Monday, June 29, 2015

Is Design Patent Functionality a Proper Jury Question?

Last week, Judge Sheri Polster Chappell of the Middle District of Florida entered an interesting order regarding design patent functionality in Chico's FAS, Inc. v. Wink Intimates et al., No. 2-13-cv-00792  (M.D. Fla.).  In this case, Chico’s sued Wink for declaratory judgment of design patent invalidity and Wink counter-sued Chico’s, claiming infringement of U.S. Patent No. 622,478 which relates to a design for a camisole.  Chico's argument for functionalty (and Judge Chappell's decision) demonstrate some common misconceptions about design patent functionality.  Continue reading after the jump to see what Judge Chappell got right and also what she got wrong...
Chico’s and Wink both sell camisole, or cami, bras – garments that combine traditional bras with a swatch of fabric that covers cleavage. Wink owns cami bra patents, including the D’478 Patent and other utility patents. Chico’s moved for summary judgment on four separate grounds, one of which is that the D’478 Patent is invalid as being primarily functional.  As a reminder, design patents are limited to the ornamental design, or appearance, of an article. If a design patent is primarily functional rather than ornamental, then it may be refused or held invalid during litigation.  However, functionality tends to be overused by defendants and typically only applied in few cases.  For example, the Federal Circuit holds that, if, upon review of the overall appearance of the article, the design patent is solely dictated by the use or purpose of the article, then it is primarily functional and therefore not ornamental under 35 U.S.C. § 171.

In this case, Chicos appears to have fallen for the design patent functionality trap. Chico’s argued that the D’478 Patent is functional simply because it also received a utility patent, it is designed to cover cleavage, and it is made of flat and plain materials rather than ornate and embellished materials.

The court rejected Chico's argument, reasoning that there are plenty of articles that simultaneously have valid utility and design patents. Also, an article is not per se primarily functional just because it has a utility patent.  Although the bra is designed to cover cleavage, there was deposition testimony acknowledging that this function can be accomplished by different designs. The court therefore concluded that it cannot be said as an indisputable statement of fact that the D’478 Patent is not pleasing to the ordinary observer. As such, the motion for summary judgment was denied.  So far, so good for Judge Chappell...

However, in an earlier decision, Judge Chappell, also denied Wink's motion for summary judgment of validity on grounds of non-functionality, deciding instead to let the jury determine functionality.  However, Judge Chappell's reasoning seems dubious.  According to the Court "the [functionalty] inquiry is quite subjective in that reasonable minds may differ. It is ultimately a jury question as to whether this D‘478 Patent is aesthetically pleasing." (emphasis added).  It is worth noting that the design patent functionality doctrine has nothing to do with whether a design is "aesthetically pleasing."  The question turns on whether the design is solely dictated by function, which is not a subjective question.  Wink should attempt to ensure that the jury instructions properly convey the law of design patent functionality in this case.  Given the fact that design patent functionality relates to subject matter eligibility, one also wonders whether functionality is really even a question for the jury at all.  We'll have to wait and see how the jury handles this question at trial!

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