Alternative Designs -- An Indicator of Ornamentality

Last week, a district court judge construed an exhaust manifold claim as covering the overall ornamental appearance of the manifold in U.S. Design Patent No. D636,316 (the "'316 Patent).  Group-A Autosports, Inc. v. DNA Motor Inc., EDCV 14-01834-JGB (C.D. Cal. 2015). 

Although defendant DNA Motor, Inc. (“Defendant”) labeled the issue as a request for claim construction, the Court determined that the issue was whether the asserted design patent was invalid for failing to claim an ornamental design under 35 U.S.C. § 171.  In other words, the issue was whether the asserted design patent is invalid for being entirely functional.  To qualify for design patent protection, a design must present an aesthetically pleasing appearance that is not dictated by functional alone.  See Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 148 (1989).   Applying this standard, Defendant was required to show that the claimed design was dictated by the utilitarian purpose of the article.  The Court considered the claimed design in its entirety.

In its reply brief, Defendant failed to recite the proper legal standard for invalidating a design patent and failed to even address the relevance of alternative possible designs.  The Court acknowledged the error, but nevertheless considered the arguments under the proper legal standard.  In its analysis, the Court determined that Defendant presented two primary functional considerations for exhaust manifolds, but failed to show that the overall design was dictated by those functional considerations.  In contrast, plaintiff Group-A Autosports, Inc. (“Plaintiff”) submitted multiple exhaust manifold designs from competitors that are aesthetically different from the design claimed in the ‘316 Patent, showing the possibility of alternative designs.  Because the other designs could produce the same or similar functional capabilities, the design of the exhaust manifold was considered ornamental.

Not surprisingly, the Court concluded that Defendant failed to show that the claimed design was primarily functional, or that the claimed design was dictated by the utilitarian purpose of the article.  Accordingly, the Court construes the sole claim of the ‘316 Patent as covering the overall ornamental appearance of the exhaust manifold.  This decision, in part, reaffirms the principle that the existence of aesthetically different alternative designs suggests that the claimed design is ornamental.