USING DESIGN PATENTS TO CLAIM FUNCTIONAL ELEMENTS???
A recent opinion from the United States Court of Appeals for the Federal Circuit in Sport Dimension, Inc. v. The Coleman Co., No. 2015-1553, 7 (Fed. Cir. 2016), held that design patents can provide protection for ornamental features that are functional. In particular, the Federal Circuit found that a district court’s claim interpretation of a design patent that excluded functional features was improper.
Coleman, a company specializing in outdoor gear, owns U.S. Design Patent No. D623,714 (“the ‘714 Patent”) covering a child flotation device. The device includes a torso piece that includes side torso tapering and two arm bands connected to the torso piece.
A declaratory judgment proceeding was commenced in the United States District Court for the Central District of California alleging that a personal floatation device sold by Sports Dimension Inc. infringed the ‘714 Patent. During the proceedings, the District Court determined that the side torso tapering and the two arm bands are functional elements. Accordingly, it issued a claim construction order excluding the side torso tapering and the two arm bands from its claim interpretation. The District Court then entered a judgment of non-infringement in favor of Sports Dimension Inc. Coleman appealed the District Court’s judgment alleging, among other things, that the District Court’s claim interpretation was improper.
On appeal, the Federal Circuit stated that it is improper during claim construction of a design patent to “entirely eliminate a structural element from the claimed ornamental design, even though that element also served a functional purpose.” While it is proper for the fact finder to “[distinguish] between functional and ornamental features” when performing claim construction on a design patent, “the fact finder should not focus on the particular designs of [the functional] elements when determining infringement, but rather focus on what these [the functional] elements contribute to the design’s overall ornamentation.” The Federal Circuit notes that such claim interpretations can result in “a ‘limited’ claim scope for a design with functional elements.”
The Federal Circuit held that the District Court’s claim construction of the ‘714 Patent was improper, stating that the District Court should not have excluded the functional elements of the ‘714 Patent from its claim interpretation.
It is worth noting that Coleman had filed U.S. Patent Application Publication No. 2008/0160849 (’849 Application) claiming subject matter similar to the ‘714 Patent. In fact, the Federal Circuit relied on the ‘849 Application to determine that the side torso tapering and the two arm bands were functional elements. The ‘849 Application was abandoned for failure to respond to an office action.
The main takeaway from this case is that, when filing a utility patent, a patent owner should also consider filing a design patent on the same subject matter. This may increase the likelihood that the patent owner obtains some IP protection. For example, the ‘417 Patent was granted while the ‘849 Application was abandoned. Similarly, due to the different claim construction rules, a design patent may be patentable and an allegedly infringing product may infringe the design patent even though the corresponding utility patent was found invalid or the allegedly infringing product does not infringe the utility patent.