Monday, April 25, 2016

Sport Dimension v. Coleman Company - Federal Circuit Seeks to Clarify Functionality

Last week, the Federal Circuit issued an opinion in Sport Dimension, Inc. v. The Coleman Company, Inc., No. 15-1533 (Fed. Cir. Apr. 19, 2016), seeking to clarify how courts may properly construe design claims containing significant functional aspects.  The court's decision adds some weight behind last year's Federal Circuit decision in Ethicon Endo-Surgery, Inc. v. Covidien, Inc., and answers a few additional questions related to design patent functionality.

In order to explain this case, we first have to see the problem.  To do that, we begin by looking back to the Federal Circuit's 2010 decision, Richardson v. Stanley Works, Inc.  That case concerned design patent D507,167 for a multi-function tool, and an alleged infringing tool designed by Stanley, as shown below:

The Federal Circuit affirmed the district court's finding of no infringement.  In doing so, it endorsed the district court's claim construction, which "factored out" the functional aspects of the patented design:
[E]lements such as the handle, the hammerhead, the jaw, and the crowbar are dictated by their functional purpose. The jaw, for example, has to be located on the opposite end of the hammer head such that the tool can be used as a step. The crowbar, by definition, needs to be on the end of the longer handle such that it can reach into narrow spaces. The handle has to be the longest arm of the tool to allow for maximum leverage. The hammer-head has to be flat on its end to effectively deliver force to the object being struck. As demonstrated by the prior art, those are purely functional elements whose utility has been known and used in the art for well over a century.
The Federal Circuit's approach effectively construed the design to claim this:

When the functional elements of the claim were ignored, the court found significant differences between the claimed and accused designs.

The Richardson "factoring out" approach remained the prevailing method for construing claims containing functional elements until 2015, when the Federal Circuit revisited the issue in Ethicon.  There, Ethicon appealed a finding of no infringement of four design patents directed to ultrasonic surgical devices.  A comparison of a claimed device and Ethicon's accused surgical device is shown below:

The district court relied on Richardson to "factor out" the functional aspects of the claimed design, which in the figure above include both the trigger and the torsion knob, the only features of the design that had been claimed.  Because this factored out all of the claim, the district court found the asserted design patents had "no scope" and could not be infringed.  

The Federal Circuit found the district court erred in its construction. "Factoring out" the functional elements did not entail eliminating them from the design completely.  Recalling Richardson, the court explained:
the design claim did not broadly protect a multi-function tool with a hammer, crowbar, handle, and claw, but only the specific ornamental aspects of that tool in the depicted configuration.
Ethicon was precluded from claiming the overall concept of an open-style trigger handle and a torque knob on its ultrasound devices.  It was still entitled to claim the ornamental designs adorning those elements.  However, the court agreed that once one looked past the general design concepts of an open trigger handle, the toque knob and the functional aspects claimed in the other design patents at issue, the accused product was plainly dissimilar.  The court therefore affirmed a finding of no infringement.

Ethicon appeared to recast Richardson in order to provide some clarity to what had become a very muddy method for construing the functional aspects of design patent claims. This week's Sport Dimension opinion suggests the court believed some additional clarity was still required.

Sport Dimension concerns a design patent owned by the Coleman Company directed to the ornamental design for a flotation device, shown below along side the accused device.

In the district court, Sport Dimension sought, and received, a construction of the asserted claim as follows:
The ornamental design for a personal flotation device, as shown and described in Figures 1–8, except the left and right armband, and the side torso tapering, which are functional and not ornamental.
The Federal Circuit objected to this construction as impermissibly factoring out elements of the claimed design under Ethicon.   The court agreed that a claim construction should issue, and that the armbands and tapered sides served a functional, and not ornamental purpose, but found fault with the district court removing these elements completely from the construction.

From there, Sport Dimension takes Ethicon a step further, endorsing a framework for determining which elements of a patented design are functional.  For that, the court borrowed a test from the patent invalidity side of functionality, the Berry Sterling factors:
whether the protected design represents the best design; whether alternative designs would adversely affect the utility of the specified article; whether there are any concomitant utility patents; whether the advertising touts particular features of the design as having specific utility; and whether there are any elements in the design or an overall appearance clearly not dictated by function.
The Berry Sterling factors were created to aid courts in determining whether a design was not patent eligible because it was dictated by utilitarian function.  Ethicon appeared to kill functionality as a basis for invalidity, except in the exceedingly rare situation where the claimed design is effectively the only design capable of performing its intended function.  From now on, these questions will almost always be answered through claim construction.  However, Sport Dimension ensures that Berry Sterling will survive the death of the doctrine that spawned it.

The court found several of the Berry Sterling factors indicated that the design of the patent's armbands and side torso tapering served a functional purpose.  Looking at other, similar designs, the patented armbands and torso appeared to be the best available design for a personal flotation device.  Coleman had also filed a utility application covering the functional aspects of those features.  Coleman was also found to have promoted the particular utility of the armbands and torso in its advertisements.

The Federal Circuit then provided some clarity regarding the consequences of finding particular design elements to be functional.  While the court was precluded from excluding these elements from the claim, the multitude of functional elements combined with a comparatively minimal amount of surface ornamentation resulted in a claim with a decidedly narrow scope.  After explaining at length the "limited" scope of the claimed design, the Federal Circuit noted that "nothing in this opinion should foreclose any pre-trial resolution of the infringement issue that is otherwise substantively and procedural appropriate" - placing a very heavy thumb on the scale in favor of Sport Dimension when the case returns to the district court.

This is where design patent functionality stands, as of 2016.  Functionality is no longer an invalidity question, unless there is no other way to perform the same function other than the claimed design.  All other questions of functionality are addressed through claim construction, and courts are encouraged to use the Berry Sterling factors when deciding those issues.  A design incorporating functional elements has some scope, but a court is not precluded from interpreting the claim very narrowly in view of the functional aspects, such that even minor differences between the claimed and accused designs will be significant.  

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