible, using the fundamental elements of human perception - color, brightness, texture, shape, etc. Perfecting the perception of a design is inherently aesthetic, not functional, and Chief Judge Preska correctly granted summary judgment of non-functionality on this basis:
This argument incorrectly blurs the distinction between ornamental and functional designs. Admittedly, Wong sometimes described the design of the ‘132 Patent in language that superficially might suggest a functional design. He admitted that his design “performed the best” and stated that he used a light box to test various arrangements in search of the “best refraction.” (Wong Dep. Tr., at 74:4-9.) But these statements do not change the fact that the ultimate purpose of the ‘132 Patent design is to have a pleasing appearance—a quintessentially ornamental purpose. Simply because an inventor experiments with alternative designs or uses rudimentary tools and tests does not mean the resulting design is functional. Presumably, most designs are developed not on a whim but rather through some process of trial and error—whether by using a light box, consumer surveys, or simply taking a few steps back and squinting at the design from a distance. The relevant inquiry is the nature of the design, not how the design was developed. Here, the design of the ‘132 Patent is unquestionably ornamental—it is cluster of diamonds arranged solely to be pleasing to the eye.Prestige Jewelry v. BK Jewelry, No. 1:11-cv-02930, at 32-33 (S.D.N.Y. Sept. 15, 2014).
As Chief Judge Preska reasoned, design patent functionality has nothing to do with a scientific design process. Functionality depends on whether the article of manufacture has a utilitarian function, and whether the design claimed in the patent is dictated by that utilitarian function.
There are lots of other great design patent nuggets in Chief Judge Preska's decision, including claim construction, reexamination, obviousness, infringement, and prior art. It will be interesting to see what happens at the trial in this case. Non-infringement may depend on how well the jury can distinguish between single-cut and full-cut diamonds so jury selection will be key. We will keep an eye on this interesting saga, which is drawing to a close, and provide an update after trial.